The Supreme Court held in Thryv, Inc. v. Click-To-Call Techs, Docket No. 18–916 (April 20, 2020), that a decision by the Patent Trial and Appeal Board (“PTAB”) to institute an inter partes review proceeding is not reviewable in court. As I noted in my Nov. 14, 2019 blog, the PTAB is an administrative tribunal that conducts certain types of administrative proceedings relating to patents and to patent applications.

The PTAB administers four types of administrative proceedings (i.e., post-grant review proceedings, inter partes review proceedings, covered business-method proceedings and derivation proceedings) that were created by the America Invents Act (“AIA”) in 2012. These proceedings were discussed in my Sept. 17, 2015 blog.

One type of PTAB proceeding, inter partes review, cannot be brought “more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b).

Inter partes review can be used to invalidate one or more patent claims for a particular patent. Under the AIA, the ultimate decision on validity of the patent claims can be reviewed by the Court of Appeals for the Federal Circuit and the Supreme Court. However, the decision as to whether to initiate the proceedings cannot.

The fact that a decision to initiate a proceeding cannot be appealed seemed to conflict with the presumption that agency decisions are reviewable by the courts. As a result, the Court considered the statutory text and the underlying rationale in detail before concluding that that the presumption had been overcome by the AIA.

The Court also rejected the patent owner’s attempt to re-characterize its appeal as an appeal on the merits of the decision.