Brief of Amici Curiae Professors of Patent and Administrative Law in Support of Respondent, Thryv, Inc. v. Click-To-Call Technologies, LP, No. 18–916 (Sup. Ct., Nov. 4, 2019)

Abstract

This case implicates a significant balance in the patent system between the competing powers of the federal courts and the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) to review patent validity. Congress allocated those powers through several provisions of the America Invents Act, including the one-year time bar of 35 U.S.C. § 315(b). The Federal Circuit, starting with its en banc decision in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), has been taking proper account of that balance of power by exercising judicial review over the PTAB’s application of the one-year bar.

Judicial review of § 315(b) time-bar determinations is foundational to safeguarding the court-agency balance of patent powers, whose scope and impact extend well beyond the PTAB and into the courts. Accordingly, the Federal Circuit’s conclusion that such review is available correctly applies this Court’s guidance in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), and is strengthened even further by this Court’s subsequent decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Moreover, detailed empirical evidence reveals that litigants use the PTAB to a significant extent as a strategic substitute for courts in reevaluating patent validity. Strategic substitution is subject to important statutory constraints, especially the one-year bar of § 315(b). These constraints promote repose for litigants, conservation of both court and agency resources, and inter-branch respect for the judgments of competing tribunals. Accordingly, in evaluating the reviewability of the PTAB’s timeliness determinations under § 315(b), this Court should take careful account of the significant scope and impact that § 315(b) has beyond the inter partes review setting in preserving the balance of power that Congress has allocated to the PTAB and to the courts.

Keywords: patent, administrative, empirical, inter partes review, covered business method, collective action, America Invents Act, IPR, CBM, PTAB, USPTO, AIA

JEL Classification: D23, D73, K23, K41, O31, O34, O38