Remembering the Notorious Justice Ginsburg

Justice Ruth Bader Ginsburg was a brilliant, passionate, and brave Supreme Court jurist for which she was given the nickname “Notorious R.B.G.” in 2013 by then New York University law student Shana Knizhnik.[1] The moniker quickly caught on in popular culture. A forceful presence on the Supreme Court for almost 30 years, Justice Ginsburg penned opinions in decisions on critical societal issues including equality for women[2], access to contraceptives[3] and voting rights[4]. As evidenced recently by her opinion for the majority in Thryv, Inc. v. Click-to-Call Technologies, LP(2020), Justice Ginsburg called it like she saw it, even when it came to the relatively more mundane aspects of patent law.

In Thryv, the Supreme Court continued to limit judicial (court) review of the United States Patent and Trademark’s (USPTO’s) decisions to institute Inter Partes Review (IPR) of challenged patents.[5] In Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. __ (2016), the Supreme Court held that the USPTO’s substantive IPR institution decisions under an IPR statute[6] are not subject to review in an Article III court. Following this earlier decision, the Court ruled in Thryv that the Leahy-Smith America Invents Act (AIA), as an amendment to 35 U.S.C., prevents Article III courts from reviewing the USPTO’s interpretation of a law governing time limits for challenging patents via IPR, thus allowing the USPTO to have more discretion over its IPR institution decisions.[7]

35 U.S.C.§ 315(b) plainly states that that an IPR of a patent “may not be instituted” if the petition requesting the IPR is filed “more than 1 year after” the date on which the petitioner is served with a complaint alleging infringement of the patent. In the meantime, 35 U.S.C. § 314(d)provides that: “The determination by the Director [of the UPSTO] whether to institute an inter partes review under this section shall be final and nonappealable. [emphasis added]”. The issue for the Court in Thryv was whether judicial review was allowed of the USPTO’s decision to institute IPR of Click-to-Call’s patent, to which § 314(d) may apply, based on the USPTO’s finding that the one-year time bar did not apply to Thryv’s petition to institute the IPR of the patent under § 315(b).

A little history helps put the UPSTO’s decision to institute in context. An earlier infringement suit involving the patent was filed in 2001 against Thryv’s predecessor-in-interest. That suit was voluntarily dismissed without prejudice. Click-to-Call subsequently acquired the patent in 2011 and sued Thryv for infringement of the patent in 2012. Within a year of being served by Click-to-Call with the complaint of that infringement action, Thryv petitioned the USPTO for IPR of the patent. Click-to-Call contended that institution of IPR was barred as being more than one-year after filing of the earlier suit on the patent in 2001. The USPTO instituted IPR of the patent based on an interpretation of the one-year time limit statute that infringement complaints voluntarily dismissed without prejudice do not start the one-year clock because the patent owner is free to later assert the patent again against the defendant.[8]

A straightforward reading of the relevant statutes could have led the Court to conclude that the time limit provision of § 315 was not “under this section” as the “final and nonappealable” provision of§ 314. After all, § 315 is not § 314. Further, the express language of§ 314(d) refers to “[t]he determination by the Director... shall be final and nonappealable. [Emphasis added]” However, the one-year time limit provision of § 315(b) notably does not mention “the Director.” Yet,§ 314(a) – in the same section as§ 314(d) – refers the authorization to institute an IPR only if “[t]he Director” determines that the information presented in the petition for IPR shows there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” It would then seem reasonable to conclude then that Congress intended for the “final and nonappealable” provision of § 314(d) to apply only to the Director’s “reasonable likelihood” determination under § 314(a), thus limiting the USPTO’s discretion. Indeed, this is what Gorsuch pointed out in his dissent.[9] However, the majority in Thryv did not see it this way.

A broader question is why? In particular, why did the Court inThryv conclude that Congress intended for the USPTO to have flexibility to decide how strictly to follow the legal time limit placed on patent challenges? Justice Ginsburg provided an answer to that question in a section of the her opinion.[10] Specifically, Justice Ginsburg concluded that the purpose and design of Congress in providing for IPR was a concern about “overpatenting” and “diminishment of competition” and to provide a system to “weed out bad patent claims efficiently.” For Justice Ginsburg, allowing appeals of the one-year time limit provision of § 315(b) “would unwind [IPR] proceedings determining patentability and leave bad patents enforceable.”[11] As in her opinion forSAS Institute Inc. v. Iancu, 584 U.S. ___ (2018), Justice Ginsburg might be signaling that in the big picture, sometimes it is appropriate for the Court to cede judicial power and give deference to the operation of the highly-specialized agency, to achieve the ultimate goal of an effective patent system.

Justices Alito and Thomas did not join that section of the opinion[.12] Justices Gorsuch and Sotomayor dissented. After Justice Ginsburg’s passing, Roberts, Breyer, Kagan and Kavanaugh remaining on the Court would presumably still support the “weed out bad patents” rationale. With the prior Supreme Court decisions in Cuozzo Speed Technologies, LLC and in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. ___ (2018)[13] and now the decision inThryv, there is still a majority of the Court that presumably would continue to support the lack of judicial review of the USPTO’s decisions to institute IPRs.

For the patent community, Justice Ginsburg’s opinion further reinforces the importance of carefully evaluating new ideas and developing patent applications that protect true inventions. If you are thinking of patent protection for your invention, our experienced patent attorneys will guide you along the right path. Contact us today.

[1] A play on the talented rapper Biggie Smalls’ nickname the “Notorious B.I.G.”

[2] United States v. Virginia, 518 U.S. 515 (1996), Ginsburg writing for the majority striking down the male-only admission policy of the Virginia Military Institute.

[3] Burwell v. Hobby Lobby, 573 U.S. 682 (2014), Ginsburg writing in dissent of the majority’s decision to allow closely held for-profit corporations to be exempt from the conceptive mandate of the Affordable Care Act (ACA) its owners religiously objected to.

[4] Shelby County v. Holder, 570 U.S. 529 (2013), Ginsburg writing in dissent of the majority’s decision effectively holding the preclearance requirement of the Voting Rights Act of 1965 before passing restrictive voting laws unconstitutional.

[5] Thryv, Inc. v Click-to-Call Technologies, 590 US __ (2020) (slip op., at 2).

[6] 35 U.S.C.§ 312(a) governing the requirements of a proper petition for IPR of a patent.

[7] Thryv, Inc. at slip op., at 14.

[8] Thryv, Inc. at slip op., at 3-6.

[9] Thryv, Inc. at slip op., at Dissent, Part II.

[10] Thryv, Inc. at slip op., Part III–C at 8-10.

[11] Id.

[12] Thryv, Inc. at slip op., at 1.

[13] Seven Justices holding the Inter Partes Review process constitutional with Gorsuch and Roberts dissenting.

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