“Dex Media argued that the Supreme Court should grant cert in part because the Federal Circuit’s divided en banc decision in Wi-Fi One contravened both Cuozzo and the statutory language of the America Invents Act, which holds that institution decisions are non-appealable.”

On Monday, the U.S. Supreme Court granted a petition for writ of certiorari to take up Dex Media Inc. v. Click-to-Call Technologies, LP on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether 35 U.S.C. § 314(d), which states that decisions to institute inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are final and non-appealable, permits appeal of IPR institution decisions upon a finding that the one-year time bar under 35 U.S.C. § 315(b) doesn’t apply.

This appeal stems from the Federal Circuit’s August 2018 decision in Click-to-Call Technologies, LP v. Ingenio, Inc. In that case, technically a panel rehearing, 12 Federal Circuit judges joined a footnote finding that Section 315(b)’s time bar against instituting IPRs when the petitioner is served with an infringement complaint more than one year prior to the IPR petition holds even when that infringement complaint was voluntarily dismissed without prejudice. Circuit Judges Timothy Dyk and Alan Lourie filed a dissenting opinion where they held that the statutory construction of Section 315(b), within the context of the Supreme Court’s interpretation of “service of a complaint” in other case law, meant that the voluntary dismissal shouldn’t have triggered the statute of limitations. Following the decision, Ingenio merged with Dex Media, which filed the petition with the Supreme Court.

A Convoluted Case History Leads to Multiple Federal Circuit Decisions

As Dex Media’s petition notes, the facts of this case extend back to 2001 and include a list of various entities that have been involved. That year, Keen Inc. was sued by Inforocket.com for infringement of U.S. Patent No. 5818836, Method and Apparatus for Anonymous Voice Communication Using an Online Data Service. Keen acquired Inforocket in 2003, voluntarily dismissed the case without prejudice as part of the merger and then renamed itself as Ingenio. In 2011, Click-to-Call acquired the ‘836 patent and the following year asserted it against Ingenio and other defendants in district court. In 2013, Ingenio and the other defendants filed for IPR proceedings against the ‘836 patent and Click-to-Call argued that the petition was time-barred because Ingenio, formerly Keen, was served with a patent infringement complaint in 2001. The PTAB denied Click-to-Call’s time-bar argument and a request for rehearing leading to an October 2014 final written decision finding all challenged claims were unpatentable.

This case then proceeded through a convoluted series of appeals that began with the Federal Circuit’s November 2015 dismissal of Click-to-Call’s appeal of the PTAB’s institution decision, the appellate court citing Section 314(d)’s prohibition against appealing institution decisions consistent with its previous decision in Achates Reference Publishing, Inc. v. Apple Inc. (2015) Click-to-Call then filed a petition for writ with the Supreme Court and in June 2016, SCOTUS granted the petition, vacated the judgment and remanded for further proceedings consistent with the Court’s decision in Cuozzo Speed Technologies, LLC v. Lee (2016). In November 2016, the Federal Circuit again dismissed Click-to-Call’s appeal, finding that Cuozzo didn’t overrule Achates, a holding that came from the Federal Circuit’s 2016 decision in Wi-Fi One, LLC v. Broadcom Corp. Click-to-Call then asked for the en banc rehearing by the Federal Circuit. Prior to the August 2018 decision in Click-to-Call, the Federal Circuit issued an en banc decision in Wi-Fi One in which a Federal Circuit majority expressly overruled Achates to find that time-bar determinations under Section 315(b) are appealable.

Dex Media, Click-to-Call and the Solicitor General Debate Finality of Institution Decisions

Dex Media argued that the Supreme Court should grant cert in this case in part because the Federal Circuit’s divided en banc decision in Wi-Fi One contravened both Cuozzo and the statutory language of the America Invents Act (AIA), which holds that institution decisions are non-appealable. While Cuozzo recognized a narrow exception to the non-appealable nature of IPR institution decisions for due process concerns, the Federal Circuit improperly broadened that exception in Wi-Fi One. Further, the petitioner noted that the Court held in Cuozzo that Congress didn’t intend for final PTAB decisions to be “unwound under some minor statutory technicality related to its preliminary decision to institute,” but Wi-Fi One now opens “a Pandora’s box of appellate litigation over tangential issues decided at the initiation stage.”

In early May, the Solicitor General submitted a brief for the federal respondent in opposition to the petition for writ asking the Supreme Court not to consider the second question included in Dex Media’s petition. While the government agreed that the Federal Circuit didn’t have jurisdiction to hear Click-to-Call’s appeal of the institution decision, the Director of the U.S. Patent and Trademark Office (USPTO) had reconsidered the agency’s interpretation of the time-bar statutory language in Section 315(b) and had determined that the IPR leading to this appeal shouldn’t have been instituted. The Solicitor General had also argued that this case was a poor vehicle to decide the question on which the Supreme Court ultimately granted cert, in large part because of the Director’s reconsideration of Section 315(b) and the agency’s subsequent intention not to institute IPR proceedings in similar situations even when a complaint is dismissed voluntarily without prejudice.

Also in May, Click-to-Call filed a brief in opposition in which it had argued that the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu “unequivocally confirmed” that Section 314(d) doesn’t foreclose all judicial review of institution decisions, especially where such review calls into question an agency’s interpretation of its statutory authority. Click-to-Call noted that the Supreme Court had recently denied a petition for writ this March on the same question that was presented in RPX Corporation v. Applications In Internet Time, LLC. Click-to-Call called Dex Media’s position “extraordinary” in that an inability to review institution decisions within the context of the statute would give the USPTO authority that Congress never intended to provide.

Other Petitions Granted and Denied

The Supreme Court’s Monday order list included three other IP cases.

Cert was denied in Ariosa Diagnostics Inc. v. Illumina Inc., which asked the Court to determine whether unclaimed disclosures in a published patent application and an earlier application relied upon for priority become prior art as of the earlier application’s filing date, or if the prior art date of the disclosures depends upon whether the published application also claims subject matter from the earlier application.

SCOTUS also denied cert in InvestPic, LLC v. SAP America Inc. which asked whether the Federal Circuit’s “physical realm” test contravenes both the Patent Act and Supreme Court precedent by categorically excluding otherwise patentable processes from patent eligibility.

And the Court granted cert in Georgia v. Public.Resource.Org Inc., a copyright case which asks whether the government edicts doctrine renders uncopyrightable works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.