Thryv v. Click-To-Call — Patents

Q: Can you ever appeal a PTAB time-bar ruling after Thryv?

Not on the merits of the time-bar question itself. Thryv held that a § 315(b) determination is part of the nonappealable institution decision under § 314(d). Narrow avenues may remain for constitutional challenges or claims that the agency acted outside its statutory authority, but the ordinary time-bar dispute is closed to appeal.

Q: Did Thryv overrule Wi-Fi One v. Broadcom?

Effectively yes. Thryv abrogated the Federal Circuit's en banc decision in Wi-Fi One, LLC v. Broadcom Corp., which had held that time-bar determinations under § 315(b) were appealable. After Thryv, they are not.

The Supreme Court held that a PTAB ruling on the one-year time bar for inter partes review is part of the institution decision and therefore cannot be appealed under Section 314(d).

Inter partes review comes with a deadline: an accused infringer generally has one year after being sued to ask the Patent Office to cancel the patent. But who decides whether that deadline was missed — and can a court review the answer? In Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020), the Supreme Court held that the Patent Trial and Appeal Board’s ruling on the one-year time bar is part of the institution decision and therefore “final and nonappealable” under 35 U.S.C. § 314(d). Writing for a 7-2 Court on April 20, 2020, Justice Ruth Bader Ginsburg extended the logic of Cuozzo Speed Technologies v. Lee and wiped out a recent Federal Circuit rule that had allowed time-bar appeals.

At a glance

Case: Thryv, Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S. Apr. 20, 2020), reported at 590 U.S. 45.
Court: Supreme Court of the United States; opinion by Justice Ginsburg for a 7-2 Court. Justice Gorsuch dissented, joined in part by Justice Sotomayor.
Posture: Review of an en banc Federal Circuit judgment that had held the § 315(b) time-bar determination appealable and vacated the Board’s cancellation of Click-To-Call’s claims.
Holding: A challenge that an IPR petition is untimely under § 315(b) is a contention that the agency should have refused to institute review; § 314(d) bars judicial review of that determination.
Significance: Abrogated Wi-Fi One v. Broadcom, broadened the unappealable zone around institution, and reinforced finality at the cost of appellate oversight of the time bar.

A complaint, a dismissal, and a long delay

The patent at issue covered technology for anonymizing telephone calls. The fight over timing reached back nearly two decades. In 2001, a predecessor-in-interest had been served with a complaint alleging infringement of the patent, but that suit was voluntarily dismissed without prejudice. Years later, in 2013, Thryv’s predecessor (then Dex Media) petitioned for inter partes review. Click-To-Call argued the petition was untimely under § 315(b) because a privy had been served with an infringement complaint more than a year earlier — back in 2001.

The Board disagreed. It reasoned that a complaint dismissed without prejudice is treated as though it had never been served, so the 2001 suit did not start the one-year clock. The Board instituted review and cancelled most of the challenged claims as obvious. On appeal, the en banc Federal Circuit — relying on its decision in Wi-Fi One, LLC v. Broadcom Corp. — held that time-bar rulings were reviewable, concluded the petition was untimely, and vacated the Board’s decision. The Supreme Court granted certiorari to decide whether § 314(d) permits that appeal at all.

Section 314(d) and the meaning of “whether to institute”

Justice Ginsburg framed the question through statutory text. Section 314(d) makes “[t]he determination by the [Patent Office] whether to institute an inter partes review under this section” final and nonappealable. Section 315(b), in turn, provides that IPR “may not be instituted” on an untimely petition. Putting the two together, the Court reasoned that “a contention that a petition fails under § 315(b) is a contention that the agency should have refused ‘to institute an inter partes review.’” The time bar is, by its own terms, a condition on institution — so reviewing the Board’s time-bar call is reviewing the institution decision, which § 314(d) forbids.

The Court grounded the result in the purpose of the America Invents Act: to weed out bad patents efficiently. Allowing time-bar appeals, Justice Ginsburg explained, would “operate to save bad patent claims” by unwinding completed reviews on a “mine-run procedural” technicality unrelated to the patentability of the claims. Cuozzo had already held institution decisions generally unreviewable; Thryv confirmed that the time bar sits squarely inside that protected core, and it abrogated Wi-Fi One in the process.

The dissent and the cost of finality

Justice Gorsuch, joined in part by Justice Sotomayor, dissented sharply. He warned that the majority handed an executive agency unreviewable power to disregard a clear statutory limit Congress had placed on its authority — letting the PTAB cancel property rights even when it acted past a deadline the statute says it must respect. To the dissent, § 315(b) was not a mere procedural nicety but a substantive constraint that protects patent owners from stale challenges, and insulating the agency’s reading of it from any appeal “throws away” the judicial check Congress is presumed to have preserved.

The majority answered that Cuozzo’s narrow exceptions still stand. Section 314(d) does not bar review of constitutional questions or of agency action that exceeds statutory limits in some more fundamental way; it bars only the ordinary, “closely tied” disputes about whether the conditions for institution were met. The time bar, the Court held, falls on the unreviewable side of that line. The practical upshot is stark: a patent owner who believes the Board botched the one-year clock generally has no appellate remedy on that point.

Open questions

What survives of Cuozzo’s exceptions? Thryv reaffirmed that constitutional and ultra vires challenges escape § 314(d), but it did not clarify how a time-bar dispute could ever be reframed to fit those narrow openings.
Is mandamus available? The decision left unsettled whether extraordinary writs might reach a truly lawless time-bar ruling, even though ordinary appeal is foreclosed.
How will the Board police itself? With appellate review gone, the practical check on § 315(b) errors shifts to the agency’s own discretion and rehearing process.

Implications

Time-bar rulings are off-limits on appeal. A patent owner generally cannot get a federal court to review whether the Board correctly applied the one-year deadline.
Finality of institution is now very strong. Thryv extended Cuozzo and shrank the set of threshold issues the Federal Circuit can revisit.
Petitioners gain certainty. Once review is instituted and claims are cancelled, that outcome is far harder to undo on a timing argument.
Patent owners lose a safeguard. Stale or arguably untimely petitions can still produce binding cancellations with no appellate recourse on the time bar itself.
The § 314(d) map keeps evolving. Read with Cuozzo and SAS Institute, Thryv sharpens — but does not finish — the line between reviewable and unreviewable institution questions.

Frequently asked questions

What is the one-year time bar in inter partes review? Under 35 U.S.C. § 315(b), the Patent Office may not institute inter partes review if the petition is filed more than one year after the petitioner, a real party in interest, or a privy was served with a complaint alleging infringement of the patent. It limits how long an accused infringer can wait before petitioning.

Can you ever appeal a PTAB time-bar ruling after Thryv? Not on the merits of the time-bar question itself. Thryv held that a § 315(b) determination is part of the nonappealable institution decision under § 314(d). Narrow avenues may remain for constitutional challenges or claims that the agency acted outside its statutory authority, but the ordinary time-bar dispute is closed to appeal.

Did Thryv overrule Wi-Fi One v. Broadcom? Effectively yes. Thryv abrogated the Federal Circuit’s en banc decision in Wi-Fi One, LLC v. Broadcom Corp., which had held that time-bar determinations under § 315(b) were appealable. After Thryv, they are not.