SCOTUS to Recalibrate Appeal Bar

Earlier this week the SCOTUS heard arguments in Dex Media Inc. v. Click-To-Call Technologies, LP. As a reminder, the issue presented was the scope of the appeal bar of 35 U.S.C. § 314(d) for AIA Trial Proceedings. More particularly, whether disputed violations of 35 U.S.C. § 315(b) are barred from appeal.

The court initially addressed the appeal bar in Cuozzo, commenting that the appeal bar would not preclude all appeals, such as “shenanigans” where the agency exceeds its statutory bounds. The Court addressed the bar again, arguably in passing, in SAS v. Iancu: “Cuozzo concluded that Section 314(d) precludes judicial review only of the Director’s ‘initial determination’ under Section 314(a) that ‘there is a “reasonable likelihood” that the claims are unpatentable on the grounds asserted’ (emphasis added). It was the perceived tension in these statements that was the focus of the oral argument.

While the parties debated whether the statement in SAS was correct, several justices of the Court seemed to take the view that technical violations, such as 315(b) were not important enough to constitute a “shenanigan” under Cuozzo given the fact that the ultimate determination had other paths to appellate review, and unraveling such a determination for such a violation seemed counterproductive. For example, Justices Kagan and Ginsburg explained it would be “a little bit silly to go back to square one” and that there was “something unseemly about nullifying the determination on the merits.” These statements seem to communicate a belief that such issues do not rise to the level of “shenanigans.” Other Justices commented on the perceived “small potatoes” nature of the technicality. (transcript here)

Given the Court’s satisfaction that there are other paths to appellate review on the merits case (perhaps satisfying the separation of powers concern for this appeal bar), and the view that this particular issue is more in the way of a technicality, it is my expectation that the Court will tighten the appeal bar to preclude 315(b) appeals, which would likely also sweep in other common technical disputes now on appeal, such as RPI/privity disputes.

Stay tuned.

Scott A. McKeown is an author of the Patents Post Grant