SCOTUS Clarifies PTAB Institution Issues Not Subject to Appeal

Back In December I pointed out that the SCOTUS would likely tighten the PTAB appeal bar in Dex Media Inc. v. Click-To-Call Technologies, LP, explaining that, based on the oral argument, that several justices of the Court seemed to take the view that technical violations, such as 315(b) were too closely related to the institution determination of the agency. 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.” (transcript here)

Today’s majority decision, authored by Justice Ginsburg, presented no surprises.

As a reminder, Dex Media considered whether disputed violations of 35 U.S.C. § 315(b) are barred from appeal under 35 U.S.C. 315(d). perhaps most succinctly, today’s decision (here) explained:

" Congress prioritized patentability over §315(b)’s timeliness requirement. A petitioner’s failure to satisfy §315(b) does not prevent the agency from conducting inter partes review of the challenged patent claims; the agency can do so at another petitioner’s request. §311(a). Nor does failure to satisfy §315(b) prevent the original initiator from participating on the merits; the §315(b)-barred party can join a proceeding initiated by another petitioner. §315(b), (c). And once inter partes review is instituted, the agency may issue a final written decision even “[i]f no petitioner remains in the inter partes review.” §317(a). It is unsurprising that a statutory scheme so consistently elevating resolution of patentability above a petitioner’s compliance with §315(b) would exclude §315(b) appeals, thereby preserving the Board’s adjudication of the merits.

In a zinger of a footnote that is likely to irritate PTAB critics, the majority addressed the argument that the PTAB is somehow unfair in its review of patents:

" Why should that bureaucracy be trusted to give an honest count on first view, but a jaundiced one on second look?

Justice Gorsuch authored a strongly worded dissent that the majority labeled “dangerous,” in its Section V characterization of the majority’s holding. The dissent was joined by Justice Sotomayor (Parts I-IV), but not the more controversial Section V. The dissent largely adopted the statutory construction arguments of the patent owner in Sections I-V. The more colorful Section V launches from a familiar, conservative sore spot, explaining:

" The Court’s expansive reading of §314(d) takes us further down the road of handing over judicial powers involving the disposition of individual rights to executive agency officials.

An interesting read to say the least.

What does all of this mean for PTAB practitioners? A heightened importance for institution decisions, and POP determinations directed to such issues. For example, the PTAB has made clear that suits dismissed without prejudice, will still count toward the 315(b) bar. As Director’s come and go, that mindset could change, as could any similar precedent on questions of RPI/privity. These issues will not make it to the Federal Circuit again.

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