INTER PARTES REVIEW

Issues

This case arises from a suit in which ComplementSoft claimed SAS Institute infringed its patent and SAS responded by petitioning the Patent Trial and Appeal Board (“PTAB”) for a determination on the validity of ComplementSoft’s patent. SAS argues that, based on a straightforward reading of 35 U.S.C. § 318(a) and the legislative history of the America Invents Act (“the Act”), the PTAB must issue a final written decision on each of the petitioner’s claims. Relying on the same methods of analysis, ComplementSoft reaches the opposite conclusion, arguing that the PTAB must be allowed discretion to select specific claims for review. The Director of the Patent and Trademark Office, which sits above the PTAB, also asserts that the PTAB must have discretion in selecting claims for review. Accordingly, the Court’s decision will affect the efficiency of the PTAB’s review proceedings and impact how parties petition the PTAB.

Questions as Framed for the Court by the Parties

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Issues

In this case, the Supreme Court will decide whether 35 U.S.C. § 314(d) precludes judicial review of the Patent Trial and Appeal Board’s (“the Board”) decision to grant an inter partes review after determining that an effective statute of limitations under Section 315(b) does not apply. Thryv, Inc., contends that the plain language of Sections 314(d) and 315(b) and relevant Supreme Court precedent renders such decisions nonappealable. Click-To-Call Technologies counters that the plain language of Section 314(d) contains nothing to indicate that judicial review of the Board’s interpretation of Section 315(b) is prohibited, and that Supreme Court precedent has confirmed this understanding. The outcome of this case will have important implications on the scope of administrative power, incentives for product innovation, and the integrity of the patent system.

Questions as Framed for the Court by the Parties

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