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Supreme Court to Address No-Appeal
Provision for Patent Challenges
December 4, 2019
In 2011, Congress enacted major patent reform in the Leahy-Smith America Invents Act (AIA). The AIA,
among other things, created inter pales roview (IPR), an adversarial procedure during which the U.S.
Patent & Trademark Office's (PTO's) Patent Trial & Appeal Board (PTAB) reviews the validity of issued
patents. IPR allows any person, other than the patentee, to petition the PTAB for review. After receiving a
petition, the PTAB may institute review if it determines that there is a reasonable likelihood that the
petitioner would prevail. Under 35 U.S.C. § 314(d) (the so-called no-appeal provision), moreover, the
PTAB's determination to institute IPR under this section shall be final and nonappealable. In Thryv, Inc.
v Click-To-Call Technologies, LP, the Supreme Court is expected to address the breadth of the no-appeal
provision; specifically, whether a party may appeal the PTAB's determination that an IPR is not time-
barred. The decision in Click-to-Call may have considerable implications both for the scope of the
PTAB's authority and the role of IPRs in invalidating incorrectly issued patents.
Legal Background
Inter Partes Review
Under 35 U.S C. § 311, any person, other than the patentee, may petition the PTAB to review a patent's
validity. The petitioner may assert, for example, that the patented invention would have been obvious, and
thus a patent should not have been issued. The patent owner may then file a preliminary response. The
PTAB then decides, based on the petition and preliminary response, whether there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the [patent] claims challenged in
the petition. If the PTAB determines that there is a reasonable likelihood that the petitioner will prevail,
it may formally institute IPR.
In addition to demonstrating a reasonable likelihood of success on the merits, the petition must also meet
a number of procedural requirements. For example, the petitioner must identify all real parties-in-interest;
identify the challenged patent claims and the grounds for the challenge with particularity; and pay a fee
set by the PTO. The petitioner also must establish that the petition is not time-barred under 35 UJS.C.
§ 315(b), which provides that an IPR may not be instituted if the petition is filed more than 1 year after
Congressional Research Service
https://crsreports.congress.gov
LSB10374
CRS Legal Sidabar
Prepared for Members and
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