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Making sense of a “mind numbingly technical” SCOTUS patent case

| May 5, 2020 | Uncategorized

The Supreme Court of the United States (SCOTUS), like everyone these days, is doing its best to continue to function despite current shelter in place and stay at home orders. It will begin hearing cases over the phone, which should make for some interesting moments, but has also released holdings from previously argued cases. This post will discuss a recent SCOTUS case involving a patent law issue.

What was the question in the case?

The case, Thryv Inc. v. Click-to-Call Technologies, LP, questions the Patent and Trademark Office’s (PTO) power to administer reviews of previously issued patents. If it makes a mistake, can federal courts correct the mistake? This leads to an interesting discussion about government powers, including an analysis of when the judicial branch (SCOTUS) can review decisions made by the executive branch (PTO) when Congress has precluded judicial review, at least to some extent. Though interesting, it was a discussion that led some legal scholars to note the opinion was, at times, “mind numbingly technical.”

To find an answer, the justices address the question of inter partes review as presented in this case. Inter partes review is an administrative procedure allowed by patent law that results in the review of the validity of a patent. This process cannot be used at any time, there is a catch. This review must be completed within one year of receiving a complaint alleging patent infringement.

In this case, the PTO made a mistake and allowed a review for a patent that was well past the one-year time bar. The PTO admits the mistake, but argues the issue is not reviewable by the federal courts. SCOTUS digs into the language of the law as well as the purpose of the separation between the PTO and the federal courts to find a decision.

Ultimately, the justices agree with the PTO. SCOTUS holds the federal courts lacked jurisdiction to hear the case.

How will this impact future patent cases?

As noted in the dissent, there are concerns this holding could result in manipulation of infringement actions because the timing of the challenge could trigger the time bar. This may result in hesitation to move forward with a complaint. Instead of hesitating, it is wise to seek legal counsel experienced with these matters if you are concerned your patent is being infringed. An attorney can review the situation and discus your options.