In an energetic dissent in Thryv, Inc. v. Click-to-Call Tech., LP, 590 U.S. __ (Apr. 20, 2020), US Supreme Court Justice Neil Gorsuch provides a compelling defense of patent rights, and he champions a patent owner’s ability to obtain judicial review of certain threshold administrative decisions from the Patent Trial and Appeal Board (PTAB). But while Justice Gorsuch’s insightful analysis is receiving accolades from many in the patent community, it failed to garner any support among his Supreme Court colleagues, save for one, Justice Sotomayor.

In the proceedings leading up to this recent decision, Click-to-Call sued Thryv for patent infringement. As is common in such litigation, Thryv filed an inter partes review (IPR) petition with the PTAB, challenging the patentability of Click-to-Call’s patent. Click-to-Call responded to the petition by arguing, in part, that a previous lawsuit between the parties more than a year earlier precluded the IPR petition under 35 U.S.C. § 315(b), the so-called “one-year time bar”. In its Institution Decision, the panel of three Administrative Patent Judges (“APJs”) disagreed with Click-to-Call, finding that the previous litigation had been dismissed “without prejudice”, and thus did not trigger Section 315(b)’s time bar. In its Final Written Decision at the conclusion of the IPR proceeding, the same 3-APJ panel found that Thryv had successfully proven that Click-to-Call’s patent was unpatentable (~invalid) in view of Thryv’s asserted prior art. The panel also reiterated that the IPR proceeding was not time barred under Section 315(b).

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