Thomas King in Bloomberg Law and IP Magazine: PTAB Time Bar Decisions Can’t be Appealed, SCOTUS Rules

04/21/2020

Bloomberg Law and Intellectual Property Magazine quoted Haynes and Boone, LLP Partner Thomas King in articles about a U.S. Supreme Court decision that the Patent Trial and Appeal Board (PTAB) time-bar determinations for inter partes review (IPR) of a patent cannot be appealed.

Here are excerpts:

Bloomberg Law:

The Supreme Court in a 7-2 decision in Thryv, Inc. v. Click-To-Call Technologies, LP concluded that a federal patent law provision that the PTAB’s decision to institute inter partes review of a patent is unappealable precludes review of a time-bar determination.

The ruling could curb the Federal Circuit’s ability to assess other issues arising in the initial stages of patent reviews, such as whether a company named all parties with an interest in a board challenge.

The court will be constrained from issuing those types of decisions in the future, and some attorneys expect additional fights over the scope of the appeal ban. Others said there could be arguments among litigants about whether the PTAB has to follow the court’s precedent on questions related to the time-bar.

“I think in trying to make the court’s job easier, the Supreme Court might have made things harder,” Thomas King, a partner at Haynes and Boone, LLP, said.

To read the full article, click here.

IP Magazine:

Haynes and Boone’s Tom King expressed concern that leaving the Federal Circuit out of the PTAB institution process “creates a range of questions that may never be answered conclusively.”

He highlighted that litigants whose IPR were previously barred by the holdings in Click-to-Call or Wi-Fi One will want to “reconsider filing an IPR petition to take advantage of this opportunity.”

King stated, “And litigants who are facing previously-barred IPRs may want to consider whether there are non-appeal mechanisms for challenging these changes in IPR practice.”

To read the full article, click here.

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