Untimely IPR Petitions Can Be Granted
In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that the Patent and Trademark Office's decision to institute an inter partes review is unreviewable, even if the PTO decides to institute the review contrary to the time limit for petitioning for review.
The authority for deciding to grant a petition belongs to the PTO. 35 U. S. C. §314. If a party accused of infringement requests review more than a year after suit has been filed against it, “[a]n inter partes review may not be instituted.” §315(b). But “[t]he determination by the [PTO] Director whether to institute an inter partes review under this section shall be final and nonappealable.”
The PTO granted Thryv's petition for review that resulted several of Click-to-Call's patent claims being cancelled. Click-to-Call appealed arguing that the petition should never have been granted because it was untimely under §315(b).
The Court held that "[t]he agency’s application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by §314(d)."
So, while it is not recommended to let the statutory time run, a party that has waited more than a year to file an IPR petition after being sued for patent infringement might find that it is not an exercise in futility to file one.
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