Cert Grant on Appealability of Instituting Inter Partes Review


June 25, 2019
By Bryan Lammon

The Supreme Court granted cert yesterday in Dex Media Inc. v. Click-To-Call Technologies, LP. The case concerns the appealability of the Patent Trial and Appeal Board’s decision to institute inter partes review. The statute in question—35 U.S.C. § 314(d)—says that “[t]he determination . . . whether to institute an inter partes review under this section shall be final and nonappealable.” But the Federal Circuit held that this provision does not deprive that court of jurisdiction to review the Board’s conclusion that a petition to institute inter partes review was timely. In Dex Media, the Supreme Court will review this interpretation of § 314(d).

Side note: This means that next term will see three cases on appellate jurisdiction and procedure: Dex Media, Holguin-Hernandez v. United States (which will address whether defendants must formally object to the length of their sentence to preserve the issue for appeal), and Ritzen Group Inc. v. Jackson Masonry, LLC (which will address whether a denial of bankruptcy-stay relief is final and appealable).

Below is a quick introduction to Dex Media and some useful links for reading up on the case.

Simplifying (quite) a bit, inter partes review is a proceeding before the Patent Trial and Appeal Board to adjudicate the validity of a patent. Anyone (besides the patent owner) can petition the Board to institute the review process. And certain requirements must be met for inter parties review to be proper. One of those requirements is that the the petitioner must seek review within one year of receiving a complaint alleging infringement of the patent in question.

The statute governing inter partes review also places limits on appeals: 35 U.S.C. § 314(d) says that “[t]he determination . . . whether to institute an inter partes review under this section shall be final and nonappealable.”

But last year, in Wi-Fi One, LLC v. Broadcom Corp., the en banc Federal Circuit held that § 314(d) does not bar appellate review of whether a petition for inter partes review was timely filed. The Federal Circuit then applied that rule in Dex Media (which was captioned Click-To-Call Technologies, LP v. Ingenio, Inc. in the Federal Circuit) to hear an appeal on the timeliness of a petition for review.

The court went on to hold that a complaint that was dismissed without prejudice started the one-year period for petitioning for inter partes review. And because the petitioner in Dex Media had sought review more than a year after a complaint concerning the patent was dismissed without prejudice, the Federal Circuit held that the petition was untimely.

The Supreme Court granted cert in Dex Media to address the appealability of the Board’s determination that a petition for inter partes review was timely filed. Although Dex Media also sought cert on whether the filing of a complaint that was dismissed with prejudice begins the one-year clock for seeking inter partes review, the Court did not grant cert on that issue.

Final Decisions PLLC is an appellate boutique and consultancy that focuses on federal appellate jurisdiction. We partner with lawyers facing appellate-jurisdiction issues, working as consultants or co-counsel to achieve positive outcomes on appeal. Contact us to learn how we can work together.

Learn More Contact

Related Posts


The Fifth and Federal Circuits cannot agree on where appeals of Walker Process claims belong. These claims allege that someone violated the Sherman Act by fraudulently obtaining a patent. The Federal Circuit—which has exclusive jurisdiction over claims arising under the patent laws—thinks that these cases do not arise under the patent laws. So it transfers […]

Continue reading....

Mandamus is supposedly an extraordinary remedy. But a new paper from Jonas Anderson, Paul Gugliuzza, and Jason Rantanen shows that grants of the writ have become somewhat ordinary in Federal Circuit. And those grants have largely addressed venue issues in patent cases filed in the Eastern and Western Districts of Texas. (I discussed a trio […]

Continue reading....

In In re Google LLC, the Federal Circuit used mandamus to order that a case be dismissed or transferred due to improper venue. The district court had concluded that Google’s having cache servers (but no employees) within the Eastern District of Texas was enough for venue to be proper in a patent-infringement suit. The Federal […]

Continue reading....

The cumulative-finality doctrine provides that certain subsequent events can save a premature notice of appeal filed after certain district court decisions. As I detailed in a 2018 article, the doctrine cannot be stated with any greater precision because the courts of appeals are all over the map on when exactly notices can be saved. Three […]

Continue reading....

I’ve talked several times on this site about the recently denied cert petition in Xitronix Corp. v. KLA-Tencor Corp. The case involved a maddening back-and-forth between the Federal and Fifth Circuits, with each court saying that the other had appellate jurisdiction to review a Walker Process claim. More specifically, the two circuits disagreed about whether Walker […]

Continue reading....

Recent Posts


In two appeals—Clark v. Louisville-Jefferson County Metro Government and Salter v. City of Detroit, the Sixth Circuit spoke at length about its jurisdiction to review certain Brady issues as part of qualified-immunity appeals. The cases produced a total of six opinions, several of which dove into this jurisdictional issue.

Continue reading....

In Rossy v. City of Buffalo, the Second Circuit appeared to both dismiss a qualified-immunity appeal for a lack of jurisdiction and exercise pendent appellate jurisdiction over a plaintiff’s cross-appeal. This is odd. Pendent appellate jurisdiction allows normally non-appealable issues to tag along with appealable ones. But if the denial of qualified immunity was not […]

Continue reading....

I’ve frequently written about the problem of fact-based qualified-immunity appeals both on this website and in my research. I recently decided to collect some new data on how much needless delay these appeals add to civil-rights litigation. I had done something similar a few years ago when writing about the need to sanction defendants for […]

Continue reading....

Yesterday, I filed an amicus brief in support of the petitioner in Parrish v. United States, which is currently pending before the Supreme Court. The case asks if an appellant must file a new notice of appeal after the district court reopens the time to appeal under Federal Rule of Appellate Procedure 4(a)(6). Both the […]

Continue reading....

Last month saw another rejection of pure Bivens appeals, an analysis of Perlman appeals in the grand-jury context, and a ruling on mandatory stays during a remand appeal. Plus an odd sovereign-immunity appeal, appeals without the express resolution of all claims, and much more.

Continue reading....