Cert Petitions

Cert Grant on Appealability of Instituting Inter Partes Review

In Dex Media, the Supreme Court will address whether § 314(d) bars appellate review of the determination that a party timely sought 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.

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