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ARTICLE · 12 AUGUST 2020

SCOTUS Thryv Ruling Cracks Open Door On PTAB Joinder

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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In its decision in Thryv Inc. v. Click-To-Call Technologies LP, the U.S. Supreme Court confirmed broad discretionary power for the Patent Trial and Appeal Board (PTAB)...

United StatesIntellectual Property
Lionel Lavenue
Lionel Lavenue
Bradford C. Schulz
Bradford C. Schulz
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In its decision in Thryv Inc. v. Click-To-Call Technologies LP, the U.S. Supreme Court confirmed broad discretionary power for the Patent Trial and Appeal Board (PTAB) in instituting inter partes reviews (IPRs).

Despite this discretion, however, the PTAB remains reluctant to exercise its discretionary powers. In one area, joinder under 35 U.S.C. § 315(c), the PTAB exercises its discretionary power less frequently—even when instituting may minimize burdensome overlap between the PTAB and district court. Thryv may lead to increases in discretionary institutions for at least joinder petitions with potential Section 315 statutory bars.

The Supreme Court held that PTAB decisions exercising discretionary power to institute IPRs under Section 314(d) are nonappealable, despite time bars under Section 315.

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