On Monday, June 27, the Supreme Court granted Click-to-Call’s petition for writ of certiorari, vacated the Federal Circuit’s judgment below, and remanded the case “for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___ (2016).” Click-to-Call Technologies, LP v. Oracle, Corp., No. 15-1014. This so-called “GVR” order leaves open the question of whether Click-to-Call may challenge an aspect of the PTAB’s institution decision on grounds left (purposefully) unanswered in the Supreme Court’s Cuozzo decision. Unfortunately for Click-to-Call, the Federal Circuit is likely to ‘hang up on’ its appeal once and for all.
Briefly, Click-to-Call is one in a series of cases involving 35 U.S.C. § 314(d)’s dictate that the decision of “whether to institute an inter partes review under this section shall be final and nonappealable.” In Click-to-Call, the patent owner challenged the PTAB’s jurisdiction to institute an IPR under 35 U.S.C. § 315(b), which provides that an IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” While there was admittedly an earlier lawsuit, the PTAB concluded that § 315(b) was not a bar because the suit had been dismissed without prejudice, “leaving the parties in the same legal position as if the underlying complaint had never been served.” Oracle Corp. v. Click–to–Call Techs. LP, No. IPR2013–00312, 2014 WL 5490583, at *7 (P.T.A.B. Oct. 28, 2014). Click-to-Call sought to challenge this ruling in the Federal Circuit, but the appeal was dismissed by the Federal Circuit by virtue of § 314(d).
As the GVR Order indicates, § 314(d) was at issue in the Supreme Court’s Cuozzo decision. Over the dissent of Justice Alito (joined by Justice Sotomayor), the Court held that § 314(d) barred Cuozzo’s challenge to the PTAB’s institution decision, where the petition had included only a dependent claim, but the Board nevertheless instituted the IPR on two additional claims from which that claim depended. The Court reasoned that, where a challenge is based on the correctness of the “reasonable likelihood” of success determination, “or where a patent holder grounds its claim in a statute closely related to that decision to institute inter partes review, §314(d) bars judicial review.” Slip Op. at 12. But responding to the dissent, the Court also stated that it was not “categorically preclud[ing]” review when the agency “act[s] outside its statutory limits by, for example cancelling a patent claim for ‘indefiniteness under §112’ in inter partes review.” Slip Op. at 11.
The question before the Federal Circuit is whether Click-to-Call’s challenge is better analogized as “closely related to” the decision to institute an IPR, or instead as a challenge to the scope of the PTAB’s statutory authority. As Justice Alito noted, the precise contours of this analysis will not be easy. Nonetheless, it seems unlikely that the Federal Circuit will feel compelled to establish the contours of the ‘exception’ rather than the rule in the immediate wake of Cuozzo, bringing Click-to-Call’s appeal to an end.