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Thryv, Inc., fka Dex Media, Inc. v. Click-To-Call Technologies, LP, et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2015-1242 · judgment August 16, 2018

Decided · April 20, 2020
Pre-decision estimate: 3% cert probability

Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.

Questions presented

Granted limited to question 1 presented by the petition. The America Invents Act created "inter partes review" ("IPR"), an agency procedure for challenging a patent before the Patent Trial and Appeal Board ("PTAB"). The statute has two provisions relevant here, each of which was interpreted by a divided Federal Circuit sitting en banc. First, 35 U.8.C. § 315(b) provides that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent." Second, § 314(d) provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." In a recent case, the en banc Federal Circuit held (with four dissenters) that, notwithstanding§ 314(d), a PTAB decision to institute an IPR after finding that the § 315(b) time bar did not apply was appealable. The panel applied that ruling in this case. Then, the en banc Federal Circuit, again divided (with two dissenters), held in this case that service of a patent infringement complaint that is later dismissed without prejudice triggers the§ 315(b) time bar. The questions presented are:

  1. Whether 35 U.8.C. § 314(d) permits appeal of the PTAB's decision to institute an inter partes review upon finding that§ 315(b)'s time bar did not apply.

  2. Whether 35 U.8.C. § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice.

Counsel of record

For petitioner
Adam Howard Charnes
Kilpatrick Townsend

For respondent
Noel John Francisco
Jones Day

Case

Conference history
Distributed for 3 conferences

Amicus briefs
3 cert-stage · 14 merits
(9 supporting pet./neither, 5 respondent)

Argument & decision

Argued December 9, 2019 — Adam H. Charnes · Jonathan Y. Ellis · Daniel L. Geyser. Audio and transcript

Decided April 20, 2020. Opinion by Ginsburg.

Proceedings

  1. May 22 2020
    JUDGMENT ISSUED
  2. Apr 20 2020
    Judgment VACATED and case REMANDED. Ginsburg, J., delivered the opinion of the Court, in which Roberts, C. J., and Breyer, Kagan, and Kavanaugh, JJ., joined, and in which Thomas and Alito, JJ., joined except as to Part III–C. Gorsuch, J., filed a dissenting opinion, in which Sotomayor, J., joined as to Parts I, II, III, and IV.
  3. Dec 09 2019
    Argued. For petitioner: Adam H. Charnes, Dallas, Tex. For federal respondent supporting reversal: Jonathan Y. Ellis, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For private respondent: Daniel L. Geyser, Dallas, Tex.
  4. Nov 27 2019
    Reply of respondent Federal Respondent filed. (Distributed)
  5. Nov 26 2019
    Reply of petitioner Thryv, Inc., fka Dex Media, Inc. filed. (Distributed)
  6. Nov 15 2019
    Letter from counsel for amici Professors of Patent and Administrative Law notifying Clerk of receipt of consent from all parties to the filing of an amicus brief filed.
  7. Nov 12 2019
    Motion for divided argument filed by respondent GRANTED.
  8. Nov 04 2019
    Amicus brief of Pharmaceutical Research and Manufacturers of America not accepted for filing. (November 04, 2019 - Corrected version submitted).
  9. Nov 04 2019
    Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed. (November 4, 2019) (Distributed)
  10. Nov 04 2019
    Brief amicus curiae of Biotechnology Innovation Organization filed. (Distributed)
  11. Nov 04 2019
    Brief amicus curiae of Professor Stephen I. Vladeck filed. (Distributed)
  12. Nov 04 2019
    Brief amici curiae of Professors of Patent and Administrative Law filed. (Distributed)
  13. Nov 04 2019
    Brief amicus curiae of Power Integrations, Inc. filed. (Distributed)
  14. Nov 01 2019
    Record from the U.S.C.A. Federal Circuit is electronic and located on Pacer, with the exception of 1 enevelope of confidential documents.
  15. Oct 28 2019
    Brief of respondent Click-To-Call Technologies, LP filed. (Distributed)
  16. Oct 25 2019
    CIRCULATED
  17. Oct 23 2019
    Record requested from the U.S.C.A. Federal Circuit.
  18. Oct 18 2019
    Brief amicus curiae of New York Intellectual Property Law Association filed.
  19. Sep 13 2019
    SET FOR ARGUMENT on Monday, December 9, 2019. VIDED.
  20. Sep 13 2019
    Motion for divided argument filed by the Solicitor General.
  21. Sep 10 2019
    Brief amicus curiae of PTAB Bar Association in support of neither party filed.
  22. Sep 10 2019
    Brief amicus curiae of Atlanta Gas Light Company filed.
  23. Sep 10 2019
    Brief amicus curiae of Intel Corporation filed.
  24. Sep 10 2019
    Brief amici curiae of ON Semiconductor Corporation, et al. filed.
  25. Sep 10 2019
    Brief amicus curiae of Superior Communications, Inc. filed.
  26. Sep 10 2019
    Brief amicus curiae of American Intellectual Property Law Association in support of neither party filed.
  27. Sep 10 2019
    Brief amici curiae of AARP and AARP Foundation filed.
  28. Sep 09 2019
    Brief amicus curiae of Federal Circuit Bar Association in support of neither party filed.
  29. Sep 03 2019
    Brief of Federal Respondent supporting reversal filed.
  30. Sep 03 2019
    Brief of petitioner Thryv, Inc., fka Dex Media, Inc. filed.
  31. Aug 23 2019
    Motion to dispense with printing the joint appendix filed by petitioner GRANTED.
  32. Aug 20 2019
    Joint motion to further extend the time to file the briefs on the merits granted. The time to file the joint appendix and petitioner's brief on the merits is further extended to and including September 3, 2019. The time to file respondents' briefs on the merits is further extended to and including October 28, 2019.
  33. Aug 16 2019
    Joint motion for a further extension of time to file the briefs on the merits filed.
  34. Aug 13 2019
    Blanket Consent filed by Respondent, Click-To-Call Technologies, LP,, et al.
  35. Jul 29 2019
    Blanket Consent filed by Petitioner, Dex Media, Inc.
  36. Jul 29 2019
    Notice of change of entity name of Dex Media, Inc. filed.
  37. Jul 09 2019
    Joint motion for an extension of time to file the briefs on the merits filed.
  38. Jul 09 2019
    Motion to dispense with printing the joint appendix filed by petitioner Dex Media, Inc.
  39. Jul 09 2019
    Joint motion to extend the time to file the briefs on the merits granted. The time to file petitioner's brief on the merits is extended to and including August 22, 2019. The time to file respondents' briefs on the merits is extended to and including October 7, 2019.
  40. Jun 24 2019
    Petition GRANTED limited to Question 1 presented by the petition.
  41. Jun 17 2019
    DISTRIBUTED for Conference of 6/20/2019.
  42. May 28 2019
    Rescheduled.
  43. May 28 2019
    DISTRIBUTED for Conference of 6/13/2019.
  44. May 21 2019
    DISTRIBUTED for Conference of 6/6/2019.
  45. May 17 2019
    Reply of petitioner Dex Media, Inc., filed.
  46. May 08 2019
    Brief of respondent Click-To-Call Technologies, LP in opposition filed.
  47. May 01 2019
    Brief of Federal Respondent in opposition filed.
  48. Mar 29 2019
    Motion to extend the time to file a response is granted and the time is further extended to and including May 8, 2019.
  49. Mar 26 2019
    Motion of Click-to-Call Technologies, LP, to extend the time to file a response from May 1, 2019 to May 8, 2019, submitted to The Clerk.
  50. Mar 19 2019
    Motion to extend the time to file a response is granted and the time is further extended to and including May 1, 2019, for all respondents.
  51. Mar 18 2019
    Motion to extend the time to file a response from April 1, 2019 to May 1, 2019, submitted to The Clerk.
  52. Feb 14 2019
    Brief amicus curiae of Superior Communications, Inc. filed.
  53. Feb 13 2019
    Brief amicus curiae of Frontier Communications Corporation filed.
  54. Feb 13 2019
    Brief amicus curiae of The Association for Accessible Medicines filed.
  55. Feb 12 2019
    Motion to extend the time to file a response is granted and the time is extended to and including April 1, 2019, for all respondents.
  56. Feb 07 2019
    Motion to extend the time to file a response is granted and the time is extended to and including March 18, 2019, for all respondents.
  57. Feb 06 2019
    Motion to extend the time to file a response from February 14, 2019 to March 18, 2019, submitted to The Clerk.
  58. Feb 06 2019
    Motion to extend the time to file a response from February 14, 2019 to April 1, 2019, submitted to The Clerk.
  59. Jan 11 2019
    Petition for a writ of certiorari filed. (Response due February 14, 2019)
  60. Nov 20 2018
    Application (18A485) granted by The Chief Justice extending the time to file until January 11, 2019.
  61. Nov 19 2018
    Application (18A485) to extend further the time from December 14, 2018 to January 11, 2019, submitted to The Chief Justice.
    Written RequestProof of Service
  62. Nov 07 2018
    Application (18A485) granted by The Chief Justice extending the time to file until December 14, 2018.
  63. Oct 30 2018
    Application (18A485) to extend the time to file a petition for a writ of certiorari from November 14, 2018 to December 14, 2018, submitted to The Chief Justice.
    Main DocumentLower Court Orders/OpinionsProof of Service