(Slip Opinion) OCTOBER TERM, 2019 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
THRYV, INC., FKA DEX MEDIA, INC. v. CLICK-TO-
CALL TECHNOLOGIES, LP, ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 18–916. Argued December 9, 2019—Decided April 20, 2020
Inter partes review is an administrative process that permits a patent
challenger to ask the U. S. Patent and Trademark Office to reconsider
the validity of earlier granted patent claims. For inter partes review
to proceed, the agency must agree to institute review. See 35 U. S. C.
§314. Among other conditions set by statute, if a request comes more
than a year after suit against the requesting party for patent infringe-
ment, “[a]n inter partes review may not be instituted.” §315(b). The
agency’s “determination . . . whether to institute an inter partes review
under this section shall be final and nonappealable.” §314(d).
Entities associated with petitioner Thryv, Inc. sought inter partes
review of a patent owned by respondent Click-to-Call Technologies,
LP. Click-to-Call countered that the petition was untimely under
§315(b). The Patent Trial and Appeal Board (Board) disagreed and
instituted review. After proceedings on the merits, the Board issued a
final written decision reiterating its §315(b) decision and canceling 13
of the patent’s claims as obvious or lacking novelty. Click-to-Call ap-
pealed the Board’s §315(b) determination. Treating the Board’s appli-
cation of §315(b) as judicially reviewable, the Court of Appeals con-
cluded that the petition was untimely, vacated the Board’s decision,
and remanded with instructions to dismiss.
Held: Section 314(d) precludes judicial review of the agency’s application
of §315(b)’s time prescription. Pp. 6–14.
(a) A party generally cannot contend on appeal that the agency
should have refused “to institute an inter partes review.” §314(d).
That follows from §314(d)’s text and Cuozzo Speed Technologies, LLC
v. Lee, 579 U. S. ___. In Cuozzo, this Court explained that §314(d)
“preclud[es] review of the Patent Office’s institution decisions”—at
2 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Syllabus
least “where the grounds for attacking the decision to institute inter
partes review consist of questions that are closely tied to the applica-
tion and interpretation of statutes related to the Patent Office’s deci-
sion to initiate inter partes review.” Id., at ___. Pp. 6–7.
(b) The question here is whether a challenge based on §315(b) ranks
as an appeal of the agency’s decision “to institute an inter partes re-
view.” §314(d). There is no need to venture beyond Cuozzo’s holding
that §314(d) bars review at least of matters “closely tied to the appli-
cation and interpretation of statutes related to” the institution deci-
sion, 579 U. S., at ___. A §315(b) challenge easily meets that measure-
ment. Section 315(b), setting forth a circumstance in which “[a]n inter
partes review may not be instituted,” expressly governs institution and
nothing more. Pp. 7–8.
(c) This conclusion is strongly reinforced by the statute’s purpose
and design. Congress designed inter partes review to weed out bad
patent claims efficiently. Allowing §315(b) appeals, however, would
unwind agency proceedings determining patentability and leave bad
patents enforceable. Pp. 8–10.
(d) In Click-to-Call’s view, §314(d)’s bar on judicial review is limited
to the agency’s threshold determination under §314(a) of the question
whether the petitioner has a reasonable likelihood of prevailing.
Cuozzo is fatal to that interpretation, for the Court in that case held
unreviewable the agency’s application of a provision other than
§314(a). Contrary to Click-to-Call’s contention, §314(d)’s text does not
limit the review bar to §314(a). Rather than borrowing language from
related provisions that would have achieved Click-to-Call’s preferred
meaning, Congress used broader language in §314(d). Click-to-Call
also insists that Congress intended judicial supervision of the agency’s
application of §315(b), but the statute instead reflects a choice to en-
trust that issue to the agency. Finally, SAS Institute Inc. v. Iancu, 584
U. S. ___, offers Click-to-Call no assistance. Unlike the appeal held
reviewable in SAS Institute, Click-to-Call’s appeal challenges not the
manner in which the agency’s review proceeds once instituted, but
whether the agency should have instituted review at all. Pp. 10–13.
(e) Click-to-Call argues in the alternative that its §315(b) objection
is authorized as an appeal from the Board’s final written decision,
which addressed the §315(b) issue. Even labeled that way, Click-to-
Call’s appeal is still barred by §314(d) because Click-to-Call’s conten-
tion remains, essentially, that the agency should have refused to insti-
tute inter partes review. P. 14.
899 F. 3d 1321, vacated and remanded.
GINSBURG, J., delivered the opinion of the Court, in which ROBERTS,
C. J., and BREYER, KAGAN, and KAVANAUGH, JJ., joined, and in which
Cite as: 590 U. S. ____ (2020) 3
Syllabus
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.
Cite as: 590 U. S. ____ (2020) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order that
corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 18–916
_________________
THRYV, INC., FKA DEX MEDIA, INC., PETITIONER v.
CLICK-TO-CALL TECHNOLOGIES, LP, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[April 20, 2020]
JUSTICE GINSBURG delivered the opinion of the Court.*
Inter partes review is an administrative process in which
a patent challenger may ask the U. S. Patent and Trade-
mark Office (PTO) to reconsider the validity of earlier
granted patent claims. This case concerns a statutorily pre-
scribed limitation of the issues a party may raise on appeal
from an inter partes review proceeding.
When presented with a request for inter partes review,
the agency must decide whether to institute review. 35
U. S. C. §314. Among other conditions set by statute, if the
request comes more than a year after suit against the re-
questing party for patent infringement, “[a]n inter partes
review may not be instituted.” §315(b). “The determination
by the [PTO] Director whether to institute an inter partes
review under this section shall be final and nonappealable.”
§314(d).†
In this case, the agency instituted inter partes review in
——————
*JUSTICE THOMAS and JUSTICE ALITO join all but Part III–C of this
opinion.
† Key statutory provisions are reproduced in an appendix to this opin-
ion.
2 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
response to a petition from Thryv, Inc., resulting in the can-
cellation of several patent claims. Patent owner Click-to-
Call Technologies, LP, appealed, contending that Thryv’s
petition was untimely under §315(b).
The question before us: Does §314(d)’s bar on judicial re-
view of the agency’s decision to institute inter partes review
preclude Click-to-Call’s appeal? Our answer is yes. The
agency’s application of §315(b)’s time limit, we hold, is
closely related to its decision whether to institute inter
partes review and is therefore rendered nonappealable by
§314(d).
I
The Patent and Trademark Office has several ways “to
reexamine—and perhaps cancel—a patent claim that it had
previously allowed.” Cuozzo Speed Technologies, LLC v.
Lee, 579 U. S. ___, ___ (2016) (slip op., at 3). Congress es-
tablished the procedure at issue here, inter partes review,
in the Leahy-Smith America Invents Act (AIA), 125 Stat.
284, enacted in 2011. See 35 U. S. C. §311 et seq. Inter
partes review allows third parties to challenge patent
claims on grounds of invalidity specified by statute.
§311(b).
For inter partes review to proceed, the agency must agree
to institute review. §314. Any person who is not the pat-
ent’s owner may file a petition requesting inter partes re-
view. §311(a). The patent owner may oppose institution of
inter partes review, asserting the petition’s “failure . . . to
meet any requirement of this chapter.” §313.
The AIA sets out prerequisites for institution. Among
them, “[t]he Director may not authorize an inter partes re-
view to be instituted unless the Director determines . . .
that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims chal-
lenged in the petition.” §314(a). Most pertinent to this case,
Cite as: 590 U. S. ____ (2020) 3
Opinion of the Court
“[a]n inter partes review may not be instituted if the peti-
tion requesting the proceeding is filed more than 1 year af-
ter 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.” §315(b).
After receiving the petition and any response, the PTO
“Director shall determine whether to institute an inter
partes review under this chapter.” §314(b). The Director
has delegated institution authority to the Patent Trial and
Appeal Board (Board). 37 CFR §42.4(a) (2019). As just
noted, the federal agency’s “determination . . . whether to
institute an inter partes review under this section” is “final
and nonappealable.” 35 U. S. C. §314(d).
Upon electing to institute inter partes review, the Board
conducts a proceeding to evaluate the challenged claims’ va-
lidity. See §316. At the conclusion of the proceeding—if
review “is instituted and not dismissed”—the Board “is-
sue[s] a final written decision with respect to the patenta-
bility of ” the challenged claims. §318(a). “A party dissatis-
fied with the final written decision . . . may appeal the
decision” to the Court of Appeals for the Federal Circuit.
§319.
II
Respondent Click-to-Call owns a patent relating to a
technology for anonymous telephone calls, U. S. Patent No.
5,818,836 (’836 patent). In 2013, petitioner Thryv sought
inter partes review, challenging several of the patent’s
claims.1
In opposition, Click-to-Call urged that §315(b) barred in-
stitution of inter partes review because Thryv filed its peti-
tion too late. Click-to-Call pointed to an infringement suit
——————
1 More precisely, the petition was filed by four companies, including
YellowPages.com, LLC, and Ingenio, LLC. Through “a series of mergers,
sales, and name changes,” both became Thryv. Brief for Petitioner 8.
For simplicity, we refer to Thryv and its predecessor entities as “Thryv.”
4 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
filed in 2001, which ended in a voluntary dismissal without
prejudice.2 In Click-to-Call’s view, that 2001 suit started
§315(b)’s one-year clock, making the 2013 petition
untimely.
The Board disagreed. Section 315(b) did not bar the in-
stitution of inter partes review, the Board concluded, be-
cause a complaint dismissed without prejudice does not
trigger §315(b)’s one-year limit. Finding no other barrier to
institution, the Board decided to institute review. After
proceedings on the merits, the Board issued a final written
decision reiterating its rejection of Click-to-Call’s §315(b)
argument and canceling 13 of the patent’s claims as obvious
or lacking novelty.
Click-to-Call appealed, challenging only the Board’s de-
termination that §315(b) did not preclude inter partes re-
view. The Court of Appeals dismissed the appeal for lack of
jurisdiction, agreeing with Thryv and the Director (who in-
tervened on appeal) that §314(d)’s bar on appeal of the in-
stitution decision precludes judicial review of the agency’s
application of §315(b). Citing our intervening decision in
Cuozzo, see infra, at 6–7, we granted certiorari, vacated the
judgment, and remanded. Click-to-Call Technologies, LP v.
Oracle Corp., 579 U. S. ___ (2016). On remand, the Court
of Appeals again dismissed the appeal on the same ground.
Thereafter, in another case, the en banc Federal Circuit
held that “time-bar determinations under §315(b) are ap-
pealable” notwithstanding §314(d). Wi-Fi One, LLC v.
Broadcom Corp., 878 F. 3d 1364, 1367 (2018). The majority
opinion construed §314(d)’s reference to the determination
whether to institute inter partes review “under this section”
——————
2 The 2001 suit was brought by Inforocket.Com, Inc.—then the exclu-
sive licensee of the ’836 patent—against Keen, Inc. See Inforocket.Com,
Inc. v. Keen, Inc., No. 1:01–cv–05130 (SDNY). While the suit was pend-
ing, Keen acquired Inforocket and the District Court dismissed the suit
without prejudice. By the time of the inter partes review petition, Keen
had become Ingenio (now Thryv).
Cite as: 590 U. S. ____ (2020) 5
Opinion of the Court
as trained on the likelihood-of-success requirement stated
in §314(a). Id., at 1372. The §315(b) timeliness
determination, the majority concluded, “is not ‘closely
related’ to the institution decision addressed in §314(a).”
Id., at 1374 (quoting Cuozzo, 579 U. S., at ___ (slip op., at
12)). The majority therefore held that for §315(b) appeals,
§314(d) does not displace the usual presumption favoring
judicial review of agency action. Wi-Fi One, 878 F. 3d, at
1374–1375. In a concurring opinion, Judge O’Malley
emphasized a “simpler” basis for the same conclusion. Id.,
at 1375. In her view, §314(d) shields from review only the
agency’s assessment of a petition’s “substantive adequacy,”
not questions about the agency’s “authority to act.” Id., at
1376.
Judge Hughes, joined by Judges Lourie, Bryson, and Dyk,
dissented, expressing a position that today’s dissent
characterizes as “extraordinary.” Post, at 6. Those judges
concluded that §314(d) conveys Congress’ “clear and
unmistakable” “intent to prohibit judicial review of the
Board’s [inter partes review] institution decision.” Wi-Fi
One, 878 F. 3d, at 1378. That prohibition applies to §315(b)
issues, the Federal Circuit dissenters maintained, because
§315(b) “describes when an [inter partes review] may be
‘instituted.’ ” Id., at 1377, 1378–1379 (quoting §315(b)).
In light of its en banc decision in Wi-Fi One, the Court of
Appeals granted panel rehearing in this case. Treating the
Board’s application of §315(b) as judicially reviewable, the
panel’s revised opinion held that the Board erred by insti-
tuting review. The petition for inter partes review here was
untimely, the Court of Appeals held, because the 2001 in-
fringement complaint, though dismissed without prejudice,
started the one-year clock under §315(b).3 The court there-
fore vacated the Board’s final written decision, which had
——————
3 A footnote in the panel’s opinion noted that the Court of Appeals sit-
6 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
invalidated 13 of Click-to-Call’s claims for want of the req-
uisite novelty and nonobviousness, and remanded with in-
structions to dismiss.
We granted certiorari to resolve the reviewability issue,
587 U. S. ___ (2019), and now vacate the Federal Circuit’s
judgment and remand with instructions to dismiss the ap-
peal for lack of appellate jurisdiction.
III
A
To determine whether §314(d) precludes judicial review
of the agency’s application of §315(b)’s time prescription, we
begin by defining §314(d)’s scope. Section 314(d)’s text ren-
ders “final and nonappealable” the “determination by the
Director whether to institute an inter partes review under
this section.” §314(d) (emphasis added). That language in-
dicates that a party generally cannot contend on appeal
that the agency should have refused “to institute an inter
partes review.”
We held as much in Cuozzo. There, a party contended on
appeal that the agency should have refused to institute in-
ter partes review because the petition failed §312(a)(3)’s re-
quirement that the grounds for challenging patent claims
must be identified “with particularity.” 579 U. S., at ___
(slip op., at 6) (internal quotation marks omitted). This
“contention that the Patent Office unlawfully initiated its
agency review is not appealable,” we held, for “that is what
§314(d) says.” Id., at ___ (slip op., at 7). Section 314(d), we
explained, “preclud[es] review of the Patent Office’s institu-
tion decisions” with sufficient clarity to overcome the
——————
ting en banc had considered and agreed with the panel majority’s conclu-
sion that a complaint voluntarily dismissed without prejudice can trigger
§315(b)’s time bar. Click-to-Call Technologies, LP v. Ingenio, Inc., 899
F. 3d 1321, 1328, n. 3 (CA Fed. 2018). On that issue, Judge Taranto is-
sued a concurring opinion, id., at 1343–1347, and Judge Dyk, joined by
Judge Lourie, issued a dissenting opinion, id., at 1350–1355. That ques-
tion is outside the scope of our review.
Cite as: 590 U. S. ____ (2020) 7
Opinion of the Court
“ ‘strong presumption’ in favor of judicial review.” Id., at
___–___ (slip op., at 9–11) (quoting Mach Mining, LLC v.
EEOC, 575 U. S. 480, 486 (2015)). See Cuozzo, 579 U. S.,
at ___– ___ (slip op., at 9–11) (finding “ ‘clear and convincing’
indications . . . that Congress intended to bar review” (quot-
ing Block v. Community Nutrition Institute, 467 U. S. 340,
349–350 (1984))).
We reserved judgment in Cuozzo, however, on whether
§314(d) would bar appeals reaching well beyond the deci-
sion to institute inter partes review. 579 U. S., at ___ (slip
op., at 11). We declined to “decide the precise effect of
§314(d) on,” for example, “appeals that implicate constitu-
tional questions.” Ibid. Instead, we defined the bounds of
our holding this way: “[O]ur interpretation applies where
the grounds for attacking the decision to institute inter
partes review consist of questions that are closely tied to
the application and interpretation of statutes related to the
Patent Office’s decision to initiate inter partes review.”
Ibid.
B
We therefore ask whether a challenge based on §315(b)
ranks as an appeal of the agency’s decision “to institute an
inter partes review.” §314(d). We need not venture beyond
Cuozzo’s holding that §314(d) bars review at least of mat-
ters “closely tied to the application and interpretation of
statutes related to” the institution decision, 579 U. S., at
___ (slip op., at 11), for a §315(b) challenge easily meets that
measurement.
Section 315(b)’s time limitation is integral to, indeed a
condition on, institution. After all, §315(b) sets forth a cir-
cumstance in which “[a]n inter partes review may not be
instituted.” Even Click-to-Call and the Court of Appeals
recognize that §315(b) governs institution. See Brief for Re-
spondent Click-to-Call 1 (§315(b) is “a clear limit on the
Board’s institution authority”); Wi-Fi One, 878 F. 3d, at
8 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
1373 (“§315(b) controls the Director’s authority to institute
[inter partes review]”).
Because §315(b) expressly governs institution and noth-
ing more, a contention that a petition fails under §315(b) is
a contention that the agency should have refused “to insti-
tute an inter partes review.” §314(d). A challenge to a pe-
tition’s timeliness under §315(b) thus raises “an ordinary
dispute about the application of ” an institution-related
statute. Cuozzo, 579 U. S., at ___ (slip op., at 7). In this
case as in Cuozzo, therefore, §314(d) overcomes the pre-
sumption favoring judicial review.4
C
The AIA’s purpose and design strongly reinforce our con-
clusion. By providing for inter partes review, Congress,
concerned about overpatenting and its diminishment of
competition, sought to weed out bad patent claims effi-
ciently. See id., at ___ (slip op., at 8); H. R. Rep. No. 112–
98, pt. 1, p. 40 (2011) (“The legislation is designed to estab-
lish a more efficient and streamlined patent system that
will improve patent quality and limit unnecessary and
counterproductive litigation costs.”).5
——————
4 We do not decide whether mandamus would be available in an ex-
traordinary case. Cf. Cuozzo Speed Technologies, LLC v. Lee, 579 U. S.
___, ___–___, n. 5 (2016) (ALITO, J., concurring in part and dissenting in
part) (slip op., at 5–6, n. 5).
5 The dissent acknowledges that “Congress authorized inter partes re-
view to encourage further scrutiny of already issued patents.” Post, at
14. Yet the dissent, despite the Court’s decision upholding the constitu-
tionality of such review in Oil States Energy Services, LLC v. Greene’s
Energy Group, LLC, 584 U. S. ___ (2018), appears ultimately to urge that
Congress lacks authority to permit second looks. Patents are property,
the dissent several times repeats, and Congress has no prerogative to
allow “property-taking-by-bureaucracy.” Post, at 1, 18–21. But see Oil
States, 584 U. S., at ___ (slip op., at 7) (“patents are public franchises”
(internal quotation marks omitted)). The second look Congress put in
place is assigned to the very same bureaucracy that granted the patent
in the first place. Why should that bureaucracy be trusted to give an
Cite as: 590 U. S. ____ (2020) 9
Opinion of the Court
Allowing §315(b) appeals would tug against that objec-
tive, wasting the resources spent resolving patentability
and leaving bad patents enforceable. A successful §315(b)
appeal would terminate in vacatur of the agency’s decision;
in lieu of enabling judicial review of patentability, vacatur
would unwind the agency’s merits decision. See Cuozzo,
579 U. S., at ___ (slip op., at 8). And because a patent owner
would need to appeal on §315(b) untimeliness grounds only
if she could not prevail on patentability, §315(b) appeals
would operate to save bad patent claims. This case illus-
trates the dynamic. The agency held Click-to-Call’s patent
claims invalid, and Click-to-Call does not contest that hold-
ing. It resists only the agency’s institution decision, mind-
ful that if the institution decision is reversed, then the
agency’s work will be undone and the canceled patent
claims resurrected.
Other features of the statutory design confirm that Con-
gress prioritized patentability over §315(b)’s timeliness re-
quirement. A petitioner’s failure to satisfy §315(b) does not
prevent the agency from conducting inter partes review of
the challenged patent claims; the agency can do so at an-
other petitioner’s request. §311(a). Nor does failure to sat-
isfy §315(b) prevent the original initiator from participating
on the merits; the §315(b)-barred party can join a proceed-
ing initiated by another petitioner. §315(b), (c). And once
inter partes review is instituted, the agency may issue a fi-
nal written decision even “[i]f no petitioner remains in the
inter partes review.” §317(a). It is unsurprising that a stat-
utory scheme so consistently elevating resolution of patent-
ability above a petitioner’s compliance with §315(b) would
exclude §315(b) appeals, thereby preserving the Board’s ad-
judication of the merits.
——————
honest count on first view, but a jaundiced one on second look? See post,
at 19–20.
10 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
Judicial review of §315(b) rulings, moreover, would do lit-
tle to serve other statutory goals. The purpose of §315(b),
all agree, is to minimize burdensome overlap between inter
partes review and patent-infringement litigation. Brief for
Petitioner 24; Brief for Federal Respondent 36; Brief for Re-
spondent Click-to-Call 37. Judicial review after the agency
proceedings cannot undo the burdens already occasioned.
Nor are §315(b) appeals necessary to protect patent claims
from wrongful invalidation, for patent owners remain free
to appeal final decisions on the merits. §319.
IV
Click-to-Call advances a narrower reading of §314(d). In
Click-to-Call’s view, which the dissent embraces, post, at 6–
18, the bar on judicial review applies only to the agency’s
threshold determination under §314(a) of the question
whether the petitioner has a reasonable likelihood of pre-
vailing. Section 314(d) addresses the “determination by the
Director whether to institute inter partes review under this
section” (emphasis added), and, Click-to-Call maintains,
§314(a) contains “the only substantive determination refer-
enced in” the same section as §314(d). Brief for Respondent
Click-to-Call 16. This interpretation, Click-to-Call argues,
supplies a clear rule consonant with the presumption favor-
ing judicial review. Cf. supra, at 4–5 (Federal Circuit’s en
banc Wi-Fi One decision).
Cuozzo is fatal to Click-to-Call’s interpretation. Section
314(d)’s review bar is not confined to the agency’s applica-
tion of §314(a), for in Cuozzo we held unreviewable the
agency’s application of §312(a)(3). 579 U. S., at ___–___
(slip op., at 7–8). Far from limiting the appeal bar to
§314(a) and “nothing else” as Click-to-Call urges, Brief for
Respondent 29, the Court’s opinion in Cuozzo explained
that the bar extends to challenges grounded in “statutes re-
lated to” the institution decision. 579 U. S., at ___ (slip op.,
at 11).
Cite as: 590 U. S. ____ (2020) 11
Opinion of the Court
The text of §314(d) offers Click-to-Call no support. The
provision sweeps more broadly than the determination
about whether “there is a reasonable likelihood that the pe-
titioner would prevail.” §314(a). Rather, it encompasses
the entire determination “whether to institute an inter
partes review.” §314(d).
And §314(d) refers not to a determination under subsec-
tion (a), but to the determination “under this section.” That
phrase indicates that §314 governs the Director’s institu-
tion of inter partes review. Titled “Institution of inter
partes review,” §314 is the section housing the command to
the Director to “determine whether to institute an inter
partes review,” §314(b). Thus, every decision to institute is
made “under” §314 but must take account of specifications
in other provisions—such as the §312(a)(3) particularity re-
quirement at issue in Cuozzo and the §315(b) timeliness re-
quirement at issue here. Similar clarifying language recurs
throughout the AIA. See, e.g., §315(c) (referring to the Di-
rector’s determination regarding “the institution of an inter
partes review under section 314” (emphasis added)); §314(b)
(referring to “a petition filed under section 311,” the section
authorizing the filing of petitions (emphasis added));
§314(b)(1) (referring to “a preliminary response to the peti-
tion under section 313,” the section authorizing the filing of
preliminary responses to petitions (emphasis added)).
If Congress had intended Click-to-Call’s meaning, it had
at hand readymade language from a precursor to §314(d):
“A determination by the Director under subsection (a) shall
be final and non-appealable.” 35 U. S. C. §312(c) (2006 ed.)
(emphasis added) (governing inter partes reexamination).
Or Congress might have borrowed from a related provision:
“A determination by the Director pursuant to subsection (a)
of this section that no substantial new question of patenta-
bility has been raised will be final and nonappealable.” 35
U. S. C. §303(c) (emphasis added) (governing ex parte reex-
12 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
amination). Instead, Congress chose to shield from appel-
late review the determination “whether to institute an inter
partes review under this section.” §314(d) (emphasis
added). That departure in language suggests a departure
in meaning. See Henson v. Santander Consumer USA Inc.,
582 U. S. ___, ___ (2017) (slip op., at 6).
Click-to-Call doubts that Congress would have limited
the agency’s institution authority in §315(b) without ensur-
ing judicial supervision. Congress entrusted the institution
decision to the agency, however, to avoid the significant
costs, already recounted, of nullifying a thoroughgoing de-
termination about a patent’s validity. See supra, at 8–9.
That goal—preventing appeals that would frustrate effi-
cient resolution of patentability—extends beyond §314(a)
appeals.
Click-to-Call also contends that we adopted its interpre-
tation of §314(d) in SAS Institute Inc. v. Iancu, 584 U. S. ___
(2018). Neither of our holdings in that case assists Click-
to-Call, and both holdings remain governing law. SAS In-
stitute first held that once the agency institutes an inter
partes review, it must “resolve all of the claims in the case.”
Id., at ___ (slip op., at 1). SAS Institute located that rule in
§318(a), which requires the agency to decide “the patenta-
bility of any patent claim challenged by the petitioner.”
Ibid. (emphasis in original; internal quotation marks omit-
ted). SAS Institute next held that §314(d) did not bar judi-
cial review of §318(a)’s application. Id., at ___–___ (slip op.,
at 12–14). Our decision explained that “nothing in §314(d)
or Cuozzo withdraws our power to ensure that an inter
partes review proceeds in accordance with the law’s de-
mands.” Id., at ___ (slip op., at 14). That reviewability hold-
ing is inapplicable here, for Click-to-Call’s appeal chal-
lenges not the manner in which the agency’s review
“proceeds” once instituted, but whether the agency should
have instituted review at all.
Cite as: 590 U. S. ____ (2020) 13
Opinion of the Court
Click-to-Call homes in on a single sentence from SAS In-
stitute’s reviewability discussion: “Cuozzo concluded that
§314(d) precludes judicial review only of the Director’s ‘ini-
tial determination’ under §314(a) that ‘there is a “reason-
able likelihood” that the claims are unpatentable on the
grounds asserted’ and review is therefore justified.” Id., at
___ (slip op., at 13) (quoting Cuozzo, 579 U. S., at ___ (slip
op., at 9)). But that sentence’s account of Cuozzo is incom-
plete. Recall that Cuozzo itself applied §314(d)’s appeal bar
to a challenge on grounds other than §314(a). See supra, at
10. To understand how far beyond §314(a) the bar on judi-
cial review extends, we look to the statute and Cuozzo; for
the reasons stated above, they establish that §314(d) bars
challenges resting on §315(b).6
——————
6 Defending Click-to-Call’s interpretation, the dissent takes a view of
our precedent that neither Click-to-Call nor the Federal Circuit ad-
vances. See post, at 15–18. The dissent does not consider itself bound
by Cuozzo’s conclusion that §314(d) bars appeal of “questions that are
closely tied to the application and interpretation of statutes related to
the Patent Office’s decision to initiate inter partes review,” 579 U. S., at
___ (slip op., at 11). According to the dissent, that statement is dicta
later repudiated in SAS Institute Inc. v. Iancu, 584 U. S. ___ (2018).
But Cuozzo concerned an appeal resting on a “related statutory sec-
tion”: §312(a)(3). 579 U. S., at ___ (slip op., at 7). That §312(a)(3)
challenge was tied to institution, the Court explained, for two reasons:
first, because it “attack[ed] a ‘determination . . . whether to institute’
review,” id., at ___–___ (slip op., at 7–8); second, because the §312(a)(3)
challenge was related to invoking §314(a)’s condition on institution, id.,
at ___ (slip op., at 12). Cuozzo’s recognition that §314(d) can bar chal-
lenges rooted in provisions other than §314(a) was hardly “dicta,” post,
at 16—it was the Court’s holding. And SAS Institute purported to adhere
to Cuozzo, not to overrule it. 584 U. S., at ___–___ (slip op., at 13–14).
The Court in SAS Institute said, specifically, that it discerned “nothing
in . . . Cuozzo” inconsistent with its conclusion. Id., at ___ (slip op.,
at 14).
We do not so lightly treat our determinations as dicta and our decisions
as overruling others sub silentio. Nor can we countenance the dissent’s
dangerous insinuation that today’s decision is not “really” binding prec-
edent. Post, at 17–18 (“[W]ho can say?”); post, at 18 (“Litigants and lower
14 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion of the Court
V
Click-to-Call presses an alternative reason why the
Board’s ruling on its §315(b) objection is appealable. The
Board’s final written decision addressed the §315(b) issue,
so Click-to-Call argues that it may appeal under §319,
which authorizes appeal from the final written decision.
But even labeled as an appeal from the final written deci-
sion, Click-to-Call’s attempt to overturn the Board’s §315(b)
ruling is still barred by §314(d). Because §315(b)’s sole of-
fice is to govern institution, Click-to-Call’s contention re-
mains, essentially, that the agency should have refused to
institute inter partes review. As explained, §314(d) makes
that contention unreviewable.
* * *
For the reasons stated, we vacate the judgment of the
United States Court of Appeals for the Federal Circuit and
remand the case with instructions to dismiss for lack of ap-
pellate jurisdiction.
It is so ordered.
——————
courts alike will just have to wait and see.”). Lest any “confusion” re-
main, post, at 17, we reaffirm today our holding in Cuozzo: Section 314(d)
generally precludes appeals of the agency’s institution decision, includ-
ing, beyond genuine debate, appeals “consist[ing] of questions that are
closely tied to the application and interpretation of statutes related to”
the institution decision. 579 U. S., at ___, ___ (slip op., at 7, 11). The
appeal bar, we therefore reiterate, is not limited to the agency’s applica-
tion of §314(a).
Cite as: 590 U. S. ____ (2020) 15
Opinion
Appendix of the of
to opinion Court
the Court
APPENDIX OF KEY STATUTORY PROVISIONS
35 U. S. C. §314:
“Institution of inter partes review
“(a) THRESHOLD.—The Director may not authorize
an inter partes review to be instituted unless the Di-
rector determines that the information presented in
the petition filed under section 311 and any response
filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with re-
spect to at least 1 of the claims challenged in the peti-
tion.
“(b) TIMING.—The Director shall determine whether
to institute an inter partes review under this chapter
pursuant to a petition filed under section 311 within 3
months after—
“(1) receiving a preliminary response to the petition
under section 313; or
“(2) if no such preliminary response is filed, the last
date on which such response may be filed.
“(c) NOTICE.—The Director shall notify the petitioner
and patent owner, in writing, of the Director’s determi-
nation under subsection (a), and shall make such notice
available to the public as soon as is practicable. Such
notice shall include the date on which the review shall
commence.
“(d) NO APPEAL.—The determination by the Director
whether to institute an inter partes review under this
section shall be final and nonappealable.”
16 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
Opinion
Appendix of the of
to opinion Court
the Court
35 U. S. C. §315(b):
“PATENT OWNER’S ACTION.—An inter partes review
may not be instituted if the petition requesting the pro-
ceeding 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 in-
fringement of the patent. The time limitation set forth
in the preceding sentence shall not apply to a request
for joinder under subsection (c).”
Cite as: 590 U. S. ____ (2020) 1
GORSUCH, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 18–916
_________________
THRYV, INC., FKA DEX MEDIA, INC., PETITIONER v.
CLICK-TO-CALL TECHNOLOGIES, LP, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[April 20, 2020]
JUSTICE GORSUCH, with whom JUSTICE SOTOMAYOR joins
as to Parts I, II, III, and IV, dissenting.
Today the Court takes a flawed premise—that the Con-
stitution permits a politically guided agency to revoke an
inventor’s property right in an issued patent—and bends it
further, allowing the agency’s decision to stand immune
from judicial review. Worse, the Court closes the court-
house not in a case where the patent owner is merely un-
happy with the merits of the agency’s decision but where
the owner claims the agency’s proceedings were unlawful
from the start. Most remarkably, the Court denies judicial
review even though the government now concedes that the
patent owner is right and this entire exercise in property-
taking-by-bureaucracy was forbidden by law.
It might be one thing if Congress clearly ordained this
strange result. But it did not. The relevant statute, the
presumption of judicial review, and our precedent all point
toward allowing, not forbidding, inventors their day in
court. Yet, the Court brushes past these warning signs and,
in the process, carries us another step down the road of ced-
ing core judicial powers to agency officials and leaving the
disposition of private rights and liberties to bureaucratic
mercy.
2 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
I
Our story stretches back to the 1990s, when Stephen Du-
Val invented a system for anonymizing telephone calls. Be-
lieving in the promise of his idea, Mr. DuVal hired an attor-
ney to secure a patent and sought avenues to bring his
invention to market. Initially, both efforts met with suc-
cess. In 1998, Mr. DuVal was awarded a U. S. Patent,
which he licensed to a company called InfoRocket.com, Inc.
But problems soon emerged. In 2001, InfoRocket accused
Ingenio, Inc., a predecessor of today’s petitioner Thryv, Inc.,
of infringing Mr. DuVal’s patent. The case carried on in
federal district court for more than a year before InfoRocket
and Ingenio decided to merge. The companies then jointly
persuaded the court to dismiss InfoRocket’s lawsuit without
prejudice.
Still, the quiet did not last long. Following the merger,
the surviving entity—for simplicity, call it Thryv—sought
to turn the tables on Mr. DuVal by asking the Patent Office
to reconsider the validity of his patent in an ex parte reex-
amination. That agency-led process dragged on for four
more years, and ended with a mixed verdict: The Patent
Office canceled a few claims, but amended others and per-
mitted Mr. DuVal to add some new ones too.
Even the ex parte reexamination wasn’t enough to put
the parties’ disputes to rest. During the reexamination,
Thryv terminated its license with Mr. DuVal and stopped
paying him royalties. But it seems that Thryv continued
using the patented technology all the same. So Mr. Duval
transferred his patent to respondent Click-to-Call Technol-
ogies LP (CTC), which swiftly took the patent back to court.
CTC noted that Thryv couldn’t exactly plead ignorance
about this patent, given that the company or its predeces-
sors had previously licensed the patent, been sued for in-
fringing it, and asked the Patent Office to reexamine it.
When it came to Mr. DuVal’s patent, CTC alleged, Thryv
Cite as: 590 U. S. ____ (2020) 3
GORSUCH, J., dissenting
had done just about everything one can do to a patent ex-
cept invent it.
Thryv responded by opening another new litigation front
of its own. One year after CTC filed its federal lawsuit,
Thryv lodged another administrative petition with the Pat-
ent Office, this time seeking inter partes review. Echoing
some of the same arguments that led to its push for an
ex parte administrative reexamination nine years earlier,
and adding other arguments too, Thryv (again) asked the
agency to cancel Mr. DuVal’s patent on the grounds that it
lacked novelty and was obvious. At the same time, Thryv
sought to stay proceedings in CTC’s infringement suit.
Thryv argued that the district court should defer to the
newly initiated inter partes review. Like many district
courts facing the prospect of parallel administrative pro-
ceedings, this one obliged.
Why at this late hour did Thryv prefer to litigate before
the agency rather than a federal district court? The
agency’s ex parte reexamination years earlier hadn’t helped
Thryv much. But since then, Congress had adopted the
Leahy-Smith America Invents Act (AIA), 35 U. S. C. §100
et seq. That law created the inter partes review process,
which provides a number of benefits to accused infringers
such as Thryv. Like federal court litigation, inter partes
review holds the advantage of allowing a private party at-
tacking a patent’s validity to participate in adversarial pro-
ceedings, rather than rely on the agency to direct its own
investigation as it does in ex parte reexamination. Com-
pare 35 U. S. C. §316 with §§302, 304, 305. Inter partes
review also allows a party challenging a patent all manner
of discovery, including depositions and the presentation of
expert testimony. §316; 37 CFR §§42.51–42.65 (2019). At
the same time, the burden of proof is lower—requiring chal-
lengers like Thryv to prove unpatentability only by a pre-
ponderance of the evidence, §316(e), rather than under the
clear and convincing standard that usually applies in court.
4 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
Microsoft Corp. v. i4i L. P., 564 U. S. 91 (2011). Perhaps
most appealing, proceedings take place before the Patent
Trial and Appeal Board, rather than in an Article III court,
so there is no jury trial before a tenure-protected judge, only
a hearing before a panel of agency employees.
Some say the new regime represents a particularly
efficient new way to “kill” patents. Certainly, the numbers
tell an inviting story for petitioners like Thryv. In approx-
imately 80% of cases reaching a final decision, the
Board cancels some or all of the challenged claims.
Patent Trial and Appeal Board, Trial Statistics 10 (Feb.
2020), https://www.uspto.gov/sites/default/files/documents/
Trial_Statistics_2020_02_29.pdf. The Board has been busy,
too, instituting more than 800 of these new proceedings
every year. See id., at 6.
Still, Thryv faced a hurdle. Inter partes review “may not
be instituted” based on an administrative petition filed
more than a year after “the petitioner, real party in inter-
est, or privy of the petitioner is served with a complaint al-
leging infringement of the patent” in federal court. 35
U. S. C. §315(b). So, while Congress sought to move many
cases out of court and into its new administrative process,
it thought patent owners who have already endured long
challenges in court shouldn’t have to face another layer of
administrative review. After all, some repose is due inven-
tors. Patents typically last 20 years; what happens to the
incentive to invent if litigation over them lasts even longer
(as it has for Mr. DuVal)? By anyone’s estimation, too,
§315(b)’s time bar was sure to pose a special problem for
Thryv. Yes, Thryv had petitioned for inter partes review
one year after being served with CTC’s complaint. But
nearly 12 years had passed since Thryv’s predecessor and
privy first found itself on the business end of a lawsuit al-
leging that it had infringed Mr. DuVal’s patent.
Despite this apparently fatal defect, the Board plowed
Cite as: 590 U. S. ____ (2020) 5
GORSUCH, J., dissenting
ahead anyway. No one could dispute that Thryv’s predeces-
sor and privy had been “served with a complaint alleging
infringement of the patent” more than a decade earlier. But
that complaint didn’t count, the Board declared, because it
was dismissed without prejudice. The Board cited nothing
in §315(b) suggesting this distinction makes a difference
under the statute’s plain terms. Instead, the Board tiptoed
past the problem and proceeded to invalidate almost all of
the patent claims before it, even those the Patent Office it-
self had affirmed in its own ex parte proceeding years be-
fore. No doubt this was exactly what Thryv hoped for in its
second bite at the administrative apple.
Thryv’s victory may have taken years to achieve, but it
didn’t seem calculated to last long. Predictably, CTC ap-
pealed the Board’s interpretation of §315(b) to the Federal
Circuit. And just as unsurprisingly, the court held that dis-
missed complaints do count as complaints, so Thryv’s inter
partes administrative challenge was time barred from the
start. Mr. DuVal’s patent had already survived one
ex parte reexamination Thryv instigated. The patent had
been the subject of long and repeated litigation in federal
courts. The agency had no business opening yet another
new inquiry into this very old patent.
But Thryv had one maneuver left. It sought review in
this Court, insisting that Article III courts lack authority
even to say what the law demands. According to Thryv, a
different provision, §314(d), renders the agency’s interpre-
tations and applications of §315(b) immune from judicial re-
view. So the Board can err; it can even act in defiance of
plain congressional limits on its authority. But, in Thryv’s
view, a court can do nothing about it. Enforcement of
§315(b)’s time bar falls only to the very Patent Office offi-
cials whose authority it seeks to restrain. Inventors like
Mr. DuVal just have to hope that the bureaucracy revoking
their property rights will take the extra trouble of doing so
in accordance with law.
6 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
That’s the strange place we now find ourselves. Thryv
managed to persuade the Court to grant its petition for
certiorari to consider its extraordinary argument. And
today the Court vindicates its last and most remarkable
maneuver.
II
A
How could §314(d) insulate from judicial review the
agency’s—admittedly mistaken—interpretation of an en-
tirely different provision, §315(b)? The answer is that it
doesn’t.
To see why, look no further than §314(d). The statute
tells us that “[t]he determination by the Director whether
to institute an inter partes review under this section shall
be final and nonappealable.” So the only thing §314(d) in-
sulates from judicial review is “[t]he determination” made
“by the Director” “under this section”—that is, a determina-
tion discussed within §314. Nothing in the statute insu-
lates agency interpretations of other provisions outside
§314, including those involving §315(b).
This arrangement makes sense. Given that §314(d)
speaks of “[t]he” determination by the Director “under this
section,” it comes as no surprise that the section mentions
just one such “determination.” It is found in §314(a), where
the Director “determines” whether the parties’ initial plead-
ings suggest “a reasonable likelihood” the petitioner will
prevail in defeating at least some aspect of the challenged
patent. And it is easy to see why Congress might make a
preliminary merits assessment like that exempt from fur-
ther view: If the Director institutes a meritless petition, the
Board can summarily affirm the patent’s validity. See
§318(a); 37 CFR §§42.71–42.73. In any event, the Board is
obligated to render a final—and judicially reviewable—de-
cision within a year. 35 U. S. C. §§141(c), 316(a)(11),
Cite as: 590 U. S. ____ (2020) 7
GORSUCH, J., dissenting
318(a), 319. So judicial review of the Director’s initial ap-
praisal of the merits isn’t really eliminated as much as it is
channeled toward the Board’s final decision on those mer-
its. That process finds a ready analogue elsewhere in our
law. Much as here, an indicted criminal defendant un-
happy with a grand jury’s finding of probable cause isn’t
permitted to challenge that preliminary assessment, but
may instead move the court for acquittal after the govern-
ment has presented all its evidence. See Costello v. United
States, 350 U. S. 359, 363 (1956); Fed. Rule Crim. Proc.
29(a).
Matters outside §314 are different. Take the provision
before us, §315(b). It promises that an inter partes review
“may not be instituted” more than a year after the initiation
of litigation. This stands as an affirmative limit on the
agency’s authority. Much like a statute of limitations, this
provision supplies an argument a party can continue to
press throughout the life of the administrative proceeding
and on appeal. Nothing in §315(b) speaks of a “deter-
mination by the Director,” let alone suggests that the
agency’s initial ruling on a petition’s timeliness is “final and
nonappealable.”
To pretend otherwise would invite a linguistic nonsense.
We would have to read §314’s language speaking of “[t]he”
“determination” “under this section” to include not one de-
termination but two—and to include not only the determi-
nation actually made under “this section” but also a second
assessment made about the effect of an entirely different
section.
To pretend otherwise would invite a practical nonsense
as well. Because the Director’s initial “reasonable likeli-
hood” determination under §314(a) relates to the merits, it
will be effectively reviewed both by the Board and courts as
the case progresses. But when does the Director’s applica-
tion of §315(b)’s time bar get another look? Under Thryv’s
interpretation, a provision that reads like an affirmative
8 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
limit on the agency’s authority reduces to a mere sugges-
tion. No matter how wrong or even purposefully evasive,
the Director’s assessment of a petition’s timeliness is al-
ways immune from review. And even that’s not the end of
it. In other cases, the Board has claimed it has the right to
review these initial timeliness decisions, and Thryv seems
content with those rulings. See, e.g., Medtronic, Inc. v. Rob-
ert Bosch Healthcare Systems, Inc., 839 F. 3d 1382 (CA Fed.
2016). So it turns out the company doesn’t really want to
make an initial administrative timeliness decisions final; it
just wants to make them unreviewable in court, defying
once more §314’s plain language and any rational explana-
tion, except maybe as an expedient to win the day’s case.
B
Confronting so many problems in the statute’s text,
Thryv seeks a way around them by offering a competing ac-
count of the law’s operation. While §314 empowers the Di-
rector to make an institution decision, Thryv asserts that
various provisions scattered throughout the chapter—such
as §§314(a), 315(a)(1), and 315(b)—help guide the decision.
And on Thryv’s interpretation, all questions related to the
Director’s institution decision should be insulated from re-
view, no matter where those rules are found. What about
the fact §314 speaks of insulating only “[t]he” “determina-
tion” “under this section”? Thryv says this language serves
merely to indicate which institution authority is unreview-
able—namely, the Director’s authority to institute an inter
partes proceeding pursuant to §314, rather than pursuant
to some other provision.
This interpretation, however, makes a nullity of the very
language it purports to explain. Section 314 is the only sec-
tion that authorizes the Director to institute inter partes
review, making it pointless for Congress to tell us that we’re
talking about the Director’s §314 inter partes review insti-
Cite as: 590 U. S. ____ (2020) 9
GORSUCH, J., dissenting
tution authority as opposed to some other inter partes re-
view institution authority. In fact, you can strike “under
this section” from §314(d) and Thryv’s interpretation re-
mains unchanged. That’s a pretty good clue something has
gone wrong.
Faced with this problem of surplusage, Thryv alludes to
the possibility that Congress included redundant language
to be “double sure.” But double sure of what? Thryv does
not identify any confusion that the phrase “under this sec-
tion” might help avoid. Given the lack of any other provi-
sion, anywhere in the U. S. Code, authorizing anyone to in-
stitute inter partes review, even the most obtuse reader
would never have any use for the clarification supposedly
provided by “under this section” on Thryv’s account.
Maybe so, Thryv replies, but we shouldn’t worry about
the surplusage here because the AIA contains surplusage
elsewhere. The other putative examples of surplusage
Thryv identifies, however, have no bearing on the provision
now before us. And even a passing glance reveals no sur-
plusage in them either. Consider §315(c). It says that “the
Director, in his or her discretion, may join as a party to that
inter partes review any person who properly files a petition
under section 311 that the Director, after receiving a pre-
liminary response under section 313 . . . , determines war-
rants the institution of an inter partes review under section
314.” (Emphasis added.) Thryv argues that all these cross-
references are unnecessary. But look closely: Each of
§315(c)’s cross-references does important work to establish
the rules for joinder. Strike the first and the requirements
of a joinder petition become undefined. Strike the second
and it’s a mystery what kind of response the patent owner
is entitled to file. Strike the third and the Director’s deter-
mination whether to grant joinder becomes standardless.
All of this language has a point to it—just as “under this
section” does under a faithful interpretation of §314(d).
That leaves Thryv only one more tenuous textual lifeline
10 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
left to toss. If Congress had wanted to insulate from review
only “[t]he” “determination” that a petition has a “reason-
able likelihood” of success, the company suggests, Congress
could have spoken of insulating “the determination under
subsection (a)” rather than “the determination under this
section.” And Thryv reminds us that Congress used that
latter formulation in nearby and predecessor statutes. See,
e.g., §303(c) (“[a] determination by the Director pursuant to
subsection (a) of this section . . . will be final and nonappeal-
able”); §312(c) (2006 ed.; repealed 2011) (“[a] determination
by the Director under subsection (a) shall be final and
non-appealable”).
But so what? One could replace the phrase “my next-door
neighbor to the west” with “my neighbor at 123 Main
Street” (assuming that is her address) and the meaning
would be the same. Likewise, it hardly matters whether
Congress spoke of the “determination” “under this section”
or “under subsection (a).” Either way, our attention is di-
rected within, not beyond, §314. And what’s Thryv’s alter-
native? It would have us read language speaking of the Di-
rector’s determination “under this section” to encompass
any decision related to the initiation of inter partes review
found anywhere in the AIA—an entire chapter of the U. S.
Code. That’s sort of like reading “my next-door neighbor to
the west” to include “anyone in town.” Nor do things get
better for Thryv with a careful assessment of nearby and
predecessor statutes. They reveal that Congress knew ex-
actly how to give broader directions like the one Thryv ima-
gines when it wished to do so. See, e.g., §314(b) (directing
our attention to the Director’s decision whether to institute
inter partes review “under this chapter” rather than “under
this section”).
Without any plausible textual or contextual hook for its
position, Thryv finishes by advancing a parade of policy
horribles. It notes that the AIA imposes lots of other con-
straints on inter partes review besides the §315(b) timing
Cite as: 590 U. S. ____ (2020) 11
GORSUCH, J., dissenting
provision now before us. For example, the law bars peti-
tioners who have filed declaratory judgment actions from
challenging the same patent in inter partes review proceed-
ings, §315(a)(1), and it estops petitioners from seeking other
forms of review once an inter partes proceeding finishes,
§315(e). If courts are going to review the agency’s applica-
tion of §315(b), Thryv wonders, are they going to have to
review the agency’s application of these other provisions
too?
But we could just as easily march this parade in the op-
posite direction. Even assuming (without deciding) that
Thryv is right and the reviewability of all these provisions
stands or falls together, that seems at least as good an ar-
gument for as against judicial review. If so much more is
at stake, if many more kinds of agency errors could be insu-
lated from correction, isn’t that a greater reason to pay as-
siduous attention to the statute’s terms? Surely, Thryv’s
professed concern for judicial economy supplies no license
to ignore our duty to decide the cases properly put to us in
accord with the statute’s terms.
III
This last point leads to another reason why we should re-
ject Thryv’s reading of the statute. Even if the company
could muster some doubt about the reach of §314(d), it
wouldn’t be enough to overcome the “well-settled presump-
tion favoring interpretations of statutes that allow judicial
review of administrative action.” McNary v. Haitian Refu-
gee Center, Inc., 498 U. S. 479, 496 (1991). As this Court
has long explained, “we will . . . find an intent to preclude
such review only if presented with clear and convincing ev-
idence.” Reno v. Catholic Social Services, Inc., 509 U. S. 43,
64 (1993) (internal quotation marks omitted).
The presumption of judicial review is deeply rooted in our
history and separation of powers. To guard against arbi-
trary government, our founders knew, elections are not
12 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
enough: “An elective despotism was not the government we
fought for.” The Federalist No. 48, p. 311 (C. Rossiter ed.
1961) (emphasis deleted). In a government “founded on free
principles,” no one person, group, or branch may hold all
the keys of power over a private person’s liberty or property.
Ibid. Instead, power must be set against power, “divided
and balanced among several bodies . . . checked and re-
strained by the others.” Ibid. As Chief Justice Marshall
put it: “It would excite some surprise if, in a government of
laws and of principle . . . a department whose appropriate
duty it is to decide questions of right, not only between in-
dividuals, but between the government and individuals,” a
statute might leave that individual “with no remedy, no ap-
peal to the laws of his country, if he should believe the claim
to be unjust.” United States v. Nourse, 9 Pet. 8, 28–29
(1835).
It should come as an equal surprise to think Congress
might have imposed an express limit on an executive bu-
reaucracy’s authority to decide the rights of individuals,
and then entrusted that agency with the sole power to en-
force the limits of its own authority. Yet on Thryv’s account,
§315(b)’s command that “inter partes review may not be in-
stituted” would be left entrusted to the good faith of the very
executive officials it is meant to constrain. (Emphasis
added.) We do not normally rush to a conclusion that Con-
gress has issued such “ ‘blank checks drawn to the credit of
some administrative officer.’ ” Bowen v. Michigan Academy
of Family Physicians, 476 U. S. 667, 671 (1986) (quoting
S. Rep. No. 752, 79th Cong., 1st Sess., 26 (1945)).
That usually may be the case, Thryv counters, but this
statute’s unusually modest purpose makes it plausible to
think Congress meant to shield its application from judicial
review. After all, the company submits, §315(b) is not really
a firm limit on the agency’s authority, only a claim pro-
cessing rule. For proof, the company reminds us that
Cite as: 590 U. S. ____ (2020) 13
GORSUCH, J., dissenting
§315(b) bars challengers who have already spent a year lit-
igating in court from petitioning the agency, but leaves
open the possibility that the agency might still institute in-
ter partes review if a different, eligible petitioner happens
to come along. And this theoretical possibility, Thryv tells
us, suggests that the agency was meant to be allowed to act
as it wants.
But Thryv’s reply here is like saying Article III’s “case or
controversy” requirement isn’t really a limit on the power
of federal courts, because it’s always possible that some lit-
igant with a live dispute will come forward and require the
court to settle a particular legal question. The implacable
fact is that nothing in the AIA gives the Director or the
Board freewheeling authority to conduct inter partes re-
view. The statute demands the participation of a real party
in interest, a petitioner who is not barred by prior litigation
and who is willing to face estoppel should he lose. §§311(a),
315. And if, as seems likely in our case and many others,
no one is willing and able to meet those conditions, the law
does not permit inter partes review. So rather than a claim
processing rule, §315 is both a constraint on the agency’s
power and a valuable guarantee that a patent owner must
battle the same foe only once.
Realizing that its textual arguments are too strained to
demonstrate clearly and convincingly that Congress meant
to displace judicial review, Thryv asks us to draw “infer-
ences” from the AIA “as a whole.” Brief for Petitioner 16
(internal quotation marks omitted). In particular, the com-
pany tells us that Congress’s “overriding purpose” in creat-
ing inter partes review was to “weed out poor quality pat-
ents,” and that judicial enforcement of §315(b) would slow
this progress. Id., at 24 (quotation altered). But to support
its thematic account of the law’s goals, Thryv rests on one
thin reed after another—a House Report here, a floor state-
ment there, and a few quotations from Cuozzo Speed Tech-
nologies, LLC v. Lee, 579 U. S. ___ (2016), that summarize
14 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
these same sources. All the rest is generously filled in by
the company’s own account about how inter partes review
ought to work.
That’s far from enough. The historic presumption of ju-
dicial review has never before folded before a couple stray
pieces of legislative history and naked policy appeals. Be-
sides, Thryv’s submissions cannot withstand the mildest in-
spection even on their own terms. No one doubts that Con-
gress authorized inter partes review to encourage further
scrutiny of already issued patents. But lost in Thryv’s tell-
ing about the purposes of the AIA is plenty of evidence that
Congress also included provisions to preserve the value of
patents and protect the rights of patent owners. For exam-
ple, Congress sharply limited the legal grounds that might
be pursued in inter partes review, §311(b); afforded patent
owners an opportunity to respond to petitions prior to insti-
tution, §313; and, most relevant today, protected patent
owners from the need to fight a two-front war before both
the Board and federal district court, §315. Legislating in-
volves compromise and it would be naive to think that, as
the price for their zealous new procedures for canceling pat-
ents, those who proposed the AIA didn’t have to accept
some protections like these for patent holders. Yet, Thryv
glides past all these provisions without comment. Worse,
taking the company’s argument to its logical conclusion
could render these protections into “ ‘merely advisory’ ” fea-
tures of the law. Bowen, 476 U. S., at 671. If adopted,
Thryv’s vision of an administrative regime singularly fo-
cused on the efficient canceling of patents could become
self-fulfilling.
A case decided just weeks ago supplies a telling point of
comparison. In Guerrero-Lasprilla v. Barr, 589 U. S. ___
(2020), Congress sought to expedite the removal of aliens
convicted of certain aggravated felonies by foreclosing judi-
cial review of their cases unless they raised “questions of
law.” See 8 U. S. C. §§1252(a)(2)(C), (D). But the statute
Cite as: 590 U. S. ____ (2020) 15
GORSUCH, J., dissenting
there was ambiguous about mixed questions of law and fact:
Were these (reviewable) questions of law, or (unreviewable)
determinations of fact? Because the statute could be inter-
preted either way, this Court held, the presumption of re-
viewability preserved the aliens’ ability to argue mixed
questions on appeal. Today, the textual arguments for
shielding the agency’s decision from review are even
weaker, and the same presumption that preserved judicial
review for felons seeking discretionary relief from removal
should do no less work for patent holders seeking to defend
their inventions.
IV
Even if the statute’s plain language and the presumption
in favor of review dictate a ruling against it, Thryv finishes
by suggesting we must ignore all that and rule for it anyway
because precedent commands it. Maybe our precedent is
wrong, the company says, but it binds us all the same.
In particular, Thryv points us to Cuozzo. There, the
Court suggested that §314(d) could preclude review in
cases: (1) where a litigant challenges the Director’s reason-
able likelihood of success determination under §314(a), or
(2) where a litigant “grounds its claim in a statute closely
related to that decision to institute inter partes review.”
579 U. S., at ___ (slip op., at 12). That first path is faithful
to the plain language of §314(d). The second appears no-
where in the statute but is, instead, a product of the judicial
imagination. Still, Thryv says, we must follow that path
wherever it leads and, because §315(b) decisions are
“closely related” to §314(a) decisions, we shouldn’t review
them.
But Cuozzo hardly held so much. In fact, Cuozzo had no
need to explore the second path it imagined, for it quickly
concluded that the argument before it was “little more than
a challenge to the Patent Office’s conclusion under §314(a),”
16 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
a decision shielded from judicial review under any interpre-
tation of §314(d). Id., at ___ (slip op., at 12). So all the dis-
cussion about the reviewability of decisions outside §314(a)
turned out to be nothing more than dicta entirely unneces-
sary to the decision. Nor did anything in Cuozzo directly
address §315(b) decisions, let alone declare them to
be “close enough” to §314(a) decisions to preclude judicial
review.
That’s just the beginning of Thryv’s precedent problems,
too. In SAS Institute Inc. v. Iancu, 584 U. S. ___ (2018), an
inter partes review petitioner challenged the Director’s
practice of instituting review of some, but not all, of the
claims challenged in a single petition. The government ar-
gued there—much as Thryv argues today—that §314(d)
shielded this unlawful practice from judicial review. In ad-
vancing this argument, the government seized on the same
language in Cuozzo that Thryv now embraces, claiming
that its opponent’s “grounds for attacking the decision . . .
are closely tied” to the §314(a) institution decision. Brief
for Federal Respondent in SAS Institute Inc. v. Iancu, O. T.
2017, No. 16–969, p. 13. Because no one could say that the
petitioner’s argument in SAS Institute was “little more than
a challenge to the Patent Office’s conclusion under §314(a),”
584 U. S., at ___ (slip op., at 13), we were forced to confront
whether Cuozzo and the relevant statutes actually barred
not just institution decisions under §314(a) but things
“closely related” to them.
We held they did not. We began, as we did in Cuozzo, by
noting the “strong presumption in favor of judicial review.”
SAS Institute, 584 U. S., at ___ (slip op., at 13) (internal
quotation marks omitted). We then put an end to any doubt
about what the dicta in that case might mean: “Given the
strength of this presumption and the statute’s text, Cuozzo
concluded that §314(d) precludes judicial review only of the
Director’s ‘initial determination’ under §314(a).” Ibid.
(quoting Cuozzo, 579 U. S., at ___ (slip op., at 9); emphasis
Cite as: 590 U. S. ____ (2020) 17
GORSUCH, J., dissenting
added). We did not need to overrule Cuozzo, because the
language the government seized upon from that opinion
was dicta from the start. Still, we made it clear that dicta’s
day had come: To read Cuozzo as “foreclosing judicial re-
view of any legal question bearing on the institution deci-
sion,” we explained, would “overrea[d] both the statute and
our precedent.” SAS Institute, 584 U. S., at ___–___ (slip
op., at 12–13). The petitioner’s challenge to the Director’s
partial institution practice could go forward exactly because
it was something other than a disagreement about the Di-
rector’s initial determination under §314(a). Id., at ___–___
(slip op., at 13–14).
It’s not surprising that litigants would invite us to
overread dicta or overlook an unfavorable precedent. What
is surprising is that the Court would accept the invitation.
In ‘‘cases involving property,” after all, “considerations fa-
voring stare decisis are at their acme.” Kimble v. Marvel
Entertainment, LLC, 576 U. S. 446, 457 (2015) (internal
quotation marks omitted). And we are often reminded that
“stare decisis carries enhanced force when a decision . . . in-
terprets a statute.” Id., at 456. But rather than searching
for the kind of “superspecial justification,” id., at 458, this
Court supposedly requires to overrule a precedent like SAS
Institute, today’s majority quibbles with a few sentences
and quietly walks away. If, as some have worried, “[e]ach
time the Court overrules a case, the Court . . . cause[s] the
public to become increasingly uncertain about which cases
the Court will overrule,” Franchise Tax Bd. of Cal. v. Hyatt,
587 U. S. ___, ___ (2019) (slip op., at 13), (BREYER, J., dis-
senting), one can only imagine what a judicial shrug of the
shoulders like this might yield.
Litigants and lower courts will also have to be forgiven
for the confusion to come about the meaning of §314(d)’s re-
view bar. Whether it is limited to the §314(a) determina-
tion (as SAS Institute held and parts of Cuozzo suggested)
or also reaches to challenges grounded in “closely related”
18 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
statutes (as other parts of Cuozzo suggested and the Court
insists today)—who can say? And even supposing that
“closely related to institution” really is the test we’ll apply
next time, does anyone know what this judicially concocted
formulation even means? Despite three opinions interpret-
ing the same provision in under five years, only one thing
is clear: Neither the statute nor our precedent can be
counted upon to give the answer. Litigants and lower
courts alike will just have to wait and see.
V
It’s a rough day when a decision manages to defy the
plain language of a statute, our interpretative presump-
tions, and our precedent. But today that’s not the worst of
it. The Court’s expansive reading of §314(d) takes us fur-
ther down the road of handing over judicial powers involv-
ing the disposition of individual rights to executive agency
officials.
We started the wrong turn in Oil States Energy Services,
LLC v. Greene’s Energy Group, LLC, 584 U. S. ___ (2018).
There, a majority of this Court acquiesced to the AIA’s pro-
visions allowing agency officials to withdraw already-issued
patents subject to very limited judicial review. As the ma-
jority saw it, patents are merely another public franchise
that can be withdrawn more or less by executive grace. So
what if patents were, for centuries, regarded as a form of
personal property that, like any other, could be taken only
by a judgment of a court of law. So what if our separation
of powers and history frown on unfettered executive power
over individuals, their liberty, and their property. What the
government gives, the government may take away—with or
without the involvement of the independent Judiciary. To-
day, a majority compounds that error by abandoning a good
part of what little judicial review even the AIA left behind.
Just try to imagine this Court treating other individual
Cite as: 590 U. S. ____ (2020) 19
GORSUCH, J., dissenting
liberties or forms of private property this way. Major por-
tions of this country were settled by homesteaders who
moved west on the promise of land patents from the federal
government. Much like an inventor seeking a patent for his
invention, settlers seeking these governmental grants had
to satisfy a number of conditions. But once a patent issued,
the granted lands became the recipient’s private property,
a vested right that could be withdrawn only in a court of
law. No one thinks we would allow a bureaucracy in Wash-
ington to “cancel” a citizen’s right to his farm, and do so de-
spite the government’s admission that it acted in violation
of the very statute that gave it this supposed authority. For
most of this Nation’s history it was thought an invention
patent holder “holds a property in his invention by as good
a title as the farmer holds his farm and flock.” Hovey v.
Henry, 12 F. Cas. 603, 604 (No. 6,742) (CC Mass. 1846)
(Woodbury, J., for the court). Yet now inventors hold noth-
ing for long without executive grace. An issued patent be-
comes nothing more than a transfer slip from one agency
window to another.
Some seek to dismiss this concern by noting that the bu-
reaucracy the AIA empowers to revoke patents is the same
one that grants them. But what comfort is that when the
Constitution promises an independent judge in any case in-
volving the deprivation of life, liberty, or property? Would
it make things any better if we assigned the Department of
the Interior the task of canceling land patents because that
agency initially allocated many of them? The relevant con-
stitutional fact is not which agency granted a property
right, but that a property right was granted.
The abdication of our judicial duty comes with a price.
The Director of the Patent and Trademark Office is a polit-
ical appointee. The AIA vests him with unreviewable au-
thority to institute (or not) inter partes review. Nothing
would prevent him, it seems, from insulating his favorite
firms and industries from this process entirely. Those who
20 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
are not so fortunate proceed to an administrative “trial” be-
fore a panel of agency employees that the Director also has
the means to control. The AIA gives the Director the power
to select which employees, and how many of them, will hear
any particular inter partes challenge. It also gives him the
power to decide how much they are paid. And if a panel
reaches a result he doesn’t like, the Director claims he may
order rehearing before a new panel, of any size, and includ-
ing even himself.
No one can doubt that this regime favors those with po-
litical clout, the powerful and the popular. But what about
those who lack the resources or means to influence and
maybe even capture a politically guided agency? Consider
Mr. DuVal, who 25 years ago, came up with something the
Patent Office agreed was novel and useful. His patent sur-
vived not only that initial review but a subsequent admin-
istrative ex parte review, a lawsuit, and the initiation of an-
other. Yet, now, after the patent has expired, it is
challenged in still another administrative proceeding and
retroactively expunged by an agency that has, by its own
admission, acted unlawfully. That is what happens when
power is not balanced against power and executive action
goes unchecked by judicial review. Rather than securing
incentives to invent, the regime creates incentives to curry
favor with officials in Washington.
Nor is it hard to imagine what might lie around the cor-
ner. Despite repeated lawsuits, no court ever ruled defini-
tively on Mr. DuVal’s patents. But suppose one had—and
suppose he had prevailed. According to the agency, even
that judgment might not matter much. In other cases, the
Board has claimed the power through inter partes review
to overrule final judicial judgments affirming patent rights.
In the Director’s estimation, it appears, even this Court’s
decisions must bow to the Board’s will. See XY, LLC v.
Trans Ova Genetics, L. C., 890 F. 3d 1282, 1285–1286,
1294–1295 (CA Fed. 2018); Fresenius USA, Inc. v. Baxter
Cite as: 590 U. S. ____ (2020) 21
GORSUCH, J., dissenting
Int’l, Inc., 721 F. 3d 1330, 1340–1344 (CA Fed. 2013). It’s
no wonder, then, that district courts sometimes throw up
their hands and let the Board take over whenever inter
partes review and patent litigation begin to overlap. Why
bother with a trial if “the finality of any judgment rendered
by [a] Court will be dubious”? Order Granting Stay in
Click-to-call Technologies LP v. Ingenio, Inc., No. 12–cv–
00465 (WD Tex.), Doc. No. 147, p. 4.
It’s understandable, too, why the agency might think so
much is up for grabs. Not only did this Court give away
much of its Article III authority in Oil States on a mistaken
assessment that patents were historically treated as public
franchises rather than private rights. Some would have
had the Court go even further. Rather than looking to his-
tory to determine how patents were treated, as both the ma-
jority and dissent sought to do, these Members of the Court
suggested that agencies should be allowed to withdraw
even private rights if “a number of factors”—taken to-
gether, of course—suggest it’s a good idea. Commodity Fu-
tures Trading Comm’n v. Schor, 478 U. S. 833, 851 (1986);
see also Oil States, 584 U. S., at ___ (BREYER, J., concur-
ring) (slip op., at 1). These “factors” turn out to include such
definitive and easily balanced considerations as the “nature
of the claim,” the “nature of the non-Article III tribunal,”
and the “nature and importance of the legislative purpose
served by the grant of adjudicatory authority to a tribunal
with judges who lack Article III’s tenure and compensation
protections.” Stern v. Marshall, 564 U. S. 462, 513 (2011)
(BREYER, J., dissenting). In other words, Article III prom-
ises that a person’s private rights may be taken only in pro-
ceedings before an independent judge, unless the govern-
ment’s goals would be better served by a judge who isn’t so
independent.
Thryv seeks to assure us that affected parties can still file
writs of mandamus in courts if the Patent Office gets really
22 THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP
GORSUCH, J., dissenting
out of hand. But the Court today will not say whether man-
damus is available where the §314(d) bar applies, and the
Federal Circuit has cast doubt on that possibility. In re
Power Integrations, Inc., 899 F. 3d 1316, 1319 (2018) (“We
have held that the statutory prohibition on appeals from
decisions not to institute inter partes review cannot be side-
stepped simply by styling the request for review as a peti-
tion for mandamus”); In re Procter & Gamble Co., 749 F. 3d
1376 (2014); In re Dominion Dealer Solutions, LLC., 749
F. 3d 1379 (2014). Even assuming mandamus is available,
it is a “drastic [remedy], to be invoked only in extraordinary
situations.” Kerr v. United States Dist. Court for Northern
Dist. of Cal., 426 U. S. 394, 402 (1976). To be eligible for
this discretionary relief, a petitioner must first show a
“clear and indisputable” right. Id., at 403 (internal quota-
tion marks omitted). But how often could a litigant show
such a “clear and indisputable” right in an area where
courts shirk their duty to say what the law is in the first
place? And how would a court find the will to call a situa-
tion “extraordinary” once the agency has been free for so
long to ignore the limits on its power? If the case before us
doesn’t qualify as “extraordinary,” and if the Board’s admit-
ted flouting of §315(b) isn’t “clear and indisputable,” then
what extralegal act wouldn’t be just another day at the
office?
*
Two years ago, this Court sanctioned a departure from
the constitutional plan, one in which the Executive Branch
assumed responsibilities long reserved to the Judiciary. In
so doing, we denied inventors the right to have their claims
tried before independent judges and juries. Today we com-
pound that error, not only requiring patent owners to try
their disputes before employees of a political branch, but
limiting their ability to obtain judicial review when those
Cite as: 590 U. S. ____ (2020) 23
GORSUCH, J., dissenting
same employees fail or refuse to comply with the law. Noth-
ing in the statue commands this result, and nothing in the
Constitution permits it. Respectfully, I dissent.