The Thryv Ruling Says the PTAB is Supreme—So Now Let’s Make it Fair

“What is good for the goose is good for the gander. If the PTAB is necessary to rid the world of bad patents, then let’s actually rid the world of bad patents, regardless of whether they were acquired by small and mid-size entities or whether they were acquired by large entities [or] whether the petitioner with knowledge of patent examiner error possesses the $15,500 filing fee or not.”, the United States Supreme Court ruled that the Director of the United States Patent and Trademark Office (USPTO), by and through his designees, the Patent Trial and Appeal Board (PTAB), has the unchallengeable authority to institute inter partes review (IPR) proceedings even when they are brought outside the statute of limitations.

Indeed, it is difficult to believe the above characterization of the Supreme Court’s decision could be accurate, but sadly it is—and it is no longer open for debate or discussion. The above description, as improbable and ludicrous as it sounds, is a fair, accurate and unassailably correct summary of the Supreme Court’s decision in Thryv, Inv. V. Click-to-Call Technologies, LP. The stupefying nature of the decision comes about because of an extraordinary interpretation of one statute that has consistently been read to trump all logic, reason and accountability; i.e., that in 35 U.S.C. 314(d), Congress said that decisions to institute an IPR are not judicially reviewable.

What the Supreme Court has now said is that §314(d) is the sovereign statute, even to the point that it trumps a statute of limitations. This was made clear by the decision in Thryv because 35 U.S.C. 315(b) requires IPR petitions to be brought within one year of the petitioner being sued for patent infringement. So, what if the PTAB were to institute an IPR proceeding on a petition filed more than one year after the petitioner was sued for patent infringement? According to §315(b), the petition cannot be granted. The language of §315(b) is mandatory and leaves no room for interpretation. Petitions filed by petitioners who were sued more than one year prior to the filing date on the petition must be denied. Well, at least until yesterday.

PTAB Reigns Supreme

According to the Supreme Court, because Congress has prevented judicial review of institution decisions, that means that there is no ability for an Article III court to enforce the statute of limitations in §315(b), not even the United States Supreme Court. Thus, we now have definitive confirmation of what opponents of the PTAB have said all along—that the PTAB reigns supreme without any checks or balances on their power. Even the Supreme Court says they are helpless to stop a rogue PTAB panel that might openly disregard something as fundamental and basic as a statute of limitations.

Clearly, with the Supreme Court having ruled in Cuozzo that post grant challenges are constitutional, and then in Thryv ruling that even they cannot provide even a modicum of oversight, the PTAB is the most important patent court in the United States. Their decisions on the most fundamental process issues are not subject to any judicial review, and as we have seen over and over again on a substantive level, the Federal Circuit refuses to provide any meaningful judicial review. It is hard to fault the Federal Circuit though, since the Senate-confirmed Article III judges on the Federal Circuit make up an inferior tribunal to those Administrative Patent Judges on the PTAB who are not Senate confirmed, are unconstitutionally appointed officers (see Arthrex) and often have only several years of legal experience prior to becoming judges. Clearly, the Federal Circuit wouldn’t want to run afoul of the real judicial power in the patent system.

If the PTAB is So Vital, Make it Accessible

Still, this begs an important question that Congress must soon wrestle with regarding access to the PTAB. We have been told over and over again just how essential the PTAB is to the patent system. How necessary the PTAB is with respect to rooting out bad patents that never should have issued. And, honestly, the PTAB has been very, very good at killing patent claims and patents. But there is a fundamental unfairness at the PTAB. If the PTAB is so important, why are the fees so high? If the PTAB plays such a vital role in correcting the egregious mistakes of patent examiners (of which there are apparently many given the number of valuable patents that die upon review), why should only those patents that are owned by independent inventors, universities, start-ups and research and development companies be the targets? What about the truly ridiculous, idiotic patents that are issued to large entities?

It is time for us to embrace the PTAB. The fight to end the PTAB has gone nowhere, and it will continue to go nowhere. Congress created the PTAB less than 10 years ago and they are not about to acknowledge having made a mistake, even if they thought they made a mistake, which they don’t. Congress likes patents being challenged because those with large patent portfolios control marketing challenges and manufacturing and they want to implement the inventions of others. The PTAB makes their life easy. They run no risk of losing anything.

Obviously, the PTAB is here to stay, and the PTAB only continues to grow with power. So, it seems time to use the PTAB instead of constantly trying to topple it.

What’s Good for The Goose

The USPTO is denying access to the PTAB, a vitally important tribunal, with exorbitant fees. Such high fees to institute IPR proceedings guarantees that those with money can bring these challenges against upstart innovators, while those upstart innovators who have little funding (as is the case at the beginning of every enterprise) have no ability to challenge the bad, bogus, clearly unpatentable claims and patents issued to tech giants and pharmaceutical companies. Because, unless you believe patent examiners only make mistakes when examining valuable innovations invented by small entities, you must believe patent examiners make mistakes when examining patent applications filed by large entities.

Indeed, it seems more likely that patent examiners would make more mistakes when examining patent applications filed by large entities who are frequent filers. These entities often refuse to take no for an answer, eventually wearing down patent examiners in their search for exclusive rights on marginal innovations to reward inventors with another plaque they can hang on their wall so they can tout just how innovative they are, using patents as an imperfect proxy for innovation.

Now, at a time when the world is fighting to stay alive, as we collectively fight COVID-19, it seems practically immoral, irresponsible and unconscionable for the USPTO to charge any fee for the institution of an IPR. Now is the time to be busting patents of those with tens of thousands of patents in search for cures, treatments and solutions for safely reopening the economy. Now is not the time to have $15,500 fees for the filing of an IPR to challenge bad patent claims that never should have issued in the first place. What is good for the goose is good for the gander.

Stop Picking Winners and Losers

If the PTAB is necessary to rid the world of bad patents, then let’s actually rid the world of bad patents, regardless of whether they were acquired by small and mid-size entities or whether they were acquired by large entities. Let’s rid the world of bad patents regardless of whether the petitioner with knowledge of patent examiner error possesses the $15,500 filing fee or not.

Charging exorbitant fees to file IPR petitions does nothing less than pick winners and losers and prevent those without money, but knowledge of egregious Patent Office mistakes, from helping to liberate non-inventions from the clutches of evil monopolists.

If the PTAB is supreme, let the PTAB be supreme. And let everyone have access, regardless of ability to pay.

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Join the Discussion

17 comments so far.

  • [Avatar for jacek]
    April 24, 2020 01:35 pm

    It seems to me that this is not such a novel idea.
    It can be applied elsewhere.
    This blog is continuously commenting on the performance of the Supreme Court, and I am sure their misgiving is a constant source of entertainment (comments) for any lawyer. Then why you do not put it in numbers. It will give you a tool to measure the performance of the GODS from the Supreme OLYMPUS. And maybe force some accountability.
    1) Adhering to the letter of the law Grade: below 2
    2) Logic Grade… (Will not pass state Bar exam)
    3) Influenced by Political agenda etc….
    It is going be a fascinating lecture

  • [Avatar for Night Writer]
    Night Writer
    April 22, 2020 10:47 pm

    Josh wrote: This is like asking the King of England to allow peasants to revoke the patents of the elites that ran the ports, bridges, and colonies. Patents are not for peasants.

    I would say the current situation is like allowing peasants to determine whether a claim is valid when the peasants are chattel to the Nobles and the patents are to new farming practices the Nobles have learned from the patents.

    And our appeals are to the King/Queen who gets their daily bread from the Nobles.

  • [Avatar for jacek]
    April 22, 2020 02:42 pm

    King can lose his head.
    Nothing stays still in history Question, Why you don’t eat Cake if you don’t have bread? is lately quite often discussed in the U.S.
    Being arrogant and blind doesn’t help if you want to stay in power

  • [Avatar for mike]
    April 22, 2020 02:33 pm

    jacek: “Is there a way to keep these people accountable for their decisions?”

    The French Revolution comes to mind. I’m sure that also crosses one’s mind when the PTAB takes away one’s property and one’s life’s work. So, in kind, this might seem like a reasonable option for those. That, or burning houses. Like Gene said, “what’s good for the goose…”.

    Note: I don’t advocate such actions. I merely state here what one might reasonably conclude and justify given their circumstance. It would be rather upsetting to an inventor to find out the government backtracked on the patent bargain entered by that inventor who decided to disclose his invention in pursuit of a property right, only to have that right taken away AFTER it was already fully vetted, paid for, and granted, and on it depends a business/one’s life work.

  • [Avatar for Josh Malone]
    Josh Malone
    April 22, 2020 01:46 pm

    This is like asking the King of England to allow peasants to revoke the patents of the elites that ran the ports, bridges, and colonies. Patents are not for peasants.

  • [Avatar for jacek]
    April 22, 2020 12:58 pm

    Above post is not about PTAB; it is about the Supreme Court,
    It is one more decision which begs the question:
    Why supreme court judges are so unprofessional and ignore existing law, is it because of their limited intellectual capacity or only arrogance of people viewing themselves as above the law?
    Is there a way to keep these people accountable for their decisions?
    I am sure no US lawyer will do that expecting consequences.

  • [Avatar for Pro Say]
    Pro Say
    April 22, 2020 12:38 pm

    To call the unconstitutional PTAB a kangaroo court . . . is to cast aspersions on kangaroos.

    Quick; someone call PETA.

  • [Avatar for Jeff Hardin]
    Jeff Hardin
    April 22, 2020 11:26 am

    Gene, I *want* to support your position here, but making the PTAB where everyone can have access, regardless of the ability to pay, does not include legal fees in the equation. So, those who do not have the ability to pay the legal bill will lose, and efficient infringers with their ridiculously large patent portfolios still win. The small start up inventor who depends on her just one or a few patents simply cannot engage in a war of challenging others’ patents as a way to defend her own.

    Hands down, the “PTAB on consent” provision of the 2019 Inventor Rights Act is the best solution for these small independent inventors who still own their patents.

  • [Avatar for anonymous]
    April 22, 2020 11:24 am

    Any practitioner who files an IPR after the statute of limitations has elapsed should have his registration number taken.

    Assume an infringer files a petition for an IPR dated after the statute of limitations has elapsed. Before institution, and perhaps before filing a preliminary response to the petition, wouldn’t the patent owner have recourse in district court? Couldn’t a district court enter a declaratory judgment that, as a matter of law, the statute of limitations has elapsed, enjoining any institution? If the PTAB disobeyed that order and instituted anyway, despite an Article III court having ruled on the statute of limitations issue, then things might be very different, I suspect. Surely, SCOTUS cannot read the statute of limitations out of the statute.

  • [Avatar for Brad Olson]
    Brad Olson
    April 22, 2020 11:16 am

    Gene: Excellent unvarnished commentary as to the machtpolitik of the AIA and the deleterious effects it is having on innovation in the USA. I encourage you to host more seminars for innovators to learn about trade secret alternatives (“back to the future”) and/or seeking patent protection outside the U.S.

  • [Avatar for Stuart]
    April 22, 2020 09:20 am

    Sorry, it is the inventor who reigns supreme. It is entirely my discretion to file & publish, or not; even to take my ideas to the grave, if I wish. Even my anti mass shooting device, which would have saved more than 1/2 the deaths and injuries of Vegas, Florida, Sandy Hook, & now Nova Scotia. Until we have a patent system that accords with the UNDHR, such as the ‘One Dollar Patent’ at many inventors will take this course.
    One of my first inventions bankrupted me, and my father, and killed him. Yes, my invention killed my father. Read the UNDHR & fix the patent system. Then, we can get on with fixing the planet.

  • [Avatar for AAA JJ]
    AAA JJ
    April 22, 2020 07:02 am

    Ex parte re-exam still available.

  • [Avatar for Night Writer]
    Night Writer
    April 22, 2020 07:01 am

    The fees are all about feeding the beast. Government employees now make more than private sector employees which is incredible given that they used to make about 50% of private sector employees make.

    It is part of becoming a third-world/totalitarian country where working in government is high desirable because of the pay and the power the government has.

    The fees will never be lowered. The PTAB will never be removed in our life times. The only hope is for procedural changes and substantive changes at the PTAB to give the patentee a fair shot.

    All of what is happening is part of a bigger picture. You are fighting the zeitgeist and will lose.

  • [Avatar for Anon]
    April 22, 2020 06:54 am

    Mr. Stroud,

    Your comment about ‘cost recoupment’ must be presented with a caveat: where are the funds for the USPTO obtained?

  • [Avatar for Jonathan Stroud]
    Jonathan Stroud
    April 21, 2020 11:18 pm

    And just so you know I’m consistent and not just jumping on the bandwagon, here are some comments I filed at the PTO (in my personal capacity) as I attended a PPAC meeting in, I believe, 2017, prior to them raising fees another 25%.

  • [Avatar for Jonathan Stroud]
    Jonathan Stroud
    April 21, 2020 11:16 pm

    I agree with you regarding fees. It costs $400 to file a district court complaint (in fees) and it’s roughly that much in fees to file oppositions in Europe (fees only). It’s even less to file challenges. The PTO has continued to raise fees by 25% every few years, to the point that it costs $30,500 in fees just to file. And there’s no micro-entity fee. The justification has always been that it’s about cost recoupment, but there’s also an access issue here. And for some reason, the cost of PGRs, despite that they have disadvantages and are proactive and riskier (and only available within 9 months of grant), is higher—more than $40,000 in filing fees alone. That is cost-prohibitive for most small companies and start-ups sued.

    In the past I have asked the PTO to, at a minimum, lower fees for PGRs relative to their low filing numbers (and in an attempt to encourage a system of early prospective review rather than reactionary filings later). They have fee-setting authority, and can use it to drive behavior. They can’t be making much money off of the dozens of PGRs that are filed every year, compared to all of the IPRs. It always falls on deaf ears. But I would think that at least lowering fees in PGRs would be something most people would agree is sound policy, and it would allow small parties the same access as well-heeled ones.

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    April 21, 2020 08:30 pm