Published 05/17/2021 by CIONCA IP TEAM (SE)
Thryv, Inc. v. Click-To-Call Technologies, L.P., originally called Dex Media Inc. v. Click-to-Call Technologies, L.P., is a case that has developed over nearly two decades. While there were several disputes between the two companies named in this case, the main question was whether it was appropriate for the courts to conduct judicial reviews of agency decisions. Here's the background of this incredible U.S. Supreme Court ruling and some discussion about the decision by the associate justices of the Supreme Court.
Inforocket.com, Inc. owned the exclusive licensee rights of U.S. Patent No. 5,818,836 and felt that their patent had been infringed upon by Keen, Inc. Similarly, Keen also moved forward with an infringement suit against Inforocket, this time on U.S. Patent No. 6,223,165. However, because of a merger between the two companies in 2003, while both cases were pending appeal, the court system dismissed both actions. After the union was complete, Keen updated its business name to Ingenio, Inc.
Later, in 2004, Ingenio requested a reexamination of several claims from the '836 patient. After approval by the Director of the Patent & Trademark Office, the P.T.O. provided an ex parte reexamination certificate on December 30, 2008. From this ex parte reexamination of their patent, Ingenio updated their patentable claims by amending several claims and adding new ones.
Next, in 2008, AT&T acquired Ingenio, renaming it from Ingenio, Inc. to Ingenio, L.L.C. The goal was to integrate Ingenio with YellowPages.com, which AT&T also owned at the time. However, four years later, in 2012, AT&T sold both companies. Around that time, Call-to-Click (CTC) acquired Inforocket's '836 patent, later bringing claims against several parties who CTC believed was infringing on the patent on May 29, 2012. At that time, Dex Media held the patent.
Nearly a year later, on May 28, 2013, Ingenio and several other Petitioners filed an I.P.R. petition challenging CTC's patent infringement suit claims. In CTC's Preliminary Response, they argued that Title 35 U.S.C. § 315(b) should have blocked the 2004 reexamination of Ingenio's '836 patient. However, I.P.R.'s reasoning for arguing that the Ingenio lacked standing was because of the infringement complaint Keen filed in 2001.
However, the lower courts and the Board felt that the time deadline set in § 315(b) for the I.P.R. petition did not lapse in 2002, one year after the 2001 patent infringement dispute between Keen and Inforocket. The reasoning for the Patent Trial and Appeal Board's decision not to uphold this rule was because the two companies merged and voluntarily dropped the case, which the Patent Trial and Appeal Board knew of during the reexamination of patent '836 in 2004.
Because of this ruling, the courts decided that the judicial system could not challenge an agency decision to uphold the time bar set in § 315(b). CTC appealed the decision, which reached the U.S. Supreme Court in 2020, a year after Dex Media changed its name to Thryv, Inc.
The implications were widespread, as a ruling in favor of CTC would mean that the court system could ignore or set its legal limits on patent challenge deadlines. Yet, the U.S. Supreme Court ruled that it did not have the right to review the decisions made by the Patent Trial and Appeal Board. Instead, the Federal Circuit court ruling decided on August 16, 2018, was upheld, which established that the I.P.R. was filed on time and that the court will enforce the Board's decisions.
Overall, the Thryv, Inc. v. Click-To-Call Technologies, L.P. is a fascinating case that addresses complex patent fights between several companies. It also established precedent about Court overreach, ensuring that previous agency decisions could not be appealed during the I.P.R. review process, effectively giving less power to the courts and more power to agencies like the Patent Trial and Appeal Board. This is important because it reduces the number of lousy patent claims that companies wrongfully file.
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