Thryv, Inc. v. Click-to-Call-Technologies, LP

Click-to-Call Technologies, LP (Click-to-Call) (defendant) owned a patent for an anonymous-call technology. In 2001, Click-to-Call sued Thryv, Inc. (plaintiff) for patent infringement but then voluntarily dismissed the complaint without prejudice. In 2013, Thryv petitioned for inter partes review of Click-to-Call’s patent, asking the US Patent and Trademark Office (PTO) to reconsider the patent’s validity. Click-to-Call argued that such review was barred by a statutory provision prohibiting the institution of inter partes review if the review request came more than a year after the requestor was sued for patent infringement. The PTO’s Patent Trial and Appeal Board (board) concluded that Click-to-Call’s voluntarily dismissed complaint against Thryv did not trigger the one-year time limit. The board therefore instituted inter partes review. After review, the board canceled 13 of the claims in Click-to-Call’s patent, concluding that they were obvious or lacked novelty. Click-to-Call did not challenge those conclusions but appealed to the Federal Circuit arguing only that inter partes review should never have occurred. The Federal Circuit initially dismissed the appeal, concluding that it lacked jurisdiction to review the board’s decision to institute inter partes review. However, on rehearing, the court determined that the inter partes review was untimely and therefore vacated the board’s invalidation of Click-to-Call’s patent claims. The United States Supreme Court granted certiorari to clarify the reviewability of decisions to grant inter partes review.