This morning the Federal Circuit released a precedential opinion in a patent case appealed from the Western District of Texas. The Federal Circuit reversed-in-part, affirmed-in-part, and remanded. It reversed as to a specific claim, concluding that the district court erred in not applying inter partes review estoppel under 35 U.S.C. § 315(e)(2) as to that claim. It affirmed the district court’s denial of the plaintiff’s request to amend its selection of asserted claims to add claims not at issue in the inter partes review. Here is the introduction to the opinion.

Click-to-Call Technologies LP v. Ingenio, Inc. (Precedential)

This appeal involves the district court patent-infringement suit that is the sister case to the inter partes review considered by the Supreme Court in Thryv, Inc v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). Significant to this case, despite Ingenio seeking IPR of all of the asserted claims of the patent at issue, U.S. Patent No. 5,818,836, the Patent Trial and Appeal Board only partially instituted the IPR. Specifically, in its final written decision, the Board addressed and found persuasive unpatentability grounds based on one reference, Dezonno, but refused to consider grounds based on another reference, Freeman. Notably, the Freeman grounds challenged asserted claim 27 of the ’836 patent, whereas the Dezonno grounds did not. During the pendency of the appeal of the IPR, and while the district court case was stayed, the Supreme Court overruled the practice of partial institutions in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). Ingenio, however, never sought remand under SAS for the Board to consider Ingenio’s challenge to claim 27.

The district court revived the case once the IPR proceeding was finally concluded. In the post-IPR district court proceedings, Ingenio moved for summary judgment, arguing that the only asserted claim not finally held unpatentable in the IPR, claim 27, was invalid based on the same reference that Ingenio had used against the other asserted claims in its IPR petition—Dezonno. Click-to-Call argued that Ingenio was estopped from pressing this invalidity ground against claim 27 due to IPR estoppel under 35 U.S.C. § 315(e)(2), but the district court did not accept this argument.

This case thus requires us to consider the application of 35 U.S.C. § 315(e)(2) under a rather unusual set of facts. The Board instituted pre-SAS and did not institute on all grounds. And when given the opportunity to do so post-SAS, Ingenio did not seek remand for institution on the non-instituted grounds. We conclude that under the facts of this case, the district court erred in not applying IPR estoppel under 35 U.S.C. § 315(e)(2) to claim 27 based on Dezonno. Accordingly, we reverse as to claim 27 and remand for further proceedings.

Click-to-Call also argues that the district court abused its discretion in not allowing Click-to-Call to amend its selection of asserted claims to add two claims that were not at issue in the IPR (claims 24 and 28). The district court did not abuse its discretion in this regard, and thus we affirm the district court’s denial of Click-to-Call’s request to amend.