Click-To-Call Technologies, LP v. Ingenio, Inc. et al.

Click-To-Call Technologies, LP v. Ingenio, Inc. et al.
Docket No. 2015-1242 (IPR2013-00312)

O’Malley, Taranto, Stark (with en banc footnote 3)
August 16, 2018

Brief summary: Board’s decision that § 315(b) one-year time bar does not apply where earlier complaint was voluntarily dismissed “vacated and remanded so the Board can dismiss this IPR proceeding” (see en banc FN3).

Summary: CTC appealed Board decision that an IPR petition was not time-barred under § 315(b) (anticipation and obviousness conclusions not addressed here). The Board concluded Ingenio was not barred from filing an IPR by an earlier-filed lawsuit because it was voluntarily dismissed and “leaves the situation as if the action never had been filed” (Graves, FC 2002; Bonneville, FC 1999; Wright & Miller’s Federal Practice and Procedure treatise). The FC explained that its “en banc decision in Wi-Fi One” (Jan. 2018), “expressly overruling Achates” (FC, 2015) held “that time-bar determinations under § 315(b) are appealable.” The FC panel explained that “[t]he principal question on appeal is whether the Board erred in interpreting the phrase ‘served with a complaint alleging infringement of [a] patent’ recited in § 315(b) such that voluntary dismissal without prejudice of the civil action in which the complaint was served ‘does not trigger’ the bar.” The FC panel first found the § 315(b) (“confirmed by our en banc decision in Wi-Fi One”) is clear (“plain and unambiguous language”) that “if a petition is not filed within a year after the real party in interest, or privy of the petitioner is served with a complaint, it is time-barred by § 315(b), and the petition cannot be rectified and in no even can IPR be instituted” (Wi-Fi, Jan. 18; “It is impossible to square Wi-Fi One’s ‘cannot be rectified’ and ‘in no event’ language with the possibility that subsequent events in the civil action might serve to ‘nullify’ service of the complaint for the purpose of § 315(b)’s time bar.”) The FC panel explained that this view is also supported by the legislative history (e.g., “a statute’s text is Congress’s final expression of its intent” (Timex, FC 1998)). The FC panel “rejected the Board’s interpretation of § 315(b)” since “[t]he provision only probes whether the petitioner, the real party in interest or privy of the petitioner was served with” an infringement complaint “more than one year before the IPR petition was filed”. Thus, the FC panel concluded “that a defendant served with a complaint as part of a civil action that is voluntarily dismissed without prejudice remains ‘served’ with the ‘complaint’…even if that action becomes a ‘nullity’ for other purposes and even if such service becomes legally irrelevant in a subsequent court action.” Ingenio argued that “because the claims of the ‘836 patent were materially changed during a subsequent ex parte reexamination, neither they nor any other entity was served with a complaint alleging infringement of this patent” but the FC panel disagreed because “[u]nlike reissue, reexamination does not result in the surrender of the original patent and issuance of a new patent” (Aspex, FC 2012). Ingenio also argued that the §3 315(b) time bar of this case “would not apply” to the other named defendants (e.g.,, but the FC panel also rejected this argument since e.g., “[t]hese four entities declared themselves ‘the Petitioner’ in their sole IPR petition” (“the collection of petitioners on a single petition [are] treated as a unit indistinguishable from each member”, 315(b) applies “petition-by-petition, not petitioner-by-petitioner”), “certified that Ingenio…is a ‘real party in interest’”, and “no…’request for joinder’ was made” (Ingenio’s § 315(c) / 317(a) theory). The Board’s decision was therefore “vacated and remanded so the Board can dismiss this IPR proceeding.” Judge Taranto concurred. Judge Dyk and Judge Lourie dissented because in their view “the use of traditional tools of statutory construction leads to a conclusion opposite to the en banc court”.

This entry was posted in Appeal, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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