Petitioner Estoppel Applies: Giving Effect To "Reasonably Could Have Raised"

• Published date: 30 August 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Barbara McCurdy, Amanda Murphy, Thomas Irving and Stacy Lewis

Holding:

In Click-to-Call Technologies LP v. Ingenio, Inc., No. 22-1016 (Fed. Cir. Aug. 17, 2022), the Court of Appeals for the Federal Circuit ("the Federal Circuit") reversed a district court decision granting summary judgment of invalidity, finding the district court erred in not applying the petitioner estoppel provision of 35 U.S.C. ' 315(e)(2). The Federal Circuit held that petitioner estoppel applied as a matter of law, and that Ingenio was therefore estopped from asserting invalidity of a claim based on a ground not asserted in its IPR petition. The Federal Circuit also affirmed the district court decision that Click-to-Call could not add new claims to its asserted claims for trial, finding no abuse of discretion in this decision, and remanded for further proceedings.

Background:

Ingenio petitioned for inter partes review ("IPR") of U.S. Patent No. 5,818,836 ("the '836 patent"), challenging claims 1, 2, 8, 12, 13, 15, 16, 18, 19, 22-24, and 26-30 as unpatentable as anticipated and obvious. The Patent Trial and Appeal Board ("Board") instituted the IPRfor only some of the challenged claims (i.e., claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30) and only some of the asserted grounds (i.e., those based on the Dezonno reference, but not on the Freeman reference). IPR2013-00312, Paper 26, at *2, *30 (P.T.A.B. Oct. 30, 2013). Of relevance to this appeal, claim 27 was not among the instituted claims because it was challenged based only on the non-instituted Freeman grounds, not the instituted Dezonno grounds. Click-to-Call, at *2. The subsequent Final Written Decision ("FWD") held the instituted claims unpatentable.¹

After the FWD issued and while the IPR was still pending, the Board's practice of partial institution was abrogated by the Supreme Court's decision in SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018). Ingenio did not seek remand to the Board to request consideration of the non-instituted claims and grounds, including claim 27. Click-to-Call, at *2.

Related district court infringement litigation in the Western District of Texas (1:12-cv-00465) was stayed pending the IPR. Once revived, Ingenio moved for summary judgment of invalidity of claim 27 based on the Dezonno reference. Click-to-Call opposed, arguing that Ingenio was estopped under 35 U.S.C. '315(e)(2). Click-to-Call, at *2. The district court disagreed and granted Ingenio's motion for summary judgment of invalidity of claim 27 based on Dezonno. Click-to-Call, at *5-6.

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