Click-To-Call Techs., LP v. Ingenio, Inc.

• Decision Date: 16 August 2018
• Docket Number: 2015-1242
• Parties: CLICK-TO-CALL TECHNOLOGIES, LP, Appellant v. INGENIO, INC., YELLOWPAGES.COM, LLC, Appellees Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor
• Court: U.S. Court of Appeals — Federal Circuit

899 F.3d 1321

CLICK-TO-CALL TECHNOLOGIES, LP, Appellant

v. INGENIO, INC., YELLOWPAGES.COM, LLC, AppelleesAndrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor

2015-1242

United States Court of Appeals, Federal Circuit.

Decided: August 16, 2018

Peter J. Ayers, Law Office of Peter J. Ayers, Austin, TX, for appellant.

Stanley Joseph Panikowski, III, DLA Piper US LLP, San Diego, CA, argued for all appellees. Appellees Ingenio, Inc., YellowPages.com, LLC represented by Mitchell G. Stockwell, Kilpatrick Townsend & Stockton LLP, Atlanta, GA. Appellee YellowPages.com, LLC also represented by David Clay Holloway.

Molly R. Silfen, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Sarah E. Craven, Mary L. Kelly, Thomas W. Krause.

Before O'Malley and Taranto, Circuit Judges, and Stark, Chief District Judge^* .

Opinion for the court filed by Circuit Judge O'Malley, in which Taranto, Circuit Judge, and Stark, Chief District Judge, join.

Footnote 3 of the opinion is joined by Prost, Chief Judge, Newman, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges.

Opinion concurring in footnote 3 of the opinion filed by Circuit Judge Taranto.

Opinion dissenting from footnote 3 of the opinion filed by Circuit Judge Dyk, in which Circuit Judge Lourie joins.

O'Malley, Circuit Judge.

This long-marooned case returns to us after a voyage alongside two others interpreting the scope of 35 U.S.C. § 314(d)'s "No Appeal" provision and its applicability to time-bar determinations under 35 U.S.C. § 315(b) : Cuozzo Speed Technologies, LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016), and Wi-Fi One, LLC v. Broadcom Corp. , 878 F.3d 1364 (Fed. Cir. 2018) (en banc). Because we have held en banc "that the time-bar determinations under § 315(b) are appealable," Wi-Fi One , 878 F.3d at 1367, we address for the first time the merits of Appellant Click-to-Call Technologies, LP's ("CTC") contention that the Patent Trial and Appeal Board ("Board") erred in determining that an inter partes review ("IPR") petition challenging claims of CTC's patent was not time-barred under § 315(b).

We conclude that the Board committed legal error in rendering its § 315(b) determination, and reject the proposed, alternative grounds for affirmance. Because the subject petition was time-barred, the Board lacked jurisdiction to institute the IPR proceedings. Accordingly, we vacate the Board's Final Written Decision in Oracle Corp. v. Click-to-Call Technologies LP , No. IPR2013-00312, 2014 WL 5490583 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Written Decision ), and remand with instructions to dismiss IPR2013-00312.

I. BACKGROUND

A. The District Court Actions

On June 8, 2001, Inforocket.com, Inc. ("Inforocket"), the exclusive licensee of U.S. Patent No. 5,818,836 ("the '836 patent"), filed a civil action in the United States District Court for the Southern District of New York. Compl., Inforocket.Com, Inc. v. Keen, Inc. , CA No. 1:01-cv-05130-LAP (S.D.N.Y.), ECF No. 1 (Inforocket Action ). Inforocket served a complaint asserting infringement of the '836 patent on defendant Keen, Inc. ("Keen") on September 14, 2001. Affidavit of Service, Inforocket Action , ECF No. 4.

Shortly thereafter, Keen brought its own infringement suit against Inforocket based on U.S. Patent No. 6,223,165, which proceeded before the same district judge as the Inforocket Action . See generally Keen, Inc. v. Inforocket.Com, Inc. , CA No. 1:01-cv-8226-LAP (S.D.N.Y.) (Keen Action ). In the Keen Action , the district court granted Inforocket's motion for summary judgment of noninfringement and entered judgment in favor of Inforocket in July 2002. See Order Granting Inforocket's Mot. for Summ. J., Keen Action , ECF No. 47; Judgment, Keen Action , ECF No. 48. Keen filed a Notice of Appeal to this court on August 23, 2002. Notice of Appeal, Keen Action , ECF No. 49.

In 2003, while its appeal was pending, Keen acquired Inforocket as its wholly-owned subsidiary. Thereafter, subject to the terms of the merger, Inforocket and Keen stipulated to a voluntary dismissal of both suits "without prejudice," and the district court dismissed both actions on the same day—March 21, 2003. See Stipulation and Order of Dismissal, Inforocket Action ; Stipulation and Order of Dismissal, Keen Action .¹ Later in 2003, Keen changed its name to Ingenio, Inc. ("Ingenio").

On April 20, 2004, Ingenio requested ex parte reexamination of claims 1–21 of the '836 patent. The Director of the Patent & Trademark Office ("Director") granted Ingenio's request, and issued an ex parte reexamination certificate on December 30, 2008. Several claims were cancelled, others were determined to be patentable as amended, and new claims 22–30 were added.

Meanwhile, in late 2007, non-party AT&T announced its plan to acquire Ingenio and integrate Ingenio and YellowPages.com, also owned by AT&T. In January 2008, Ingenio was acquired by a subsidiary of AT&T Inc. and its name was changed to Ingenio, LLC (also "Ingenio"). In April 2012, AT&T sold its interest in YellowPages.com and Ingenio.

CTC subsequently acquired the '836 patent, and, on May 29, 2012, asserted patent infringement claims against multiple parties in the United States District Court for the Western District of Texas. Compl., Click-to-Call Techs. LP v. AT&T, Inc. , No. 1:12-cv-00465-LY (W.D. Tex.), ECF No. 1 (AT&T Action ); Compl., Click-to-Call Techs. LP v. Oracle Corp. , No. 1:12-cv-00468-LY (W.D. Tex.), ECF No. 1 (Oracle Action ). Among the defendants named in the AT&T Action was Ingenio, which subsequently changed its name to YP Interactive LLC ("YP Interactive"). Both the AT&T Action and the Oracle Action are currently stayed.

B. The IPR Proceedings

On May 28, 2013, Ingenio, together with Oracle Corp., Oracle OTC Subsidiary LLC, and YellowPages.com LLC (together, "Petitioners" or "Appellees"),² filed a single IPR petition challenging claims of the '836 patent on anticipation and obviousness grounds. CTC filed its Preliminary Response on August 30, 2013, contending, among other things, that § 315(b) statutorily barred institution of IPR proceedings, and that Ingenio lacked standing under 37 C.F.R. § 42.101(b). In its Preliminary Response, CTC presented evidence that Ingenio was served with a complaint alleging infringement of the '836 patent in 2001.

The Board held a conference call with counsel for CTC and Petitioners in September 2013, in part to discuss CTC's § 315(b) argument. The Board then issued an order pursuant to 37 C.F.R. § 42.5 in which it requested additional briefing addressing the terms of the dismissal of the Inforocket Action . Both parties submitted additional briefing in compliance with the Board's request.

The Board issued its Institution Decision on October 30, 2013. With respect to the § 315(b) issue, the Board acknowledged that Ingenio was served with a complaint alleging infringement of the '836 patent on June 8, 2001 and found CTC's timeline of events "helpful in determining whether Ingenio, LLC is barred from filing an inter partes review of the '836 patent." J.A. 287. The Board then recited the language of § 315(b), and stated that the "statute requires that the service date of the complaint be more than one year before the petition was filed—in this case more than one year before May 28, 2013." J.A. 288.

Notwithstanding the above, the Board concluded that CTC "has not established that service of the complaint in the [Inforocket Action ] bars Ingenio, LLC from pursuing an inter partes review for the '836 patent" because that infringement suit was "dismissed voluntarily without prejudice on March 21, 2003, pursuant to a joint stipulation under Fed. R. Civ. P. 41(a)." J.A. 288–89. The Board wrote that "[t]he Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought," citing this court's decisions in Graves v. Principi , 294 F.3d 1350 (Fed. Cir. 2002), and Bonneville Associates, Ltd. Partnership v. Barram , 165 F.3d 1360 (Fed. Cir. 1999). J.A. 289. The Board also relied on Wright & Miller's Federal Practice and Procedure treatise for the proposition that, "as numerous federal courts have made clear, a voluntary dismissal without prejudice under Rule 41(a) leaves the situation as if the action never had been filed." J.A. 289 (quoting 9 Wright, Miller, Kane, and Marcus, Federal Prac. & Proc. Civ. § 2367 (3d ed.) ). The Board concluded by determining that "the dismissal of the infringement suit brought by Inforocket against Keen—now Ingenio, LLC—nullifies the effect of the service of the complaint and, as a consequence, does not bar Ingenio, LLC or any of the other Petitioners from pursuing an inter partes review of the '836 patent." J.A. 289. In light of this determination, the Board did not address the following two contingent questions: (1) whether the patent at issue in the Inforocket Action is the same patent at issue in the IPR due to amendments made in the interim; and (2) whether § 315(b)'s time bar should be determined on a "petitioner-by-petitioner" basis. J.A. 289–90.

CTC requested rehearing of this § 315(b) determination, but the Board denied its request. CTC filed its Patent Owner Response on January 16, 2014, addressing the merits of Petitioners' unpatentability arguments and again requesting dismissal of the petition because the Board lacked statutory authority to review the '836 patent under § 315(b), and because Petitioners lacked standing under 37 C.F.R. § 42.101(b).

The Board issued its Final Written Decision on October 28, 2014, reaffirming its conclusion that Petitioners were not barred from filing an IPR petition by stating that, "because [the Inforocket Action ] was dismissed without prejudice, Federal Circuit precedent interprets such a dismissal as leaving the parties in the same...