Click-To-Call Techs., LP v. Oracle Corp., 2015-1242
| Decision Date | 17 November 2016 |
| Docket Number | 2015-1242 |
| Parties | CLICK-TO-CALL TECHNOLOGIES, LP, Appellant v. ORACLE CORPORATION, ORACLE OTC SUBSIDIARY, LLC, INGENIO, INC., YELLOWPAGES.COM, LLC, Appellees |
| Court | U.S. Court of Appeals — Federal Circuit |
NOTE: This disposition is nonprecedential.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00312.
PETER J. AYERS, Lee & Hayes, PLLC, Austin, TX, for appellant. Also represented by REID G. JOHNSON, Spokane, WA.
MARK D. FOWLER, DLA Piper US LLP, East Palo Alto, CA, for appellees Oracle Corporation, Oracle OTC Subsidiary, LLC. Also represented by STANLEY JOSEPH PANIKOWSKI, III, San Diego, CA; JOHN GUARAGNA, Austin, TX; JAMES M. HEINTZ, Reston, VA.
MITCHELL G. STOCKWELL, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, for appellees Ingenio, Inc., Yellowpages.com, LLC. Also represented by DAVID CLAY HOLLOWAY.
NATHAN K. KELLEY, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor Michelle K. Lee. Also represented by MARY L. KELLY, THOMAS W. KRAUSE, SCOTT WEIDENFELLER.
Before O'MALLEY and TARANTO, Circuit Judges, and STARK, District Judge.*
Opinion for the court filed PER CURIAM.
This case returns to us from the Supreme Court, which granted certiorari, vacated our previous judgment, and remanded for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). Because we are bound by intervening precedent from this court to do so, we reinstate our earlier judgment and dismiss the appeal filed by Click-to-Call Technologies ("CTC") in this matter.
On November 25, 2014, CTC appealed from a final written decision of the Patent Trial and Appeal Board("the Board") on patentability in an inter partes review ("IPR") proceeding. See Oracle Corp. v. Click-to-Call Techs., LP, No. IPR2013-00312, 2014 Pat. App. LEXIS 8333 (P.T.A.B. Oct. 28, 2014). Specifically, CTC argued that the IPR proceedings should have been barred by 35 U.S.C. § 315(b), which provides that an "inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." 35 U.S.C. § 315(b). Prior to the Supreme Court's decision in Cuozzo, we dismissed CTC's appeal for lack of jurisdiction. Click-To-Call Techs., LP v. Oracle Corp., 622 F. App'x 907 (Fed. Cir. 2015). We did so in light of this court's previous decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), where we held that a party cannot challenge the Board's decision to institute an IPR proceeding under § 315(b) because 35 U.S.C. § 314(d) "prohibits this court from reviewing the Board's determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board's final written decision." Click-To-Call, 622 F. App'x at 908 (quoting Achates, 803 F.3d at 658).
After the Supreme Court granted CTC's petition for certiorari, vacated our decision, and remanded the case, we ordered supplemental briefing to address the impact of Cuozzo on the continuing viability of our decision in Achates and, hence, in this matter. In its supplemental brief, CTC argues that Cuozzo requires this court to reconsider our holding in Achates. CTC asserts that Cuozzo limits § 314(d) to challenges that are "closely related" to the Board's substantive patentability determination under § 314(a). According to CTC, the Supreme Court implicitly overruled our holding in Achates because the time bar under § 315(b) is not closely related to theBoard's decision to institute under § 314(a). Cf. Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942, at *26 (Fed. Cir. Sept. 16, 2016) (Reyna, J., concurring) (). CTC also argues that § 315(b) provides an independent jurisdictional limitation on the Board that goes beyond the scope of § 314(d). Cf. id. ().
Oracle Corp. ("Oracle") and the United States Patent and Trademark Office ("PTO") both argue that the Supreme Court's analysis in Cuozzo not only did not overrule Achates, but supports our holding in Achates. They argue that the Supreme Court's determination that § 314(d) precludes review of an institution decision where the grounds for attacking the decision to institute are questions closely tied to those statutes authorizing the PTO to act mandates application of § 314(d) to a time-bar challenge brought under § 315(b). Oracle points to Justice Alito's separate opinion in Cuozzo, concurring in part and dissenting in part, as support for its view of the majority's reasoning. In that opinion, Justice Alito complains that "the petition's timeliness, no less than the particularity of its allegations, is closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate . . . review, and the Court says that such questions are unreviewable." Cuozzo, 136 S. Ct. at 2155 (Alito, J., concurring in part and dissenting in part) (internal quotations omitted).
After the parties submitted supplemental briefing in this case, we issued our decision in Wi-Fi One, which directly considers whether Achates remains good law after Cuozzo. In Wi-Fi One, a majority of the panel determined that the Supreme Court's decision in Cuozzo did notoverrule our previous decision in Achates and that later panels of the court remain bound by Achates. See Wi-Fi One, 2016 U.S. App. LEXIS 16942, at *9-12. The majority concluded, moreover, that "[n]othing in Cuozzo casts doubt" on the interpretation of the statute we relied upon in Achates. Id. at *11.1
In deciding this case, we are bound by this court's precedent in Wi-Fi One and, hence, in Achates. We therefore once more dismiss CTC's appeal for lack of jurisdiction. Because we are bound by the holdings of Wi-Fi One and Achates as to the scope of § 314(d), we do not address the parties' arguments as to whether any error by the PTO in its institution decision is harmless based on the presence of other parties to whom the § 315(b) time bar would not apply.
NOTE: This disposition is nonprecedential.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00312.
As explained in the court's opinion, our previous holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), determined that a party cannot challenge the Board's decision to institute an IPR proceeding under § 315(b) because of the bar on judicial review of institution decisions in § 314(d). Since the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), this court has reaffirmed that Achates remains good law. Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942 (Fed.Cir. Sept. 16, 2016). Because we are bound by the court's previous decisions in Achates and Wi-Fi One, I agree with the court's dismissal of Click-to-Call's ("CTC") challenge under § 315(b). I write separately, however, to note that I believe the Supreme Court's language in Cuozzo leaves room for us to question our reasoning in Achates and to suggest that we do so en banc.
In explaining the scope of its opinion in Cuozzo, the Supreme Court clarified that, "contrary to the dissent's suggestion, we do not categorically preclude review of a final decision where a petition fails to give 'sufficient notice' such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits . . . ." Cuozzo, 136 S. Ct. at 2141. The Supreme Court then provided the specific example of the Board addressing a claim's definiteness under § 112 during an IPR proceeding despite Congress only authorizing the Board to consider challenges under §§ 102-03. Id. at 2141-42. We could apply the same reasoning to the Board's institution of an IPR proceeding contrary to the direct statutory command that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." 35 U.S.C. § 315(b) (emphasis added). As the Supreme Court noted in its opinion, "[s]uch 'shenanigans' may be properly reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to 'set aside agency action' that is . . . 'in excess of statutory jurisdiction.'" Cuozzo, 136 S. Ct. at 2142 (quoting 5 U.S.C. § 706(2)(A)-(D)).
The Supreme Court also stated that its "conclusion that courts may not revisit this initial determination gives effect to th[e] statutory command" of § 314(d). Cuozzo, 136 S. Ct. at 2141. To the extent the Supreme Court sought in Cuozzo to give effect to the statutorycommands of Congress, permitting review of challenges brought under § 315(b) similarly would give effect to the statutory command that IPR proceedings "may not be instituted" when a petitioner files an untimely petition. See 35 U.S.C. § 315(b). It would also give effect to the statutory command that reviewing courts shall "set aside agency action" that is "in excess of statutory jurisdiction, authority, or limitations, or short of statutory right." See 5 U.S.C. § 706(2)(C).
This reasoning and the plain language of the statute contradict a key underpinning of our...
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