Click-To-Call Technologies, Lp v. Oracle Corporation
15-1242
| Fed. Cir. | Nov 17, 2016Background
- Oracle petitioned the PTAB for inter partes review (IPR) of Click-to-Call’s U.S. Patent No. 5,818,836; the Board instituted the IPR and later issued a final written decision canceling certain claims.
- Click-to-Call (CTC) appealed, arguing institution was barred by the § 315(b) one-year time bar (petition filed more than one year after petitioner was served with an infringement complaint).
- The Federal Circuit previously dismissed CTC’s appeal as unreviewable under 35 U.S.C. § 314(d), relying on Achates Reference Publishing v. Apple.
- The Supreme Court granted certiorari, vacated that judgment, and remanded for consideration in light of Cuozzo Speed Technologies v. Lee, prompting supplemental briefing on whether Cuozzo affected Achates.
- The Federal Circuit panel reaffirmed that Cuozzo did not overrule Achates (following Wi‑Fi One v. Broadcom) and dismissed the appeal for lack of jurisdiction under § 314(d).
- Two concurring opinions (Judges O’Malley and Taranto) agreed the panel is bound by precedent but urged en banc reconsideration, arguing Cuozzo left open reviewability for some institution decisions—notably statutory‑limit (jurisdictional) questions like § 315(b).
Issues
| Issue | Plaintiff's Argument (CTC) | Defendant's Argument (Oracle/PTO) | Held |
|---|---|---|---|
| Whether § 314(d) bars judicial review of the PTAB’s § 315(b) timeliness determination | Cuozzo requires reconsideration of Achates; § 314(d) only bars challenges closely related to § 314(a), and § 315(b) is not closely related to institution under § 314(a) | Cuozzo did not overrule Achates; § 314(d) precludes review of institution decisions including § 315(b) time‑bar assessments | Dismissed for lack of jurisdiction: bound by Achates and Wi‑Fi One, § 314(d) bars review of the § 315(b) institution decision |
| Whether Cuozzo changed the precedent that § 314(d) precludes review post‑final decision | Cuozzo’s limiting language allows review of PTO actions that exceed statutory authority (including time‑bar errors) | Cuozzo’s reasoning supports the nonreviewability rule for institution decisions | Panel concluded Cuozzo did not overturn Achates; precedent remains binding |
| Whether the § 315(b) time bar is a jurisdictional/structural limit enforceable by courts | § 315(b) is directed to the PTO (it bars institution) and so courts should review if PTO acts beyond statutory limits | PTO/Oracle contend § 314(d)’s bar applies and prevents appellate review of institution determinations | Concurrences urged en banc review; panel nonetheless followed binding precedent and declined to reach this substantive question |
| Whether the panel should reach harmless‑error or mootness arguments about other petitioners | CTC argued any institution error could be harmless if other non‑time‑barred parties exist | Oracle and PTO argued § 314(d) binding precedent prevents addressing harmless‑error here | Court did not decide; declined to address harmless‑error because § 314(d) jurisdictional bar was dispositive |
Key Cases Cited
- Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (held § 314(d) bars appellate review of Board’s § 315(b) timeliness decision)
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (held § 314(d) bars review of certain institution determinations but preserved review when PTO acts beyond statutory limits)
- Wi‑Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016) (panel held Cuozzo did not overrule Achates; later panels are bound by Achates)
- Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015) (discussed distinction between petitioning and institution; statutory limits on Director’s authority)