Click-To-Call Technologies, Lp v. Ingenio, Inc.
899 F.3d 1321
Fed. Cir.2018Background
- Click-to-Call (CTC) owns U.S. Patent No. 5,818,836 and sued multiple defendants in 2012; a prior infringement suit against Ingenio (then Keen/Inforocket) resulted in service of a complaint on June 8, 2001, but that suit was voluntarily dismissed without prejudice on March 21, 2003.
- Ingenio (later YP Interactive) and Oracle (with others) filed a joint IPR petition challenging the '836 patent on May 28, 2013, more than one year after the 2001 service.
- CTC argued § 315(b) barred institution because a petitioner (or its privy/real party-in-interest) had been served with a complaint more than one year earlier; the PTAB concluded the earlier voluntary dismissal without prejudice nullified the effect of the 2001 service and instituted the IPR.
- The PTAB issued a Final Written Decision finding several claims unpatentable; CTC appealed the institution/time-bar ruling to the Federal Circuit.
- After procedural developments (including Wi‑Fi One en banc holding that § 315(b) determinations are appealable), the Federal Circuit considered whether a voluntary dismissal without prejudice negates the § 315(b) one-year time bar.
- The en banc Federal Circuit (majority) held the Board erred: service of a complaint triggers § 315(b) regardless of a later voluntary dismissal without prejudice; because the petition was time-barred, the Board lacked jurisdiction and the Final Written Decision was vacated and remanded with instructions to dismiss the IPR.
Issues
| Issue | Plaintiff's Argument (CTC) | Defendant's Argument (Petitioners/Director) | Held |
|---|---|---|---|
| Whether § 315(b)'s one-year bar is triggered by service of a complaint even if that underlying district-court suit was later voluntarily dismissed without prejudice | The 2001 service started § 315(b)'s one-year clock; dismissal without prejudice does not change that | A voluntary dismissal without prejudice leaves parties "as if the action had never been brought," so the earlier service should not trigger § 315(b) | Service triggers § 315(b) irrespective of later voluntary dismissal; Board erred and IPR was time-barred |
| Whether the reexamination/amended claims mean the 2001 complaint did not allege infringement of "the patent" for § 315(b) purposes | CTC: the patent at issue remained the same for § 315(b); reexamination does not create a new patent | Petitioners: amended claims after ex parte reexamination materially changed the patent, so prior service doesn't apply to the reexamined patent | Reexamination does not create a new patent for § 315(b) absent a clear showing of materially different claims; petition still time-barred |
| Whether a multi-party joint petition can be saved because some co‑petitioners were not time-barred | CTC: the joint petition named Ingenio/YP Interactive (a served party), so the whole petition is barred | Petitioners: some petitioners (e.g., Oracle, YellowPages) were not in privity and would not be time-barred; joinder or dropping the time-barred petitioner could salvage review | Under § 315(b) and the implementing regulation, a jointly filed petition is treated unitary; because the collective petition was filed more than one year after service of a complaint on a listed real party-in-interest, the petition is time-barred |
| Whether the Board's reliance on case-law treating voluntary dismissals as "nullities" supports excusing the time bar | CTC: background law does not nullify the statute's plain text; service is the event that matters | Petitioners/Director: cases like Bonneville and Graves show dismissals without prejudice leave parties "as if never sued," so service should not trigger § 315(b) | The court rejected extending those precedents to nullify the statutory trigger; the cases concern tolling/statute-of-limitations or forum/jurisdiction issues and do not abrogate § 315(b)'s plain language |
Key Cases Cited
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (Supreme Court decision on PTAB deference and IPR procedures)
- Wi‑Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc) (held § 315(b) time‑bar determinations are appealable)
- Bonneville Associates, Ltd. P’ship v. Barram, 165 F.3d 1360 (Fed. Cir. 1999) (discussing effect of voluntary dismissal without prejudice in tolling/jurisdiction context)
- Graves v. Principi, 294 F.3d 1350 (Fed. Cir. 2002) (same principle on effect of dismissed appeal for jurisdiction/timeliness)
- SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (textualist principle: follow clear statutory text)
- Keene Corp. v. United States, 508 U.S. 200 (1993) (background rule: jurisdictional bar assessed at time of filing; dismissal without prejudice does not remove bar)
- Barnhart v. Sigmon Coal Co., 534 U.S. 438 (2002) (statutory construction principles: plain text controls)