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
2015-1242
United States Court of Appeals for the Federal Circuit
August 16, 2018
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00312.
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.
This long-marooned case returns to us after a voyage alongside two others interpreting the scope of
We conclude that the Board committed legal error in rendering its
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
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
The Board held a conference call with counsel for CTC and Petitioners in September 2013, in part to discuss CTC‘s
The Board issued its Institution Decision on October 30, 2013. With respect to the
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
CTC requested rehearing of this
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 legal position as if the underlying complaint had never been served.” Final Written Decision at *7. The Board also determined that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 either were anticipated by or would have been obvious in view of certain prior art references. Id. at *14. Those merits determinations are not at issue in this appeal.
C. The History of this Appeal
CTC filed its Notice of Appeal on November 25, 2014, and briefing commenced shortly thereafter. In April 2015, the Director intervened solely to address the
On October 12, 2015, counsel for Appellees submitted a Rule 28(j) letter informing the court of our decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), arguing that Achates mandates dismissal of the appeal for lack of appellate jurisdiction. Rule 28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. Cir. Oct. 12, 2015), ECF No. 64. In light of Achates, this panel subsequently waived oral argument, and, on November 12, 2015, issued an order dismissing CTC‘s appeal for lack of jurisdiction. Click-to-Call Techs., LP v. Oracle Corp., 622 F. App‘x 907 (Fed. Cir. 2015) (per curiam) (Click-to-Call I).
CTC petitioned for writ of certiorari, and, on June 27, 2016, the Supreme Court granted the petition, vacated this court‘s judgment in Click-to-Call I, and remanded for further consideration in light of its opinion in Cuozzo. Click-to-Call Techs., LP v. Oracle Corp., No. 15-1014 (June 27, 2016). We directed the parties to file supplemental briefs and the parties complied with our directive.
On September 21, 2016, counsel for Appellees filed a second letter regarding supplemental authority, this time informing the court of our decision in Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016). Rule 28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. Cir. Sept. 21, 2016), ECF No. 83. In this letter, Appellees argued that, because Wi-Fi One confirmed that Achates remained good law, CTC‘s appeal should again be dismissed for lack of appellate jurisdiction. We agreed with Appellees that we were bound by our precedents in Wi-Fi One and Achates, and on November 17, 2016, dismissed CTC‘s appeal for a second time. Click-to-Call Techs., LP v. Oracle Corp., No. 15-1242, 2016 WL 6803054 (Fed. Cir. Nov. 17, 2016) (Click-to-Call II).
On December 5, 2016, CTC filed a petition for en banc rehearing, principally arguing that Achates and Wi-Fi One should be overruled. Pet. for Reh‘g En Banc, No. 15-1242 (Fed. Cir. Dec. 5, 2016), ECF No. 91. Less than one month later, CTC‘s wish was partially granted when this court agreed to consider en banc whether it should overrule Achates and hold that judicial review is available for a patent owner to challenge the Director‘s determination that the petitioner satisfied the timeliness requirement of
On January 8, 2018, we issued our en banc decision in Wi-Fi One, expressly overruling Achates and holding that time-bar determinations under
We have jurisdiction under
II. DISCUSSION
A. Section 315(b) and Voluntary Dismissals Without Prejudice
The principal question on appeal is whether the Board erred in interpreting the phrase “served with a complaint alleging infringement of [a] patent” recited in
1. Legal Standards
We review the Board‘s statutory interpretation pursuant to Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), Auer v. Robbins, 519 U.S. 452 (1997), and United States v. Mead Corp., 533 U.S. 218, 229–30 (2001). Chevron requires that a court reviewing an agency‘s construction of a statute it administers first discern “whether Congress has directly spoken to the precise question at issue.” 467 U.S. at 842. If the answer is yes, the inquiry ends, and the reviewing court must give effect to Congress‘s unambiguous intent. Id. at 842-43. If the answer is no, the court must consider “whether the agency‘s answer [to the precise question at issue] is based on a permissible construction of the statute.” Id. at 843. The agency‘s “interpretation governs in the absence of unambiguous statutory language to the contrary or unreasonable resolution of language that is ambiguous.” United States v. Eurodif S.A., 555 U.S. 305, 316 (2009) (citing Mead, 533 U.S. at 229–30).
When a statute expressly grants an agency rulemaking authority and does not “unambiguously direct[ ]” the agency to adopt a particular rule, the agency may “enact rules that are reasonable in light of the text, nature, and purpose of the statute.” Cuozzo, 136 S. Ct. at 2142 (citing Mead, 533 U.S. at 229, and Chevron, 467 U.S. at 843). When the Director does adopt rules, “[w]e accept the [Director‘s] interpretation of Patent and Trademark Office regulations unless that interpretation is plainly erroneous or inconsistent with the regulation.” In re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003) (citing Auer, 519 U.S. at 461–62, and Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945))) (internal quotations omitted).
Where an agency instead engages in “interpretive,” rather than “formal,” rulemaking, a lower level of deference might apply. See Mead, 533 U.S. at 230–31 (describing notice-and-comment as “significant in pointing to Chevron authority“); Reno v. Koray, 515 U.S. 50, 61 (1995) (according “some deference” to an interpretive rule that “do[es] not require notice and comment” (citations omitted)). The Supreme Court has explained that “[t]he fair measure of deference to an agency administering its own statute has been understood to vary with circumstances, and courts have looked to the degree of the agency‘s care, its consistency, formality, and relative expertness, and to the persuasiveness of the agency‘s position.” Mead, 533 U.S. at 228 (footnotes omitted) (citing Skidmore v. Swift & Co., 323 U.S. 134, 139–40 (1944)).
2. Chevron Step One
We begin our analysis of the Board‘s interpretation of
a. Plain and Unambiguous Language
We “[s]tart where the statute does.” SAS, 138 S. Ct. at 1355.
The “ordinary, contemporary, common meaning[s]” of the operative terms “served” and “complaint” support the understanding that it is wholly irrelevant to the
This reading of
Moreover, adopting the Board‘s preferred construction of the phrase “served with a complaint” in
b. Legislative History
The legislative history of
c. Conclusion Regarding Chevron Step One
“Because a statute‘s text is Congress‘s final expression of its intent, if the text answers the question, that is the end of the matter.” Timex V.I., Inc. v. United States, 157 F.3d 879, 882 (Fed. Cir. 1998) (citations omitted); see also Cuozzo, 136 S. Ct. at 2142 (“Where a statute is clear, the agency must follow the statute.“). Here, the text of
2. The Board‘s Contrary Reasoning Is Unpersuasive
Notwithstanding the absence of any facial ambiguity in the phrase “served with a complaint,” the Board concluded that CTC “has not established that service of the complaint in the infringement suit brought by Inforocket against Keen bars Ingenio, LLC from pursuing an inter partes review for the ‘836 patent.” J.A. 288. To support this conclusion, the Board wrote that the “Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought,” and cited this
The Board misunderstood that the text of
Even if the provision could fairly be read to consider the “effect” of service—which it cannot—the Board‘s reliance on the cited authorities was erroneous.5 We interpret the Board‘s reasoning as presupposing that the phrase “served with a complaint” is a legal term of art with some latent ambiguity, necessitating the reliance on additional interpretive aids. Assuming arguendo that the phrase is ambiguous, none of the authorities on which the Board relied help resolve this ambiguity because they each concern fundamentally different contexts, and consequently shed no light on “whether service of a complaint can be nullified.” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016) (recognizing that “we have held in other cases that dis- missals without prejudice leave the parties as though the action had never been brought,” but questioning “whether service of a complaint can be nullified“).
Both Bonneville and Graves concern the dismissal of an appeal in a first proceeding and the extent to which that dismissal impacts the appellant‘s ability to initiate a later proceeding. In the former, Bonneville, after receiving an adverse decision from a contracting officer, filed a notice of appeal with the General Services Administration Board of Contract Appeals, but thereafter “withdr[e]w” its notice of appeal pursuant to the Board‘s rules to “pursue its appeal in the U.S. Claims Court.” Bonneville, 165 F.3d at 1362. Before the Board actually dismissed the appeal without prejudice—under the condition that the dismissal would transform into one with prejudice unless Bonneville reinstated its appeal in three years—Bonneville brought suit in the Claims Court. Id. The Claims Court, however, dismissed the suit, holding that Bonneville‘s filing of the appeal to the Board constituted an election of remedies that barred Bonneville from subsequently invoking the court‘s jurisdiction. Id.
We affirmed the Claims Court‘s dismissal, id., and ten days later, Bonneville sought to reinstate its appeal to the Board, arguing that it was complying with the three-year deadline set forth in the Board‘s dismissal order, id. at 1363. But the Board “applied the same principle that the federal courts had applied in construing the similar provision governing voluntary dismissals without prejudice in
because Bonneville voluntarily caused its appeal to be dismissed without prejudice
in order to pursue the appeal in another forum, Bonneville is placed in the same position as if the first appeal had never been filed. The second filing does not relate back to the date of the first filing. Moreover, as the second complaint filed on December 29, 1994 is a “new appeal” filed after the expiration of the CDA ninety-day time limit, it is untimely. We lack jurisdiction to hear this appeal.
We affirmed the Board‘s dismissal, finding no plain error in the Board‘s decision to treat Bonneville‘s dismissal without prejudice the same way that federal courts would have treated it under Rule 41(a). Id. at 1364. We then disagreed with Bonneville‘s criticism of the Board‘s rule as a “legal fiction,” writing that its rule “merely states the consequence of a voluntary dismissal without prejudice, namely, that the appellant cannot thereafter resurrect the appeal after the statute of limitations on the cause of action has run.” Id. (emphasis added).
Graves likewise concerns an appellant‘s effort to seek relief a second time beyond a limitations period. After Graves received an adverse decision from the Board of Veterans’ Appeals, he, proceeding pro se, timely appealed to the U.S. Court of Appeals for Veterans Claims (“Veterans Court“). 294 F.3d at 1353. He thereafter retained counsel, who filed in the Veterans Court a document requesting dismissal without prejudice, but neither mentioning any rules of the Veterans Court nor indicating that Graves intended to seek reconsideration of the Board‘s decision. Id. The Veterans Court thereafter dismissed the appeal pursuant to Rule 42 of its Rules of Practice and Procedure. Id.
Graves then asked the Board to reconsider its initial decision, and after the Board denied this request, Graves appealed both the initial decision and the denial of his request for reconsideration to the Veterans Court. Id. The Veterans Court dismissed this appeal for lack of jurisdiction on the ground that it was untimely, pointing
out that, pursuant to
We affirmed, writing that “[t]he most fundamental problem” facing Graves “is the fact that, as a matter of law, once his appeal was dismissed—for whatever purpose and whether with or without prejudice—it was as if the appeal had never been filed.” Id. at 1355–56. We noted that, in Bonneville, “the nullifying effect of a voluntary dismissal in accordance with
These two cases are inapplicable to the issue presented in this appeal. Both concern whether an appellant‘s filing of a notice of appeal and subsequent dismissal of that appeal “tolls” the jurisdictional deadline to appeal from the decision below. The cases, relying on the principle that
Here, by contrast, the appropriate question is whether the voluntary, without prejudice dismissal of a civil action in which a complaint had been served nullifies an administrative time bar that is triggered by service of that complaint. It does not. Yet the Board, without explanation, extended the background principle of Graves and Bonneville to conclude that such a dismissal “nullifies the effect of the service of the complaint.” It then relied on this erroneous conclusion to “un-ring”
These cases do not delve into the meaning of the terms “serve” or “complaint,” nor do they hold that the voluntary, without prejudice dismissal of a civil action transforms the ordinary meaning of the phrase “served with a complaint” into something else. Although we “presume that ‘Congress intended to retain the substance of the common law‘” when “a statute covers an issue previously governed by the common law,” Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) (quoting Samantar v. Yousuf, 560 U.S. 305, 320, n.13 (2010)), where the statutory scheme is clear, we are not to “invent an atextual explanation for Congress‘s drafting choices,” SAS, 138 S. Ct. at 1357.
Where, moreover, the proposed atextual explanation is the alleged existence of a “background legal principle,” that principle must both be firmly established and unequivocal before it can justify ignoring the plain text of the statute. The background legal principle on which Petitioners and the Director rely—that a “dismissal without prejudice leaves the parties in the same legal position as if the underlying complaint had never been filed,” for all purposes, Appellees Suppl. Br. 3—is anything but unequivocal. A voluntary dismissal without prejudice only leaves the dismissed action without legal effect for some purposes; for many other purposes, the dismissed action continues to have legal effect. Indeed, a voluntary dismissal without prejudice (1) may give rise to costs and fees under Rule 11, see Wright & Miller, Federal Prac. & Proc. Civ. §§ 1336, 2367; (2) forbids the filing of a subsequent action “based on or including the same claim” under
For all of these reasons, we conclude that a defendant served with a complaint as part of a civil action that is voluntarily dismissed without prejudice remains “served” with the “complaint.” This remains true even if that action becomes a “nullity” for other purposes and even if such service becomes legally irrelevant in a subsequent court action.
B. Petitioners’ Alternative Arguments
Petitioners also argue that, even if the Board erred in concluding that the voluntary dismissal of the district court action rendered
1. The Impact of Ex Parte Reexamination
Petitioners first contend that, because the claims of the ‘836 patent were materially changed during a subsequent ex parte reexamination, neither they nor any other entity was served with a complaint alleging infringement of this patent more than one year before the IPR petition was filed. See Appellees Br. 8, 19–21. In particular, they claim that, “[b]ecause each claim of the reexamined patent substantively differs from the claims of the original patent, the reexamined ‘836 patent should be treated as a new patent for purposes of
Petitioners are mistaken. “Unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.” Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341–42 (Fed. Cir. 2012). Indeed, the relevant provision provides that a reexamination certificate “incorporat[es] in the patent any proposed amended or new claim determined to be patentable.”
Petitioners’ emphasis on alleged differences in claim scope misunderstands that
Even if we were to hold that
For these reasons, we reject Petitioners’ effort to deem the reexamined ‘836 patent a “new patent” for
2. The Relevance of “Non-Barred” Petitioners
Petitioners also submit that, even if
We reject these efforts to separate YP Interactive from the other Petitioners to save the petition as to the latter. We need not scrutinize the legal relationships between
Section 315(b) and the implementing regulation both treat a petition as if there is a single petitioner for purposes of the one-year rule. Section 315(b) bars institution of an IPR where “the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
[a] person who is not the owner of a patent may file with the [Patent & Trademark Office] a petition to institute an [IPR] of the patent unless . . . [t]he petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner‘s real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent.
We read section 315(b), as implemented by the existing regulation, to apply petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection. This reading of the statutory and regulatory reference to the singular “the petitioner” for the one-year time bar is supported by the fact that, in the same statutory scheme, Congress expressly recognized the possibility of multiple petitioners and permitted separate treatment of them for different purposes. See, e.g.,
Because this IPR was not instituted properly, the final written decision was entered contrary to a statutory command and must be set aside. Petitioners cite nothing to support a conclusion that the error in instituting on this petition could be deemed harmless just because a different petition might have been filed that would have permitted institution of a different IPR to review the same patent claims. Indeed, that circumstance would often be the case, since any “person who is not the owner of a patent” may file a petition for an IPR.
Petitioners’ additional reliance on
Further support for our reading of
Notably, the Board also considered, but rejected, the petitioners’ argument that
Turning back to Terremark, the Board there wrote that the non-CoxCom petitioners, like PNC, “already have exerted substantial control over the case by participating in filing the Petition, appointing
In conclusion, to the extent Petitioners rely on
Finally, we conclude that a remand for consideration of this multi-petitioner issue is not warranted. Neither Petitioners nor CTC seek a remand for further Board proceedings. That fact is significant not only because of the IPR regime‘s general policy of expedition, see
Only the Director suggests a remand on this issue. But the Director identifies no material facts requiring further development on remand. And, the Director has not explained exactly what the Board might wish to, or be able to, consider on remand. The issue in this case thus raises only a legal question, and under current law, including the current regulation, the answer to the legal question is already determined in this opinion. The Board must follow the governing regulations, see, e.g., Creditor v. Shulkin, 877 F.3d 1040, 1047 (Fed. Cir. 2017), and it must follow our binding interpretation where, because the regulation merely parrots the statute, deference is not owed even to the Director‘s interpretation of the regulation, much less to a Board panel‘s interpretation, see supra n.6 (quoting Gonzales v. Oregon). See In re Lovin, 652 F.3d 1349, 1353–54 (Fed. Cir. 2011) (discussing Brand X and agency‘s duty to follow judicial interpretation of regulations generally, but deferring to intervening change of regulation). It is conceivable that the Director might promulgate a new regulation during remand—though the Director has not even taken a position on this issue, much less suggested that a regulation is on the horizon, and there would be a question about retroactive application of any such changed regulation. See Bowen v. Georgetown Univ. Hosp., 488 U.S. 204, 208–09 (1988). We know of no authority or sound basis to support a remand to allow for a possible intervening change of law, especially in the context of a statute prizing expedition. We therefore vacate the Board‘s Final Written Decision and remand so the Board can dismiss this IPR proceeding. We leave Petitioners to litigate the merits of the ‘836 patent in the long-stayed district court case, where there will be no estoppel bar to such litigation, as CTC has expressly conceded.
III. CONCLUSION
For the foregoing reasons, we vacate the Board‘s Final Written Decision and remand
VACATED AND REMANDED
COSTS
Costs to Click-to-Call Technologies, LP.
TARANTO, Circuit Judge, concurring.
I join the panel‘s opinion in full. Here I add a few thoughts on why I am unpersuaded by the key rationales set forth in the dissent from the court‘s en banc holding.
The en banc issue is governed by statutory language that, as the panel opinion explains, is plain in its meaning. In September 2001, Ingenio (then called Keen) was served with a complaint asserting that it infringed the ‘836 patent, and there is no dispute about the content of the complaint or the propriety of service. In 2013, Ingenio filed a petition for an inter partes review (IPR)—far more than one year after the 2001 service. With respect to the en banc issue, those facts make
This is not a case where the scope of a word or phrase in the statute, considered alone and in context, “may be open to competing interpretations” as in Kasten v. Saint-Gobain Performance Plastics Corp., 563 U.S. 1, 7 (2011), and Dolan v. U.S. Postal Service, 546 U.S. 481, 486 (2006). In Kasten, the Court addressed a genuine textual issue about whether the phrase “filed any complaint” in
Numerous authorities state that statutory language as plain in its meaning as to an issue as is
I see no basis strong enough to justify the proposed contrary-to-text result urged by the Director—that
I
The principal rationale offered to support the Director‘s position is that a background rule of law exists that Congress must have intended to modify
But this court has already observed that the cases articulating an “as if never brought” principle do not “address § 315(b) or whether service of a complaint can be nullified.” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016). And even aside from the distinction between nullifying the effect of a complaint‘s service and nullifying the effect of a complaint‘s filing, the case law invoked by the Director (and the dissent) does not justify overriding the plain meaning of the
The fundamental problem with the Director‘s position is that it takes judicial language used as explanation in particular contexts and mistakenly treats the language as establishing a rule sweeping enough to apply to the
A
Some of this court‘s and other courts’ cases deny certain legal effects to the filing of a complaint later voluntarily dismissed without prejudice. One such effect concerns what is needed to satisfy (or toll) a time limit on initiating an action or appeal. The rationale is simple. A particular case or appeal must itself be initiated within a prescribed time. A filing that initiated an earlier case or appeal, if voluntarily dismissed without prejudice, does not meet, or toll the running of the clock for meeting, the time limit for filing the document that initiates the later (even substantively identical) case.
This court so held in Bonneville II, a government-contract dispute in which Bonneville timely appealed to the General Services Administration Board of Contract Appeals; voluntarily dismissed that appeal to pursue relief in the Claims Court instead; was denied a forum for lack of jurisdiction there (as this court held in Bonneville Assocs. v. United States, 43 F.3d 649, 655 (Fed. Cir. 1994) (Bonneville I)); and then returned to the Board by filing a new appeal. This court in Bonneville II held that the new appeal was untimely because the earlier Board appeal did not count to meet the applicable time limit for an appeal to the Board. 165 F.3d at 1363-65. In the same vein, we held in Graves that the time limit for appealing to the Veterans Court,
Rather, the issue is whether the 2001 service of a complaint asserting that Ingenio infringed the ‘836 patent should be treated as losing its clock-starting legal effect for filing an IPR before the Board, just because the properly served complaint was later voluntarily dismissed without prejudice. None of the just-cited cases involved that legal effect. Indeed, while those cases insist on enforcing a time limit on initiating legal proceedings for the same or similar claims brought by the same party in (usually) the same forum, the Director‘s position here would have the opposite effect of nullifying a time limit—and doing so based on the filing of different claims (invalidity, not infringement) by a different party (accused infringer, not patent owner) in a different forum (Board, not district court). In multiple ways, then, the main line of authority invoking the “as if never brought” rationale does not apply to the circumstances addressed by
The clock-starting effect that is at issue here is also different from certain other legal effects that are denied to a complaint once it has been voluntarily dismissed without prejudice. Notably, once a complaint has been voluntarily dismissed without prejudice, most further action in the very case initiated by that complaint is neither required nor permitted.2 Relatedly, as indicated by the “without prejudice” language, invocation of issue or claim preclusion is generally not available based on the action that was voluntarily dismissed without prejudice.3 Those legal effects are
B
As just set forth, although a voluntary, without-prejudice dismissal has been held to eliminate some legal effects of a dismissed action, the clock-starting effect of
For example,
Continuing effects are also evident in sources outside the Federal Rules of Civil Procedure. For example, as the Director appears to acknowledge, the filing of a patent infringement complaint, even if later voluntarily dismissed, can play a role, even a definitive role, in proving the defendant‘s knowledge of the patent if the defendant is later charged with willful infringement. Intervenor‘s Second Supp. Br. 8 (“[D]ismissing a complaint without prejudice could have ongoing legal consequences because, for example, the notice turns a defendant‘s unwitting actions into intentional ones.“); see also
Another continuing effect is evident in the context of
Similarly, in Flowers v. Secretary of the Department of Health and Human Services, which involved a Vaccine Act provision barring certain benefits if a plaintiff had certain related actions pending, this court held that the bar applied even after the other actions were voluntarily dismissed without prejudice. 49 F.3d 1558, 1560-62 (Fed. Cir. 1995). The earlier actions were not treated as if never brought. And in Bonneville I, this court held that the Claims Court lacked jurisdiction over Bonneville‘s claim because Bonneville had initially brought an appeal to the Board and had therefore elected that forum—even though Bonneville had later obtained a voluntary, with-out-prejudice dismissal of its Board appeal. 43 F.3d at 651, 653-55. The earlier action, though it had been voluntarily dismissed without prejudice, blocked the Claims Court case—the opposite of being treated as if it had never been brought.
C
In short, the background law on the nullification effect of a voluntary, without-prejudice dismissal is a mixed bag, and it does not state a near-monolithic rule with only aberrational exceptions. Some effects are nullified, some not. More particularly, it is anything but established—in fact, the Director has acknowledged the absence of any authority holding—that such a dismissal nullifies the legal effect at issue here: a clock-starting effect prescribed by statute. In these circumstances, I conclude, there is no basis in the asserted background law for overriding the plain meaning of
II
When the Director moves beyond his argument about background law, he presents nothing to indicate a clear congressional intent contrary to the plain meaning. Legislative history indications of congressional policy at most establish that
The dissent and the Director (in the Luminara case to which the dissent refers) suggest another reason that the statutory purpose requires an exception to
This hypothesized scenario cannot support the suggested inference that Congress, to avoid such abuse, must have silently prescribed an exception to
“[T]he Court rarely invokes [an absurd results] test to override unambiguous legislation.” Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438, 459 (2002). The stringency of this test for overcoming plain meaning reflects a strong deference to the legislature as the institution for identifying and curing defects in laws. See SAS, 138 S. Ct. at 1358 (“whatever its virtues or vices, Congress‘s prescribed policy here is clear“); Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 237-39 (2012) (explaining that “error-correction for absurdity can be a slippery slope” and that the absurdity doctrine should accordingly be narrow). I do not think that the merely hypothetical possibility of the abuse posited here makes the bright-line rule in
That is especially so because there are reasons to doubt the likely significance of the hypothesized scenario even beyond the fact that it has not yet shown up in reality. The scenario posits that the initially sued defendants, although already sued once on the patent, would decide to rely on the belief that they are substantially unlikely to be sued on it again—a premise that is dubious given that the initial dismissal was specifically without prejudice to the patentee‘s right to file again, there has been no covenant not to sue, and the posited legal stratagem for avoiding IPRs is apparent. Without such (doubtful) reliance, it is plausible that one or more of the defendants would initiate IPR challenges to the patent at issue within the one-year period, defeating the posited scheme of the patentee. The assumptions of legal ignorance, naivete, or uniform fingers-crossed risk assessment seem strained.
The posited scenario also requires downplaying evident risks to the patentee of implementing the scheme. By suing many defendants in the first place, the patentee would be expanding the pool of persons objectively threat-ened by the patent, which would seem to increase the likelihood of an early IPR challenge and to lower the cost of an IPR for any individual defendant if the defendants file jointly. That risk to the patentee further diminishes the likelihood of the abuse scenario. So does the risk that the patentee would face sanctions in the initial litigation or later litigation—for acting as posited in the scenario. See Chambers v. NASCO, Inc., 501 U.S. 32, 46-47 (1991) (explaining that inherent power “extends to a full range of litigation abuses“); Roadway Express, Inc. v. Piper, 447 U.S. 752, 766 (1980) (discussing power to sanction the “willful[] abuse [of] judicial processes“); Willy v. Coastal Corp., 503 U.S. 131, 136-37 (1992) (discussing sanction power even where court lacked jurisdiction); Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 395-96 (1990) (post-dismissal sanction power); Winslow v. Hunter (In re Winslow), 17 F.3d 314, 315 (10th Cir. 1994) (per curiam) (discussing sanctions for “a pattern of litigation activity which is manifestly abusive“) (quoting Johnson v. Cowley, 872 F.2d 342, 344 (10th Cir. 1989)).
Finally, and in any event, the hypothetical abuse scenario cannot support adoption of the particular judicial modification of
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In sum, I think that the statutory issue in this case falls within the principle that “where the language of an enactment is clear, and construction according to its terms does not lead to absurd or impracticable consequences, the words employed are to be taken as the final expression of the meaning intended.” United States v. Mo. Pac. R.R. Co., 278 U.S. 269, 278 (1929). If there turns out to be a problem in the statute‘s application according to its plain meaning, it is up to Congress to address the problem.
DYK, Circuit Judge, joined by LOURIE, Circuit Judge, dissenting.
The en banc issue in this case is whether the time bar of
First, the panel opinion relies on the language of
This situation is similar. In this context, the concept of service and filing seem to be equivalent.
Second, a well-established background principle supports the PTO‘s reading of the statute. Courts have typically treated voluntary dismissals without prejudice as restoring the parties to the situation that existed before the case had ever been brought. In Bonneville Assocs. v. Barram, 165 F.3d 1360, 1362-64 (Fed. Cir. 1999), an appeal to the General Services Administration Board of Contract Appeals had been voluntarily dismissed, and the question was whether the requirement of timely filing had been satisfied by the dismissed appeal. This made it necessary to “determine the effect of the voluntary dismissal of Bonneville‘s appeal without prejudice.” Id. at 1364. Our court recognized that “[t]he rule in the federal courts is that ‘[t]he effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) “is to render the proceedings a nullity and leave the parties as if the action had never been brought.““’ Id. (second alteration in original) (quoting Williams v. Clarke, 82 F.3d 270, 273 (8th Cir. 1996)). Thus, dismissal “leaves the situation as if the suit had never been brought.” Id. at 1363.
Similarly, in Graves v. Principi, 294 F.3d 1350, 1355-56 (Fed. Cir. 2002), we held that filing an appeal in Veterans Court did not toll the 120-day period for appeals from the decision of the Board of Veteran‘s Appeals, when the appeal was voluntarily dismissed without prejudice. We held that “as a matter of law, once [the veteran‘s] appeal was dismissed . . . it was as if the appeal had never been filed.” Id. We explained that the
dismissal of his initial appeal meant that Mr. Graves was barred from appealing the January 18, 1998 decision of the Board.... because, in light of the dismissal, he was in the same situation that he would have been in if he had never filed a notice of appeal, and by June 18, 1998, the date of the dismissal, the 120-day period under
section 7266(a) for filing a notice of appeal had passed.
Id. at 1356. We reiterated that “[t]he dismissal of an action without prejudice leaves the parties as though the action had never been brought.” Id.
Other circuits have likewise treated dismissals without prejudice as restoring the parties to the exact situation as if the original complaint had never been filed. See, e.g., Norman v. Ark. Dep‘t of Educ., 79 F.3d 748, 751 (8th Cir. 1996) (“[T]he effect of a voluntary dismissal without prejudice is to render the proceedings a nullity and leave the parties as if the action had never been brought.” (quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig., 551 F.2d 213, 219 (8th Cir. 1977))).2 The understanding that dismissal
This rule has been applied in the closely comparable situation where a complaint dismissed without prejudice is held not to toll the statute of limitations, absent some evidence of a contrary legislative intent. See Willard v. Wood, 164 U.S. 502, 523 (1896) (“The general rule in respect of limitations must also be borne in mind, that if a plaintiff mistakes his remedy, in the absence of any statutory provision saving his rights, or where, from any cause, a plaintiff becomes nonsuit, or the action abates or is dismissed, and, during the pendency of the action, the limitation runs, the remedy is barred.“); Jorge v. Rumsfeld, 404 F.3d 556, 563 (1st Cir. 2005) (“[A] prescriptive period is not tolled by filing a complaint that is subsequently dismissed without prejudice.“); Garfield v. J.C. Nichols Real Estate, 57 F.3d 662, 666 (8th Cir. 1995) (“A dismissal without prejudice does not toll a statute of limitation.“); Robinson v. Willow Glen Acad., 895 F.2d 1168, 1169 (7th Cir. 1990) (holding that a tolling provision triggered by the “commencement of an action” did not apply where a complaint was filed but was later voluntarily dismissed); Davis v. Smith‘s Transfer, Inc., 841 F.2d 139, 140 (6th Cir. 1988) (per curiam) (“The initial filing of plaintiff‘s suit within the six-month time period is simply not the effective filing date of plaintiff‘s suit because it was later dismissed by the plaintiff under
The panel opinion suggests that this treatment of dismissals without prejudice is not a uniform rule and that “for many . . . purposes, the dismissed action continues to have legal effect.” Panel Op. 23. This is not correct. The panel indicates only two such claimed instances: (1) where a dismissal without prejudice does not bar
We ruled in Abbott Laboratories v. TorPharm, Inc., 503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume Congress‘s familiarity with general principles of law when enacting a statute.” In other words, “Congress is presumed to legislate against the backdrop of existing law.” Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003); accord Cannon v. Univ. of Chi., 441 U.S. 677, 698-99 (1979). This widespread treatment of voluntary dismissals without prejudice provided the background for the enactment of
The importance of assessing the statutory language in the light of background principles is confirmed by Keene Corp. v. United States, 508 U.S. 200 (1993). There the statute provided that “the Court of Federal Claims ‘shall not have jurisdiction’ over a claim, ‘for or in respect to which’ the plaintiff ‘has [a suit or process] pending’ in any other court.” Id. at 207 (alteration in original) (quoting
Third, typically where there is an intention to depart from the normal treatment of voluntary dismissals with-out prejudice, the statute or the rule says so explicitly, there is a clear legislative decision to depart from the usual rule, or, as in Keene, there is a conflicting background principle. For example,
Likewise, in Jenkins v. Village of Maywood, 506 F.3d 622 (7th Cir. 2007), the Seventh Circuit recognized that the statute of limitations for a
provides that if an action is voluntarily dismissed by the plaintiff, “then, whether or not the time limitation for bringing such action expires during the pendency of such action, the plaintiff . . . may commence a new action within one year or within the remaining period of limitation, whichever is greater . . . after the action is voluntarily dismissed by the plaintiff[.]”
Id. at 624 (alterations in original) (quoting 735 ILL. COMP. STAT. ANN. 5/13-217).3
The fact is that Congress did not include any language in
Finally, the purpose of the statute, as reflected in the legislative history, supports reading
While the panel opinion argues that the notice function supports their interpretation, in fact, the notice function would not be vindicated if the underlying complaint were voluntarily dismissed without prejudice. When an action is filed, and then later voluntarily dismissed, the accused infringer is led to think that the controversy has dissipated. In other words, the notice
As discussed earlier, in the comparable situation involving statutes of limitations, while the original filing provides notice to the defendant,5 that notice is nullified by a voluntary dismissal without prejudice, and the original filing does not toll the statute of limitations. See, e.g., Willard, 164 U.S. at 523. Here, as in the limitations context, the underlying purpose of
The statute was designed to give the petitioner a full year after receiving notice of the filing of the action to file the IPR, so that the potential petitioner could be fully aware of the claims and products at issue in the infringement litigation. The one year time-bar was intended to go into effect only after the defendant knows “which claims will be relevant and how those claims are alleged to read on the defendant‘s products.” 157 Cong. Rec. S5429 (daily ed. 2011) (statement of Sen. Kyl). Despite the assertions to the contrary (Panel Op. 15-17), this purpose is thwart-ed by an early voluntary dismissal without prejudice. In that situation, the defendant is unlikely to have received the contemplated information, and that information will be of limited value, as the defendant has been led to believe that the underlying infringement action will no longer continue.
So too, one of the purposes of
Finally, the purposes of
Thus, we conclude that, contrary to the en banc holding, the