Not a Lexis Advance subscriber? Try it out for free.

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

United States Court of Appeals for the Federal Circuit

August 16, 2018, Decided

2015-1242

Opinion

 [***1748]  [*1324]   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, 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  [*1325]  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 Techs., LP, No. IPR2013-00312, 2014 Pat. App. LEXIS 8333 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Written Decision), and remand with instructions to dismiss IPR2013-00312.

 [***1749]  I. Background

A. The District Court Actions

On June 8, 2001, Inforocket.Com, Inc. ("Inforocket"), [**3]  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, 2002 U.S. Dist. LEXIS 13640 (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.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

899 F.3d 1321 *; 2018 U.S. App. LEXIS 22839 **; 127 U.S.P.Q.2D (BNA) 1747 ***

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

Subsequent History: US Supreme Court certiorari granted by Dex Media, Inc. v. Click-To-Call Techs., LP, 139 S. Ct. 2742, 204 L. Ed. 2d 1129, 2019 U.S. LEXIS 4270 (U.S., June 24, 2019)

Vacated by, Remanded by Thryv, Fka Dex Media v. Click-To-Call Techs., 2020 U.S. LEXIS 2406 (U.S., Apr. 20, 2020)

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00312.

Oracle Corp. v. Click-to-Call Techs., LP, 2014 Pat. App. LEXIS 8333 (Bd. Pat. App. & Interferences, Oct. 28, 2014)

CORE TERMS

patent, infringement, voluntarily dismissed, voluntary dismissal, parties, regulation, legal effect, nullifying, notice, en banc, reexamination, one year, Veterans, dismissal without prejudice, real party in interest, privy, terms, district court, civil action, proceedings, purposes, cases, inter partes, Petitioners', limitations, patentee, time-bar, notice of appeal, plain meaning, ambiguous

Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Administrative Law, Judicial Review, Standards of Review, Deference to Agency Statutory Interpretation, Agency Rulemaking, Governments, Legislation, Interpretation, Civil Procedure, Dismissal, Voluntary Dismissals, Dismissal, Reexamination Proceedings, Reissue Proceedings, Agency Adjudication