CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

Click-to-Call sued Ingenio for patent infringement asserting sixteen claims of U.S. Patent No. 5,818,836 relating to anonymous voice communication using an online data service. Ingenio filed a petition for IPR challenging the sixteen asserted claims on six grounds, based on two prior art references (Dezonno and Freeman). The Board instituted only on the Dezonno-based grounds and refused institution of the Freeman-based grounds, and found all claims challenged on the Dezonno grounds to be unpatentable. Click-to-Call appealed, and during the IPR appeal, Ingenio did not ask for remand under the Supreme Court’s SAS decision to review the non-instituted grounds, and ultimately dependent claim 27 survived the IPR. In the post-IPR district court proceedings, Ingenio moved for summary judgment, arguing that claim 27, was invalid based on Dezonno. Click-to-Call argued that Ingenio was estopped from pressing this invalidity ground against claim 27 due to IPR estoppel under  35 U.S.C. § 315(e)(2), but the district court rejected this argument and granted summary judgment of invalidity. Click-to-Call appealed. The CAFC finds it was error to reject Click-to-Call’s IPR estoppel argument on the basis that anticipation by Dezonno was not litigated in the IPR, because Ingenio might still be estopped if it “reasonably could have raised” that ground in the IPR. To give effect to the language “reasonably could have raised,” the CAFC has held that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition. The CAFC notes that Ingenio challenged claim 27 in its petition (albeit on the alternative Freeman-based ground), and the fact that the Board, due to a legal error corrected by SAS, failed to include claim 27 in its final written decision does not absolve Ingenio of the estoppel triggered by its choice to challenge claim 27 at the Board. The CAFC holds that Ingenio is estopped under 35 U.S.C. § 315(e)(2) from asserting anticipation of claim 27 by Dezonno, the only invalidity basis applied by the district court, and reverses the summary judgment of invalidity. The CAFC further finds that the district court did not abuse its discretion in refusing to allow Click-to-Call to amend its selection of claims for trial to add claims 24 and 28, and affirms that portion of the district court’s decision.

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