Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022), reversing and remanding the district court holding that IPR estoppel did not apply despite Ingenio’s failure to seek remand for a partially instituted inter partes review (IPR) petition in light of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
After being sued for patent infringement, Ingenio petitioned the Patent Trial and Appeal Board (PTAB) to institute an IPR of all asserted claims of the patent at issue. The PTAB issued a partial institution, instituting only on claims alleged to be unpatentable over the Dezonno reference and denying institution on grounds asserting unpatentability in view of the Freeman reference. In a final written decision, the PTAB found all instituted claims invalid. While the IPR appeal was pending, the Supreme Court ruled in SAS that the PTAB’s practice of partial IPR institutions was improper. In the infringement suit, Ingenio moved for summary judgment of invalidity against claim 27 based on the Dezonno reference. Click-to-Call argued that Ingenio was estopped from asserting this reference due to IPR estoppel under 35 U.S.C. § 315(e)(2). The district court disagreed, and Click-to-Call appealed.
The Federal Circuit reversed and remanded. First, the Court held that the district court erred in applying common law issue preclusion rather than 35 U.S.C. § 315(e)(2) to the analysis. Next, the Court rejected Ingenio’s argument that IPR estoppel should not apply because the PTAB did not institute IPR on claim 27 and, therefore, claim 27 was not addressed in the final written decision. The Court acknowledged that, while it is typically true that a claim must be included in a final written decision for IPR estoppel to apply, the present case has a unique procedural posture. Specifically, Ingenio included claim 27 in its IPR petition and the instituted IPR resulted in a final written decision. SAS made it clear that the PTAB should have instituted as to all claims and addressed all claims in the final written decision. But, the Court concluded, the burden was on Ingenio to have sought a remand in the IPR appeal directing the PTAB to address any non-instituted grounds in light of SAS. The Court explained that it is the IPR petition, not the final written decision, that defines the scope of IPR estoppel.