SCOTUS Petition Challenges Federal Circuit’s Estoppel Ruling Against Claims Removed from IPR by Pre-SAS Partial Institution

On March 9, e-commerce company Ingenio Inc. filed a petition for writ of certiorari with the U.S. Supreme Court asking it to take up an appeal of a decision last August by the U.S. Court of Appeals for the Federal Circuit in favor of patent owner Click-to-Call Technologies. Ingenio’s petition asks the Supreme Court to overturn the Federal Circuit’s ruling that Ingenio was estopped from challenging the validity of patent claims that were denied institution during inter partes review (IPR) validity proceedings at the Patent Trial and Appeal Board.

District Court Litigation Stayed by Thryv Leads to Section 315(e)(2) Estoppel Ruling

Ingenio, Inc. v. Click-to-Call Technologies, LP is the sister case to the IPR proceedings that led to Thryv v. Click-to-Call, a 2020 ruling by the Supreme Court holding that IPR institution decisions can not be appealed for determinations that the institution violated the one-year time bar at 35 U.S.C. § 315(b). Ingenio follows the infringement lawsuit originally filed by Click-to-Call against Ingenio, which also does business as Thryv, in the Western District of Texas. The district court litigation was stayed pending the resolution of IPR proceedings that Ingenio filed back in 2013. The PTAB issued a partial institution on the IPR petition filed by Ingenio, a practice that the Supreme Court eliminated in its 2018 ruling in SAS Institute v. Iancu.

After the resolution of the IPR proceedings, Ingenio raised a validity challenge to a patent claim that was included in the 2013 IPR petition but was removed from the IPR as a result of the partial institution, claim 27 of Click-to-Call’s U.S. Patent No. 5818836. The Western District court ruled in 2020 on summary judgment that claim 27 was invalid, after the IPR stay was lifted. On appeal, the Federal Circuit reversed the invalidity ruling after finding that the district court erred in not finding that Ingenio was estopped under Section 315(e)(2) from challenging the validity of claim 27. The Federal Circuit ruled that, because Ingenio did not seek a remand of its IPR petition under SAS Institute to cure the PTAB’s improper partial institution decision, the IPR estoppel provisions under Section 315(e)(2) applied, preventing Ingenio from raising invalidity arguments that “the petitioner raised or reasonably could have raised” during the IPR.

Federal Circuit Decisions in Intuitive Surgical, Caltech Undermine Revision to Statutory Language

Ingenio’s petition for writ of certiorari presents two questions upon which it seeks Supreme Court review:

“1. Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final written decision, even if other claims were or could have been raised in the petition.

“2. Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that ‘reasonably could have [been] raised during that inter partes review.’”

Ingenio argues to the Supreme Court that the Federal Circuit’s decision effectively rewrites the statute at Section 315(e)(2), which indicates that estoppel preventing invalidity arguments only applies when the PTAB has issued a final written decision on the claim. Ingenio notes that other patent law statutes codifying IPR petitions and claim amendments during IPR show Congressional intent that IPR proceedings should be able to focus on a subset of claims, supporting the notion that the IPR estoppel statute should also be read in a narrow way such that estoppel only applies when a claim reaches a final written decision.

The Federal Circuit’s decision to rewrite statutory language on estoppel becomes even more salient, Ingenio contends, given other CAFC decisions on estoppel provisions that “recognized the clear command of the statutory language and appropriately limited the reach of estoppel.” For instance, in Intuitive Surgical v. Ethicon (2022), the Federal Circuit interpreted the estoppel provisions in Section 315(e)(1), which establishes similar estoppel against invalidity arguments that could have previously been raised in IPR but applied in U.S. Patent and Trademark Office proceedings rather than U.S. district court cases, and determined that such estoppel applies “on a claim-by-claim basis.” Similarly, Ingenio pointed out that the Federal Circuit issued errata to correct language from its 2022 decision in California Institute of Technology v. Broadcom (Caltech) clarifying that IPR estoppel only applies to “all grounds not stated in the petition but which reasonably could have been asserted,” rather than the original Caltech language indicating that estoppel applied to “claims and grounds asserted in the petition.”

Apple’s Cert Petition Accurately Identifies the Statutory Boundaries to IPR Estoppel

While the Federal Circuit justified its decision to focus on Ingenio’s IPR petition under SAS Institute, Ingenio argued that the Supreme Court in that case did not change the statutory text of Section 315(e). Rather, SAS Institute was focused on the PTAB’s application of 35 U.S.C. § 318(a) and while it corrected the PTAB’s partial institution practice, “nothing in SAS suggests that estoppel should extend beyond the statute as written and reach claims never addressed in the actual final written decision,” Ingenio asserts. Ingenio adds that the Federal Circuit’s new estoppel standard now requires IPR petitioners to include arguments on all claims to avoid the risk of estoppel on unchallenged claims, which undermines language in SAS Institute finding that “the petitioner’s contentions, not the Director’s discretion, define[s] the scope” of the IPR.

Although Ingenio’s certiorari petition includes questions unique to the case, petitioner Ingenio requests that the Supreme Court hold its decision on Ingenio’s petition until the Court decides whether to grant certiorari on consumer tech giant Apple’s petition in its appeal of Caltech. Apple’s petition similarly challenges the Federal Circuit’s application of Section 315(e)(2) and while Ingenio’s fact pattern is more unique given the pre-SAS Institute partial IPR institution, Ingenio argues that Court should reverse the Federal Circuit’s ruling in its case if the Court grants certiorari on Apple’s petition and reverses Caltech.

“Apple correctly points out that the institution decision is not the intended harbinger for the scope of estoppel. Actual examples exist of petitioners withdrawing claims that were instituted before final written decision. That is no different than a party pre-SAS choosing certain grounds for one claim and different grounds for a different claim. In both circumstances, grounds of invalidity and their corresponding claims were part of the petition, but were not ‘raised during that inter partes review’ because they were removed before final written decision. As such, neither should be subject to the estoppel provisions.”

Circuit Judge Kara Farnandez Stoll, who wrote the Federal Circuit’s majority opinion in Ingenio, said there that the ruling’s impact would be limited due to the “unusual procedural posture” of Ingenio’s pre-SAS Institute partial institution. Ingenio’s certiorari petition counters that the Court’s decision in this case will resolve “whether petitioners can truly be in charge of the direction and content of their IPR, or whether estoppel will force petitioners to challenge all, rather than the key subset, of claims.” While Apple’s petition in Caltech was distributed for conference this January, the Court is still awaiting the U.S. Solicitor General to file a brief representing the views of the U.S. government on the case.

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