Ingenio, Inc., et al. v. Click-to-Call Technologies LP

This case is the sister case to the inter partes review (“IPR”) considered by this Court in Thryv, Inc v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). This case now concerns whether the IPR at issue in the prior case bars Petitioners (“Thryv”) under 35 U.S.C. § 315(e)(2) from challenging a single claim that was presented in the petition, but which was not instituted upon and addressed in the IPR. Consistent with the Patent Trial and Appeal Board’s (“Board” or “PTAB”) practice before the Court’s ruling in SAS Institute, Inc. v., Iancu, 138 S. Ct. 1348 (2018), the PTAB chose not to institute on all such grounds and claims addressed in the petition. As a result, the PTAB did not address claim 27 or the grounds challenging that claim in its final written decision. For years, the Federal Circuit interpreted 35 U.S.C. § 315(e)(2) according to its plain text as applying only to claims and grounds the petitioner reasonably could have raised in the instituted inter partes review. Before this case, the Federal Circuit correctly recognized the statute distinguished between claims on which institution was granted and review proceeded to final written decision and claims excluded from the final written decision. In this case, however, the Federal Circuit overruled its precedent and ignored the express statutory language addressing estoppel to hold Thryv is estopped from challenging claim 27. The questions presented are: 1. Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final