Federal Circuit Holds IPR Estoppel Applies To A Patent Claim Identified In An IPR Petition But Not Considered In The Final Written Decision
On August 17, 2022, the Federal Circuit reversed a district court’s grant of summary judgment of invalidity, finding that IPR estoppel under 35 U.S.C. § 315(e)(2) barred Ingenio, Inc.’s invalidity argument, even though the challenged claim had not been addressed by the PTAB in the final written decision in Ingenio’s IPR. Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022).
Like many IPR estoppel decisions, this case turned on the specific procedural history of the IPR in question, which the Court acknowledged made for “a rather unusual set of facts.”
In its IPR petition, Ingenio relied on two sets of invalidity grounds — one set based on prior art to Dezonno, and one set based on prior art to Freeman. Dependent claim 27 was challenged only based on the Freeman grounds. Ingenio’s petition was filed prior to the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which overruled the PTAB’s prior practice of only partially instituting certain IPRs; and, in fact, consistent with its pre-SAS practices, the PTAB instituted Ingenio’s IPR only on the Dezonno grounds, and the PTAB never considered claim 27 in its final written decision. In that final written decision, issued October 28, 2014, the PTAB found all the patent claims challenged on the Dezonno grounds to be unpatentable. Due to a lengthy appeals process, the PTAB’s final written decision did not become final and unappealable until 2020, after SAS had been decided. And, while other similarly situated petitioners sought post-SAS remands directing the PTAB to address any non-instituted grounds (such as the patentability of claim 27 over Freeman), Ingenio instead moved the district court for summary judgment of invalidity of claim 27 based on Dezonno, a motion the district court granted.
The Federal Circuit held that IPR estoppel applied as a matter of law and reversed the district court’s grant of summary judgment with respect to claim 27. The Court found that the district court had erred by analyzing plaintiff’s preclusion argument under common law rather than as a statutory IPR estoppel question under § 315(e)(2). The Federal Circuit then held that, because Ingenio’s IPR petition both challenged claim 27 as unpatentable and brought grounds based on Dezonno, a challenge of claim 27 over Dezonno was one that “petitioner … reasonably could have raised during … inter parts review.” Therefore, Ingenio was estopped from bringing that challenge in district court.
The Federal Circuit noted that, even though it agreed with Ingenio that IPR estoppel applies on a claim-by-claim basis, that did not alter the estoppel question under the “unusual procedural posture of this case.” Specifically, the fact that the PTAB had not included claim 27 in its final written decision “due to a legal error corrected by SAS” did not “absolve Ingenio of the estoppel triggered by its choice to challenge claim 27 at the Board.” The Federal Circuit found that “Ingenio was not helpless to remedy the Board’s institution error” because the IPR was still pending when SAS issued in 2018; and, in fact, the Court found that Ingenio conceded at oral argument that it could have sought a post-SAS remand directing the PTAB to address claim 27.