IPR Estoppel “Under an Unusual Set of Facts”

| Hans L. MayerJoshua C. Loader


Before Stoll, Schall, and Cunningham. Appeal from the United States District Court for the Western District of Texas.

Summary: Ingenio’s IPR petition was partially instituted before SAS (overruling the practice of partial institutions), and a final written decision was issued after SAS. IPR estoppel applied to a claim that was not addressed in a final written decision because the invalidity ground reasonably could have been brought, and petitioner chose not to seek remand in view of SAS.

Click-to-call sued Ingenio for patent infringement. Ingenio filed an IPR petition challenging the asserted claims. The Board partially instituted IPR on certain claims based on the Dezonno reference, but refused to consider grounds based on the Freeman refence. Because Ingenio challenged claim 27 based only on Freeman, that claim was not part of the final written decision. After the IPR concluded, Ingenio filed a motion for summary judgment of invalidity in the District Court, asserting claim 27 was invalid in view of Dezonno. Click-to-call argued that Ingenio was precluded due to IPR estoppel. The District Court granted summary judgment of invalidity.

The Federal Circuit reversed. The Federal Circuit held that Ingenio’s reliance on Dezonno for other claims evidenced its awareness of Dezonno, and therefore it “reasonably could have raised” Dezonno as a ground of invalidity against claim 27 in the IPR. The Federal Circuit also rejected Ingenio’s argument that IPR estoppel could not apply because claim 27 was not part of the Board’s final written decision. Due to the unusual facts of this case, Claim 27 was included in Ingenio’s petition but the Board failed to include claim 27 in its final written decision due to a legal error of partial institution, which was later corrected in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). The IPR proceeding was still pending when SAS issued and Ingenio could have sought remand to address claim 27, but chose not to. “Ingenio’s choice to leave unremedied the Board’s mistake does not shield it from estoppel as to a claim it included in its IPR petition.“

Editor: Paul Stewart