United States Court of Appeals for the Federal Circuit ______________________

CLICK-TO-CALL TECHNOLOGIES LP, Plaintiff-Appellant

v.

INGENIO, INC., DBA KEEN, ETHER, THRYV, INC., Defendants-Appellees ______________________

2022-1016 ______________________

Appeal from the United States District Court for the Western District of Texas in No. 1:12-cv-00465-LY, Judge Lee Yeakel. ______________________

Decided: August 17, 2022 ______________________

DANIEL J. SHIH, Susman Godfrey LLP, Seattle, WA, ar- gued for plaintiff-appellant. Also represented by BRIAN MELTON, MAX LALON TRIBBLE, JR., Houston, TX.

AMANDA N. BROUILLETTE, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for defendants-appel- lees. Also represented by DAVID CLAY HOLLOWAY, MITCHELL G. STOCKWELL. ______________________ Case: 22-1016 Document: 42 Page: 2 Filed: 08/17/2022

2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

Before STOLL, SCHALL, and CUNNINGHAM, Circuit Judges. STOLL, Circuit Judge. This appeal involves the district court patent-infringe- ment suit that is the sister case to the inter partes review considered by the Supreme Court in Thryv, Inc v. Click-to- Call Technologies, LP, 140 S. Ct. 1367 (2020). Significant to this case, despite Ingenio seeking IPR of all of the as- serted claims of the patent at issue, U.S. Patent No. 5,818,836, the Patent Trial and Appeal Board only par- tially instituted the IPR. Specifically, in its final written decision, the Board addressed and found persuasive un- patentability grounds based on one reference, Dezonno, but refused to consider grounds based on another reference, Freeman. Notably, the Freeman grounds challenged as- serted claim 27 of the ’836 patent, whereas the Dezonno grounds did not. During the pendency of the appeal of the IPR, and while the district court case was stayed, the Su- preme Court overruled the practice of partial institutions in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). In- genio, however, never sought remand under SAS for the Board to consider Ingenio’s challenge to claim 27. The district court revived the case once the IPR pro- ceeding was finally concluded. In the post-IPR district court proceedings, Ingenio moved for summary judgment, arguing that the only asserted claim not finally held un- patentable in the IPR, claim 27, was invalid based on the same reference that Ingenio had used against the other as- serted claims in its IPR petition—Dezonno. Click-to-Call argued that Ingenio was estopped from pressing this inva- lidity ground against claim 27 due to IPR estoppel under 35 U.S.C. § 315(e)(2), but the district court did not accept this argument. This case thus requires us to consider the application of 35 U.S.C. § 315(e)(2) under a rather unusual set of facts. The Board instituted pre-SAS and did not institute on all grounds. And when given the opportunity to do so post- Case: 22-1016 Document: 42 Page: 3 Filed: 08/17/2022

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

SAS, Ingenio did not seek remand for institution on the non-instituted grounds. We conclude that under the facts of this case, the district court erred in not applying IPR es- toppel under 35 U.S.C. § 315(e)(2) to claim 27 based on De- zonno. Accordingly, we reverse as to claim 27 and remand for further proceedings. Click-to-Call also argues that the district court abused its discretion in not allowing Click-to-Call to amend its se- lection of asserted claims to add two claims that were not at issue in the IPR (claims 24 and 28). The district court did not abuse its discretion in this regard, and thus we af- firm the district court’s denial