United States Court of Appeals
for the Federal Circuit
______________________
CLICK-TO-CALL TECHNOLOGIES, LP,
Appellant
v.
INGENIO, INC., YELLOWPAGES.COM, LLC,
Appellees
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2015-1242
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00312.
______________________
Decided: August 16, 2018
______________________
PETER J. AYERS, Law Office of Peter J. Ayers, Austin,
TX, for appellant.
STANLEY JOSEPH PANIKOWSKI, III, DLA Piper US LLP,
San Diego, CA, argued for all appellees. Appellees Ingen-
io, Inc., YellowPages.com, LLC represented by MITCHELL
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
G. STOCKWELL, Kilpatrick Townsend & Stockton LLP,
Atlanta, GA. Appellee YellowPages.com, LLC also repre-
sented by DAVID CLAY HOLLOWAY.
MOLLY R. SILFEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by SARAH E. CRAVEN, MARY
L. KELLY, THOMAS W. KRAUSE.
______________________
Before O’MALLEY and TARANTO, Circuit Judges, and
STARK, Chief District Judge *.
Opinion for the court filed by Circuit Judge O’MALLEY, in
which TARANTO, Circuit Judge, and STARK, Chief District
Judge, join.
Footnote 3 of the opinion is joined by PROST, Chief Judge,
NEWMAN, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO,
CHEN, HUGHES, and STOLL, Circuit Judges.
Opinion concurring in footnote 3 of the opinion filed by
Circuit Judge TARANTO.
Opinion dissenting from footnote 3 of the opinion filed by
Circuit Judge DYK, in which Circuit Judge LOURIE joins.
O’MALLEY, Circuit Judge.
This long-marooned case returns to us after a voyage
alongside two others interpreting the scope of 35 U.S.C.
§ 314(d)’s “No Appeal” provision and its applicability to
time-bar determinations under 35 U.S.C. § 315(b): Cuoz-
zo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
and Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364
(Fed. Cir. 2018) (en banc). Because we have held en banc
*The Honorable Leonard P. Stark, Chief District
Judge, United States District Court for the District of
Delaware, sitting by designation.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3
“that the time-bar determinations under § 315(b) are
appealable,” Wi-Fi One, 878 F.3d at 1367, we address for
the first time the merits of Appellant Click-to-Call Tech-
nologies, LP’s (“CTC”) contention that the Patent Trial
and Appeal Board (“Board”) erred in determining that an
inter partes review (“IPR”) petition challenging claims of
CTC’s patent was not time-barred under § 315(b).
We conclude that the Board committed legal error in
rendering its § 315(b) determination, and reject the
proposed, alternative grounds for affirmance. Because
the subject petition was time-barred, the Board lacked
jurisdiction to institute the IPR proceedings. Accordingly,
we vacate the Board’s Final Written Decision in Oracle
Corp. v. Click-to-Call Technologies LP, No. IPR2013-
00312 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Writ-
ten Decision), and remand with instructions to dismiss
IPR2013-00312.
I. BACKGROUND
A. The District Court Actions
On June 8, 2001, Inforocket.Com, Inc. (“Inforocket”),
the exclusive licensee of U.S. Patent No. 5,818,836 (“the
’836 patent”), filed a civil action in the United States
District Court for the Southern District of New York.
Compl., Inforocket.Com, Inc. v. Keen, Inc., CA No. 1:01-cv-
05130-LAP (S.D.N.Y.), ECF No. 1 (Inforocket Action).
Inforocket served a complaint asserting infringement of
the ’836 patent on defendant Keen, Inc. (“Keen”) on
September 14, 2001. Affidavit of Service, Inforocket
Action, ECF No. 4.
Shortly thereafter, Keen brought its own infringement
suit against Inforocket based on U.S. Patent No.
6,223,165, which proceeded before the same district judge
as the Inforocket Action. See generally Keen, Inc. v. In-
forocket.Com, Inc., CA No. 1:01-cv-8226-LAP (S.D.N.Y.)
(Keen Action). In the Keen Action, the district court
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
granted Inforocket’s motion for summary judgment of
noninfringement and entered judgment in favor of In-
forocket in July 2002. See Order Granting Inforocket’s
Mot. for Summ. J., Keen Action, ECF No. 47; Judgment,
Keen Action, ECF No. 48. Keen filed a Notice of Appeal to
this court on August 23, 2002. Notice of Appeal, Keen
Action, ECF No. 49.
In 2003, while its appeal was pending, Keen acquired
Inforocket as its wholly-owned subsidiary. Thereafter,
subject to the terms of the merger, Inforocket and Keen
stipulated to a voluntary dismissal of both suits “without
prejudice,” and the district court dismissed both actions
on the same day—March 21, 2003. See Stipulation and
Order of Dismissal, Inforocket Action; Stipulation and
Order of Dismissal, Keen Action. 1 Later in 2003, Keen
changed its name to Ingenio, Inc. (“Ingenio”).
On April 20, 2004, Ingenio requested ex parte reexam-
ination of claims 1–21 of the ’836 patent. The Director of
the Patent & Trademark Office (“Director”) granted
Ingenio’s request, and issued an ex parte reexamination
certificate on December 30, 2008. Several claims were
cancelled, others were determined to be patentable as
amended, and new claims 22–30 were added.
Meanwhile, in late 2007, non-party AT&T announced
its plan to acquire Ingenio and integrate Ingenio and
YellowPages.com, also owned by AT&T. In January 2008,
Ingenio was acquired by a subsidiary of AT&T Inc. and its
name was changed to Ingenio, LLC (also “Ingenio”). In
April 2012, AT&T sold its interest in YellowPages.com
and Ingenio.
1 The appeal in the Keen Action was also dismissed
by agreement of the parties on March 19, 2003, under
Fed. R. App. P. 42(b). Keen, Inc. v. Inforocket.Com, Inc.,
60 F. App’x 809 (Fed. Cir. 2003).
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5
CTC subsequently acquired the ’836 patent, and, on
May 29, 2012, asserted patent infringement claims
against multiple parties in the United States District
Court for the Western District of Texas. Compl., Click-to-
Call Techs. LP v. AT&T, Inc., No. 1:12-cv-00465-LY (W.D.
Tex.), ECF No. 1 (AT&T Action); Compl., Click-to-Call
Techs. LP v. Oracle Corp., No. 1:12-cv-00468-LY (W.D.
Tex.), ECF No. 1 (Oracle Action). Among the defendants
named in the AT&T Action was Ingenio, which subse-
quently changed its name to YP Interactive LLC (“YP
Interactive”). Both the AT&T Action and the Oracle
Action are currently stayed.
B. The IPR Proceedings
On May 28, 2013, Ingenio, together with Oracle Corp.,
Oracle OTC Subsidiary LLC, and YellowPages.com LLC
(together, “Petitioners” or “Appellees”), 2 filed a single IPR
petition challenging claims of the ’836 patent on anticipa-
tion and obviousness grounds. CTC filed its Preliminary
2 As we discuss in Section II(D)(2), infra, Petition-
ers identified themselves as a singular “Petitioner” in
their IPR petition. For simplicity, we refer to the collec-
tive as “Petitioners” in this Opinion. We use this conven-
tion even though Oracle Corp. and Oracle OTC Subsidiary
LLC filed an unopposed motion to withdraw from further
participation in this appeal on June 14, 2018, after set-
tling their disputes with CTC. See Mot. to Withdraw, No.
15-1242 (Fed. Cir. June 14, 2018), ECF No. 121. These
entities noted that their “motion does not affect the par-
ticipation of the non-Oracle Appellees, YellowPages.com
LLC and YP Interactive LLC, in this appeal.” Id. at 1. As
neither the other Petitioners’ participation in this appeal
nor the outcome of this case would be affected by granting
the Oracle entities’ requested relief, we granted their
motion. See Order Granting Mot. to Withdraw, No. 15-
1242 (Fed. Cir. July 24, 2018), ECF No. 123.
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
Response on August 30, 2013, contending, among other
things, that § 315(b) statutorily barred institution of IPR
proceedings, and that Ingenio lacked standing under 37
C.F.R. § 42.101(b). In its Preliminary Response, CTC
presented evidence that Ingenio was served with a com-
plaint alleging infringement of the ’836 patent in 2001.
The Board held a conference call with counsel for CTC
and Petitioners in September 2013, in part to discuss
CTC’s § 315(b) argument. The Board then issued an
order pursuant to 37 C.F.R. § 42.5 in which it requested
additional briefing addressing the terms of the dismissal
of the Inforocket Action. Both parties submitted addition-
al briefing in compliance with the Board’s request.
The Board issued its Institution Decision on October
30, 2013. With respect to the § 315(b) issue, the Board
acknowledged that Ingenio was served with a complaint
alleging infringement of the ’836 patent on June 8, 2001
and found CTC’s timeline of events “helpful in determin-
ing whether Ingenio, LLC is barred from filing an inter
partes review of the ’836 patent.” J.A. 287. The Board
then recited the language of § 315(b), and stated that the
“statute requires that the service date of the complaint be
more than one year before the petition was filed—in this
case more than one year before May 28, 2013.” J.A. 288.
Notwithstanding the above, the Board concluded that
CTC “has not established that service of the complaint in
the [Inforocket Action] bars Ingenio, LLC from pursuing
an inter partes review for the ’836 patent” because that
infringement suit was “dismissed voluntarily without
prejudice on March 21, 2003, pursuant to a joint stipula-
tion under Fed. R. Civ. P. 41(a).” J.A. 288–89. The Board
wrote that “[t]he Federal Circuit consistently has inter-
preted the effect of such dismissals as leaving the parties
as though the action had never been brought,” citing this
court’s decisions in Graves v. Principi, 294 F.3d 1350
(Fed. Cir. 2002), and Bonneville Associates, Ltd. Partner-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7
ship v. Barram, 165 F.3d 1360 (Fed. Cir. 1999). J.A. 289.
The Board also relied on Wright & Miller’s Federal Prac-
tice and Procedure treatise for the proposition that, “as
numerous federal courts have made clear, a voluntary
dismissal without prejudice under Rule 41(a) leaves the
situation as if the action never had been filed.” J.A. 289
(quoting 9 Wright, Miller, Kane, and Marcus, Federal
Prac. & Proc. Civ. § 2367 (3d ed.)). The Board concluded
by determining that “the dismissal of the infringement
suit brought by Inforocket against Keen—now Ingenio,
LLC—nullifies the effect of the service of the complaint
and, as a consequence, does not bar Ingenio, LLC or any
of the other Petitioners from pursuing an inter partes
review of the ’836 patent.” J.A. 289. In light of this
determination, the Board did not address the following
two contingent questions: (1) whether the patent at issue
in the Inforocket Action is the same patent at issue in the
IPR due to amendments made in the interim; and
(2) whether § 315(b)’s time bar should be determined on a
“petitioner-by-petitioner” basis. J.A. 289–90.
CTC requested rehearing of this § 315(b) determina-
tion, but the Board denied its request. CTC filed its
Patent Owner Response on January 16, 2014, addressing
the merits of Petitioners’ unpatentability arguments and
again requesting dismissal of the petition because the
Board lacked statutory authority to review the ’836 patent
under § 315(b), and because Petitioners lacked standing
under 37 C.F.R. § 42.101(b).
The Board issued its Final Written Decision on Octo-
ber 28, 2014, reaffirming its conclusion that Petitioners
were not barred from filing an IPR petition by stating
that, “because [the Inforocket Action] was dismissed
without prejudice, Federal Circuit precedent interprets
such a dismissal as leaving the parties in the same legal
position as if the underlying complaint had never been
served.” Final Written Decision at *7. The Board also
determined that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23,
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
26, 29, and 30 either were anticipated by or would have
been obvious in view of certain prior art references. Id. at
*14. Those merits determinations are not at issue in this
appeal.
C. The History of this Appeal
CTC filed its Notice of Appeal on November 25, 2014,
and briefing commenced shortly thereafter. In April
2015, the Director intervened solely to address the
§ 315(b) time bar issue. See Intervenor Docketing State-
ment, No. 15-1242 (Fed. Cir. Apr. 1, 2015), ECF No. 28.
On October 12, 2015, counsel for Appellees submitted
a Rule 28(j) letter informing the court of our decision in
Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d
652 (Fed. Cir. 2015), arguing that Achates mandates
dismissal of the appeal for lack of appellate jurisdiction.
Rule 28(j) Citation of Suppl. Authority, No. 15-1242 (Fed.
Cir. Oct. 12, 2015), ECF No. 64. In light of Achates, this
panel subsequently waived oral argument, and, on No-
vember 12, 2015, issued an order dismissing CTC’s appeal
for lack of jurisdiction. Click-to-Call Techs., LP v. Oracle
Corp., 622 F. App’x 907 (Fed. Cir. 2015) (per curiam)
(Click-to-Call I).
CTC petitioned for writ of certiorari, and, on June 27,
2016, the Supreme Court granted the petition, vacated
this court’s judgment in Click-to-Call I, and remanded for
further consideration in light of its opinion in Cuozzo.
Click-to-Call Techs., LP v. Oracle Corp., No. 15-1014
(June 27, 2016). We directed the parties to file supple-
mental briefs and the parties complied with our directive.
On September 21, 2016, counsel for Appellees filed a
second letter regarding supplemental authority, this time
informing the court of our decision in Wi-Fi One, LLC v.
Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016). Rule
28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. Cir.
Sept. 21, 2016), ECF No. 83. In this letter, Appellees
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9
argued that, because Wi-Fi One confirmed that Achates
remained good law, CTC’s appeal should again be dis-
missed for lack of appellate jurisdiction. We agreed with
Appellees that we were bound by our precedents in Wi-Fi
One and Achates, and on November 17, 2016, dismissed
CTC’s appeal for a second time. Click-to-Call Techs., LP
v. Oracle Corp., No. 15-1242, 2016 WL 6803054 (Fed. Cir.
Nov. 17, 2016) (Click-to-Call II).
On December 5, 2016, CTC filed a petition for en banc
rehearing, principally arguing that Achates and Wi-Fi
One should be overruled. Pet. for Reh’g En Banc, No. 15-
1242 (Fed. Cir. Dec. 5, 2016), ECF No. 91. Less than one
month later, CTC’s wish was partially granted when this
court agreed to consider en banc whether it should over-
rule Achates and hold that judicial review is available for
a patent owner to challenge the Director’s determination
that the petitioner satisfied the timeliness requirement of
35 U.S.C. § 315(b). Order, Wi-Fi One, LLC v. Broadcom
Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir. Jan. 4,
2017) (en banc), ECF No. 67. The panel in this case
subsequently held CTC’s petition for rehearing in abey-
ance pending the outcome of Wi-Fi One.
On January 8, 2018, we issued our en banc decision in
Wi-Fi One, expressly overruling Achates and holding that
time-bar determinations under § 315(b) are appealable.
878 F.3d at 1367. We subsequently granted CTC’s peti-
tion for rehearing en banc, which we construed as a
petition for panel rehearing, and authorized supplemental
briefing regarding the merits of the Board’s compliance
with § 315(b). Order, No. 15-1242 (Fed. Cir. Jan. 19,
2018), ECF No. 99. CTC, Petitioners, and the Director, as
Intervenor, all filed supplemental briefs in February and
March of this year.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
II. DISCUSSION
A. Section 315(b) and Voluntary Dismissals
Without Prejudice
The principal question on appeal is whether the Board
erred in interpreting the phrase “served with a complaint
alleging infringement of [a] patent” recited in § 315(b)
such that the voluntary dismissal without prejudice of the
civil action in which the complaint was served “does not
trigger” the bar. Final Written Decision, slip op. at 12.
We hold that it did. 3
1. Legal Standards
We review the Board’s statutory interpretation pur-
suant to Chevron, U.S.A., Inc. v. Natural Resources De-
fense Council, Inc., 467 U.S. 837 (1984), Auer v. Robbins,
519 U.S. 452 (1997), and United States v. Mead Corp., 533
U.S. 218, 229–30 (2001). Chevron requires that a court
reviewing an agency’s construction of a statute it admin-
isters first discern “whether Congress has directly spoken
to the precise question at issue.” 467 U.S. at 842. If the
answer is yes, the inquiry ends, and the reviewing court
must give effect to Congress’s unambiguous intent. Id. at
842–43. If the answer is no, the court must consider
“whether the agency’s answer [to the precise question at
3 The en banc court formed of PROST, Chief Judge,
NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA,
WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit
Judges, considered whether 35 U.S.C. § 315(b)’s time bar
applies to bar institution when an IPR petitioner was
served with a complaint for patent infringement more
than one year before filing its petition, but the district
court action in which the petitioner was so served was
voluntarily dismissed without prejudice. The en banc
court holds that § 315(b)’s time bar applies in such a
scenario.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11
issue] is based on a permissible construction of the stat-
ute.” Id. at 843. The agency’s “interpretation governs in
the absence of unambiguous statutory language to the
contrary or unreasonable resolution of language that is
ambiguous.” United States v. Eurodif S.A., 555 U.S. 305,
316 (2009) (citing Mead, 533 U.S. at 229–30).
When a statute expressly grants an agency rulemak-
ing authority and does not “unambiguously direct[ ]” the
agency to adopt a particular rule, the agency may “enact
rules that are reasonable in light of the text, nature, and
purpose of the statute.” Cuozzo, 136 S. Ct. at 2142 (citing
Mead, 533 U.S. at 229, and Chevron, 467 U.S. at 843).
When the Director does adopt rules, “[w]e accept the
[Director’s] interpretation of Patent and Trademark Office
regulations unless that interpretation is plainly erroneous
or inconsistent with the regulation.” In re Sullivan, 362
F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v.
Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266
(Fed. Cir. 2003) (citing Auer, 519 U.S. at 461–62, and
Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414
(1945))) (internal quotations omitted).
Where an agency instead engages in “interpretive,”
rather than “formal,” rulemaking, a lower level of defer-
ence might apply. See Mead, 533 U.S. at 230–31 (describ-
ing notice-and-comment as “significant . . . in pointing to
Chevron authority”); Reno v. Koray, 515 U.S. 50, 61 (1995)
(according “some deference” to an interpretive rule that
“do[es] not require notice and comment” (citations omit-
ted)). The Supreme Court has explained that “[t]he fair
measure of deference to an agency administering its own
statute has been understood to vary with circumstances,
and courts have looked to the degree of the agency’s care,
its consistency, formality, and relative expertness, and to
the persuasiveness of the agency’s position.” Mead, 553
U.S. at 228 (footnotes omitted) (citing Skidmore v. Swift
& Co., 323 U.S. 134, 139–40 (1944)).
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
2. Chevron Step One
We begin our analysis of the Board’s interpretation of
§ 315(b) by construing the provision. “As in any case of
statutory construction, our analysis begins with the
language of the statute.” Hughes Aircraft Co. v. Jacobson,
525 U.S. 432, 438 (1999) (internal quotation marks and
citation omitted). “The first step ‘is to determine whether
the language at issue has a plain and unambiguous
meaning with regard to the particular dispute in the
case.’” Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438,
450 (2002) (quoting Robinson v. Shell Oil Co., 519 U.S.
337, 340 (1997)). In doing so, we “must read the words ‘in
their context and with a view to their place in the overall
statutory scheme.’” King v. Burwell, –– U.S. ––, 135 S.
Ct. 2480, 2489 (2015) (quoting FDA v. Brown & William-
son Tobacco Corp., 529 U.S. 120, 133 (2000)). This is
because statutory “[a]mbiguity is a creature not of defini-
tional possibilities but of statutory context.” Brown v.
Gardner, 513 U.S. 115, 118 (1994). Importantly, we may
not conclude that a statutory provision is ambiguous until
we conclude that resort to all standard forms of statutory
interpretation are incapable of resolving any apparent
ambiguity which might appear on the face of the statute.
See Chevron, 467 U.S. at 843 n.9. And, in discerning
whether a statute is ambiguous, we must take care not to
weigh competing policy goals, for “[i]t is Congress’s job to
enact policy and it is th[e] [c]ourt’s job to follow the policy
Congress has prescribed.” SAS Inst., Inc. v. Iancu, 138 S.
Ct. 1348, 1358 (2018).
a. Plain and Unambiguous Language
We “[s]tart where the statute does.” SAS, 138 S. Ct.
at 1355. Section 315(b), titled “Patent Owner’s Action,”
provides that an IPR “may not be instituted if the petition
requesting the proceeding is filed more than 1 year after
the date on which the petitioner, real party in interest, or
privy of the petitioner is served with a complaint alleging
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13
infringement of the patent.” 35 U.S.C. § 315(b) (emphasis
added). The statute does not contain any exceptions or
exemptions for complaints served in civil actions that are
subsequently dismissed, with or without prejudice. Nor
does it contain any indication that the application of
§ 315(b) is subject to any subsequent act or ruling. In-
stead, the provision unambiguously precludes the Direc-
tor from instituting an IPR if the petition seeking
institution is filed more than one year after the petitioner,
real party in interest, or privy of the petitioner “is served
with a complaint” alleging patent infringement. Simply
put, § 315(b)’s time bar is implicated once a party receives
notice through official delivery of a complaint in a civil
action, irrespective of subsequent events.
The “ordinary, contemporary, common meaning[s]” of
the operative terms “served” and “complaint” support the
understanding that it is wholly irrelevant to the § 315(b)
inquiry whether the civil action in which the complaint
was filed is later voluntarily dismissed without prejudice.
Black’s Law Dictionary defines “serve” as “[t]o make legal
delivery of (a notice or process)” or “[t]o present (a person)
with a notice or process as required by law,” and defines
“service” as “[t]he formal delivery of a writ, summons, or
other legal process[.]” Black’s Law Dictionary 1491 (9th
ed. 2009). It defines “complaint” as “[t]he initial pleading
that starts a civil action and states the basis for the
court’s jurisdiction, the basis for the plaintiff’s claim, and
the demand for relief.” Id. at 323. These definitions
confirm that the plain meaning of the phrase “served with
a complaint” is “presented with a complaint” or “delivered
a complaint” in a manner prescribed by law. Indeed, at
least one Board decision has interpreted the phrase
“served with a complaint” in precisely this manner: “the
legally-charged text ‘served with a complaint’ is used
ordinarily in connection with the official delivery of a
complaint in a civil action.” Amkor Tech., Inc. v. Tessera,
14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
Inc., No. IPR2013-00242, slip op. at 9 (P.T.A.B. Jan. 31,
2014), Paper No. 98.
This reading of § 315(b) is confirmed by our en banc
decision in Wi-Fi One, in which we held that the provision
sets forth a “condition precedent to the Director’s authori-
ty to act,” based on the “timely filing of a petition.” 878
F.3d at 1374. Indeed, we observed that, “if a petition is
not filed within a year after a real party in interest, or
privy of the petitioner is served with a complaint, it is
time-barred by § 315(b), and the petition cannot be recti-
fied and in no event can IPR be instituted.” Id. at 1374
n.9 (emphases added). This is so because § 315(b)’s time
bar concerns “real-world facts that limit the agency’s
authority to act under the IPR scheme,” reflecting Con-
gress’s “balancing [of] various public interests.” Id. at
1374; see id. at 1377 (O’Malley, J., concurring) (explaining
that “§ 315(b) codifies one of the ‘important procedural
rights’ that Congress chose to afford patent owners in the
IPR context” (quoting Lindahl v. Office of Pers. Mgmt.,
470 U.S. 768, 791 (1985))). It is impossible to square Wi-
Fi One’s “cannot be rectified” and “in no event” language
with the possibility that subsequent events in the civil
action might operate to “nullify” service of the complaint
for the purpose of § 315(b)’s time bar. 4
4 Although the stipulations of dismissal in this case
were jointly entered by the predecessors of both CTC and
Ingenio, we acknowledge that plaintiffs in civil suits can
seek dismissal without prejudice pursuant to Rule
41(a)(1) of the Federal Rules of Civil Procedure in certain
circumstances without a court order and without any
involvement by the defendant. This reality does not alter
our conclusion that the subsequent dismissal of a civil
action is irrelevant to whether a petitioner, real party in
interest, or privy of the petitioner was previously “served
with a complaint” within the meaning of § 315(b). To the
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15
Moreover, adopting the Board’s preferred construction
of the phrase “served with a complaint” in § 315(b) “would
impose additional conditions not present in the statute’s
text.” Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d
1350, 1363 (Fed. Cir. 2017) (citing Norfolk Dredging Co. v.
United States, 375 F.3d 1106, 1111 (Fed. Cir. 2004), for its
holding that courts must avoid “add[ing] conditions” to
the applicability of a statute that do not appear in the
provision’s text). Congress specifically addressed the
effect of a dismissal of an IPR petitioner’s district court
action in § 315(a)(2), but did not include any similar
language in § 315(b). Congress also demonstrated that it
knew how to provide an exception to the time bar by
including a second sentence in the provision: “The time
limitation set forth in the preceding sentence shall not
apply to a request for joinder under subsection (c).” 35
U.S.C. § 315(b). Similarly, Congress could have chosen to
include a variation of the phrase “unless the action in
which the complaint was served was later dismissed
without prejudice,” but it did not do so. We reject the
Board’s effort to graft this additional language into
§ 315(b). Cf. Return Mail, 868 F.3d at 1363 (rejecting
appellant’s argument, in part, because “Congress could
have easily specified the phrase ‘sued for infringement’ to
require being sued for infringement under 35 U.S.C. § 271
or otherwise excluded [28 U.S.C.] § 1498 suits from the
definition of ‘sued for infringement,’ but it did not do so”).
b. Legislative History
The legislative history of § 315(b) further supports the
understanding that its time bar concerns only the date on
which the complaint was formally served. For example,
extent the parties debate whether the Board’s interpreta-
tion of § 315(b) results in good policy, “who should win
that debate isn’t our call to make.” SAS, 138 S. Ct. at
1358.
16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
during the March 2011 Senate debates, Senator Kyl made
clear that, under the version of § 315(b) then being con-
sidered, “if a party has been sued for infringement and
wants to seek inter partes review, he must do so within 6
months of when he was served with the infringement
complaint.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)
(statement of Sen. Kyl) (emphases added). This unequiv-
ocal reference to the date on which an accused infringer
was served suggests that Congress did not contemplate
subsequent events “nullifying” § 315(b)’s time bar.
The legislative history also clarifies that Congress
chose the date of service, as opposed to some other event,
as the trigger for § 315(b)’s time bar because service of a
complaint is the seminal notice-conferring event in a
district court action. As the Supreme Court has ex-
plained, “the core function of service is to supply notice of
the pendency of a legal action, in a manner and at a time
that affords the defendant a fair opportunity to answer
the complaint and present defenses and objections.”
Henderson v. United States, 517 U.S. 654, 672 (1996)
(emphasis added). During the September 2011 Senate
debates, Senator Kyl offered the following justification for
extending the previously contemplated six-month time
bar to one year. He observed that companies, in particu-
lar those in the high-technology sector, “are often sued by
[patentees] asserting multiple patents with large num-
bers of vague claims, making it difficult to determine in
the first few months of the litigation which claims will be
relevant and how those claims are alleged to read on the
defendant’s products.” 157 Cong. Rec. S5429 (daily ed.
Sept. 8, 2011) (statement of Sen. Kyl). Recognizing that
“[c]urrent law imposes no deadline on seeking inter partes
reexamination,” he reasoned that, “in light of the present
bill’s enhanced estoppels, it is important that the section
315(b) deadline afford defendants a reasonable opportuni-
ty to identify and understand the patent claims that are
relevant to the litigation.” Id. (emphasis added). Con-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17
gress, in “balancing various public interests,” decided to
use the “real-world fact[]” of when a petitioner, real party
in interest, or privy of the petitioner was “served with a
complaint” to trigger § 315(b). Wi-Fi One, 878 F.3d at
1374.
c. Conclusion Regarding Chevron Step One
“Because a statute’s text is Congress’s final expression
of its intent, if the text answers the question, that is the
end of the matter.” Timex V.I., Inc. v. United States, 157
F.3d 879, 882 (Fed. Cir. 1998) (citations omitted); see also
Cuozzo, 136 S. Ct. at 2142 (“Where a statute is clear, the
agency must follow the statute.”). Here, the text of
§ 315(b) clearly and unmistakably considers only the date
on which the petitioner, its privy, or a real party in inter-
est was properly served with a complaint. Because “the
statutory language is unambiguous and ‘the statutory
scheme is coherent and consistent,’” our inquiry ceases
and we need not proceed to Chevron’s second step. Barn-
hart, 534 U.S. at 450 (quoting Robinson, 519 U.S. at 340).
Simply put, there is no gap to fill or ambiguity to resolve:
“[w]here a statute’s language carries a plain meaning, the
duty of an administrative agency is to follow its com-
mands as written, not to supplant those commands with
others it may prefer.” SAS, 138 S. Ct. at 1355 (citing Soc.
Sec. Bd. v. Nierotko, 327 U.S. 358, 369 (1946)).
2. The Board’s Contrary Reasoning Is Unpersuasive
Notwithstanding the absence of any facial ambiguity
in the phrase “served with a complaint,” the Board con-
cluded that CTC “has not established that service of the
complaint in the infringement suit brought by Inforocket
against Keen bars Ingenio, LLC from pursuing an inter
partes review for the ’836 patent.” JA. 288. To support
this conclusion, the Board wrote that the “Federal Circuit
consistently has interpreted the effect of such dismissals
as leaving the parties as though the action had never
been brought,” and cited this court’s decisions in Graves,
18 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
294 F.3d at 1356, and Bonneville, 165 F.3d at 1364, and a
section of Wright and Miller’s Federal Practice and Proce-
dure treatise. Id. The Board concluded that,
“[a]ccordingly, the dismissal of the infringement suit
brought by Inforocket against Keen—now Ingenio, LLC—
nullifies the effect of the service of the complaint and, as a
consequence, does not bar Ingenio, LLC or any of the
other Petitioners from pursuing an inter partes review of
the ’836 patent.” Id. (emphasis added).
The Board misunderstood that the text of § 315(b) is
agnostic as to the “effect” of the service—i.e., what events
transpired after the defendant was served. The provision
only probes whether the petitioner, real party in interest,
or privy of the petitioner was served with a complaint
alleging patent infringement more than one year before
the IPR petition was filed. We reject the Board’s interpre-
tation of § 315(b) for this reason alone.
Even if the provision could fairly be read to consider
the “effect” of service—which it cannot—the Board’s
reliance on the cited authorities was erroneous. 5 We
interpret the Board’s reasoning as presupposing that the
phrase “served with a complaint” is a legal term of art
with some latent ambiguity, necessitating the reliance on
additional interpretive aids. Assuming arguendo that the
phrase is ambiguous, none of the authorities on which the
Board relied help resolve this ambiguity because they
each concern fundamentally different contexts, and con-
sequently shed no light on “whether service of a complaint
can be nullified.” Shaw Indus. Grp., Inc. v. Automated
Creel Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016)
(recognizing that “we have held in other cases that dis-
5 We ignore for the purpose of this appeal whether
the Board improperly placed the burden of demonstrating
that the IPR petition was time-barred on CTC, the patent
owner.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 19
missals without prejudice leave the parties as though the
action had never been brought,” but questioning “whether
service of a complaint can be nullified”).
Both Bonneville and Graves concern the dismissal of
an appeal in a first proceeding and the extent to which
that dismissal impacts the appellant’s ability to initiate a
later proceeding. In the former, Bonneville, after receiv-
ing an adverse decision from a contracting officer, filed a
notice of appeal with the General Services Administration
Board of Contract Appeals, but thereafter “withdr[e]w” its
notice of appeal pursuant to the Board’s rules to “pursue
its appeal in the U.S. Claims Court.” Bonneville, 165 F.3d
at 1362. Before the Board actually dismissed the appeal
without prejudice—under the condition that the dismissal
would transform into one with prejudice unless Bonne-
ville reinstated its appeal in three years—Bonneville
brought suit in the Claims Court. Id. The Claims Court,
however, dismissed the suit, holding that Bonneville’s
filing of the appeal to the Board constituted an election of
remedies that barred Bonneville from subsequently
invoking the court’s jurisdiction. Id.
We affirmed the Claims Court’s dismissal, id., and ten
days later, Bonneville sought to reinstate its appeal to the
Board, arguing that it was complying with the three-year
deadline set forth in the Board’s dismissal order, id. at
1363. But the Board “applied the same principle that the
federal courts had applied in construing the similar
provision governing voluntary dismissals without preju-
dice in Federal Rule of Civil Procedure 41(a), namely, that
an appeal so dismissed ‘leaves the situation as if the suit
had never been brought.’” Id. The Board therefore con-
cluded that,
because Bonneville voluntarily caused its appeal
to be dismissed without prejudice in order to pur-
sue the appeal in another forum, Bonneville is
placed in the same position as if the first appeal
20 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
had never been filed. The second filing does not
relate back to the date of the first filing. Moreo-
ver, as the second complaint filed on December 29,
1994 is a “new appeal” filed after the expiration of
the CDA ninety-day time limit, it is untimely. We
lack jurisdiction to hear this appeal.
Id.
We affirmed the Board’s dismissal, finding no plain
error in the Board’s decision to treat Bonneville’s dismis-
sal without prejudice the same way that federal courts
would have treated it under Rule 41(a). Id. at 1364. We
then disagreed with Bonneville’s criticism of the Board’s
rule as a “legal fiction,” writing that its rule “merely
states the consequence of a voluntary dismissal without
prejudice, namely, that the appellant cannot thereafter
resurrect the appeal after the statute of limitations on the
cause of action has run.” Id. (emphasis added).
Graves likewise concerns an appellant’s effort to seek
relief a second time beyond a limitations period. After
Graves received an adverse decision from the Board of
Veterans’ Appeals, he, proceeding pro se, timely appealed
to the U.S. Court of Appeals for Veterans Claims (“Veter-
ans Court”). 294 F.3d at 1353. He thereafter retained
counsel, who filed in the Veterans Court a document
requesting dismissal without prejudice, but neither men-
tioning any rules of the Veterans Court nor indicating
that Graves intended to seek reconsideration of the
Board’s decision. Id. The Veterans Court thereafter
dismissed the appeal pursuant to Rule 42 of its Rules of
Practice and Procedure. Id.
Graves then asked the Board to reconsider its initial
decision, and after the Board denied this request, Graves
appealed both the initial decision and the denial of his
request for reconsideration to the Veterans Court. Id.
The Veterans Court dismissed this appeal for lack of
jurisdiction on the ground that it was untimely, pointing
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 21
out that, pursuant to 38 U.S.C. § 7266(a), Graves was
required to file his notice of appeal with the Veterans
Court within 120 days of the date the Board mailed its
initial decision to him. Id. Citing an earlier decision, the
Veterans Court observed that, if Graves had filed a mo-
tion for reconsideration with the Board within the 120-
day judicial appeal period, the finality of the initial Board
decision “would have been abated” and a new 120-day
period would have begun to run on the date that the
Board mailed him a denial of his motion for reconsidera-
tion. Id.
We affirmed, writing that “[t]he most fundamental
problem” facing Graves “is the fact that, as a matter of
law, once his appeal was dismissed—for whatever pur-
pose and whether with or without prejudice—it was as if
the appeal had never been filed.” Id. at 1355–56. We
noted that, in Bonneville, “the nullifying effect of a volun-
tary dismissal in accordance with Fed. R. Civ. P. 41(a)(1)
was applied in the context of a General Services Admin-
istration Board of Contract Appeals dismissal,” and
concluded that “the rule is equally applicable to voluntary
dismissals under Rule 42 of the Veterans Court.” Id. at
1356. Thus, once Graves dismissed his initial appeal, “the
Veterans Court no longer had jurisdiction over the action”
and he “was barred from appealing” the Board’s decision
because “he was in the same situation that he would have
been in if he had never filed a notice of appeal.” Id.
These two cases are inapplicable to the issue present-
ed in this appeal. Both concern whether an appellant’s
filing of a notice of appeal and subsequent dismissal of
that appeal “tolls” the jurisdictional deadline to appeal
from the decision below. The cases, relying on the princi-
ple that “[t]he effect of a voluntary dismissal without
prejudice pursuant to Rule 41(a) ‘is to render the proceed-
ings a nullity and leave the parties as if the action had
never been brought,’” Bonneville, 165 F.3d at 1364 (em-
phasis added) (quoting Williams v. Clarke, 82 F.3d 270,
22 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
273 (8th Cir. 1996)), answer this question in the negative.
More broadly, the background legal principle in these
cases is that a party’s voluntary dismissal of its action or
appeal will not toll a statute of limitations, and, as a
result, a subsequently filed action or appeal must still be
brought within the original limitations period.
Here, by contrast, the appropriate question is whether
the voluntary, without prejudice dismissal of a civil action
in which a complaint had been served nullifies an admin-
istrative time bar that is triggered by service of that
complaint. It does not. Yet the Board, without explana-
tion, extended the background principle of Graves and
Bonneville to conclude that such a dismissal “nullifies the
effect of the service of the complaint.” It then relied on
this erroneous conclusion to “un-ring” § 315(b)’s time bar.
In effect, the Board relied on cases holding that the volun-
tary dismissal of an action or appeal does not toll a stat-
ute of limitations to conclude that the voluntary dismissal
without prejudice of a civil action does indefinitely toll
§ 315(b) and permitted an otherwise untimely IPR to
proceed, turning Bonneville and Graves on their head.
These cases do not delve into the meaning of the
terms “serve” or “complaint,” nor do they hold that the
voluntary, without prejudice dismissal of a civil action
transforms the ordinary meaning of the phrase “served
with a complaint” into something else. Although we
“presume that ‘Congress intended to retain the substance
of the common law’” when “a statute covers an issue
previously governed by the common law,” Kirtsaeng v.
John Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) (quot-
ing Samantar v. Yousuf, 560 U.S. 305, 320, n.13 (2010)),
where the statutory scheme is clear, we are not to “invent
an atextual explanation for Congress’s drafting choices,”
SAS, 138 S. Ct. at 1357.
Where, moreover, the proposed atextual explanation
is the alleged existence of a “background legal principle,”
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 23
that principle must both be firmly established and une-
quivocal before it can justify ignoring the plain text of the
statute. The background legal principle on which Peti-
tioners and the Director rely—that a “dismissal without
prejudice leaves the parties in the same legal position as
if the underlying complaint had never been filed,” for all
purposes, Appellees Suppl. Br. 3—is anything but une-
quivocal. A voluntary dismissal without prejudice only
leaves the dismissed action without legal effect for some
purposes; for many other purposes, the dismissed action
continues to have legal effect. Indeed, a voluntary dis-
missal without prejudice (1) may give rise to costs and
fees under Rule 11, see Wright & Miller, Federal Prac. &
Proc. Civ. §§ 1336, 2367; (2) forbids the filing of a subse-
quent action “based on or including the same claim” under
Rule 41(a)(1)(B); and (3) may establish the necessary case
or controversy for a later declaratory judgment action, see
TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d
1295, 1300 (Fed. Cir. 2016) (“After 3M voluntarily dis-
missed [its] suit due to an apparent personal jurisdiction
issue, TransWeb filed suit in New Jersey for declaratory
judgment.”). The Director itself acknowledges that the
filing of a patent infringement complaint, even if later
voluntarily dismissed, can play a role in proving the
defendant’s knowledge of the patent if charged with
willful infringement. Intervenor’s Second Suppl. Br. 8.
And counsel for Petitioners admitted at oral argument
that § 315(b) “appears to be unique relative to the other
cases cited in that it involves the act of service triggering
a limitations period,” suggesting that there is no pertinent
“background legal principle” that might alter our view of
the plain and ordinary meaning of the phrase “served
with a complaint.” Oral Arg. at 22:13–22:29, available at
http://oralarguments.cafc.uscourts.gov/default.aspx
?fl=2015-1242.mp3. 6
6 The background legal principle on which the Di-
24 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
For all of these reasons, we conclude that a defendant
served with a complaint as part of a civil action that is
voluntarily dismissed without prejudice remains “served”
with the “complaint.” This remains true even if that
action becomes a “nullity” for other purposes and even if
such service becomes legally irrelevant in a subsequent
court action.
B. Petitioners’ Alternative Arguments
Petitioners also argue that, even if the Board erred in
concluding that the voluntary dismissal of the district
court action rendered § 315(b) inapplicable because the
dismissal “nullifie[d] the effect of the service,” the institu-
tion of the IPR proceeding was nevertheless proper for
two independent reasons. Although CTC initially posited
that subsidiary factual questions precluded us from
deciding in the first instance the merits of Petitioners’
alternative arguments, Reply Br. 24, the parties (but not
the Director) now agree that no further fact-finding is
required. We therefore address these arguments in turn.
See Killip v. Office of Pers. Mgmt., 991 F.2d 1564, 1568–69
(Fed. Cir. 1993) (recognizing, in the context of a Merit
Systems Protection Board case, that we may “affirm the
Board on grounds other than those relied upon in render-
ing its decision, when upholding the Board’s decision does
not depend upon making a determination of fact not
previously made by the Board”).
rector and Petitioners rely cannot be as absolute as they
contend. We have little doubt that a contract clearly and
unambiguously providing for a payment to be due upon
service of a complaint would render such payment due,
and remaining due, upon service of a complaint that is
later dismissed without prejudice. A statutory bar that is
clearly and unambiguously triggered by service of a
complaint, such as § 315(b), is to the same effect.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 25
1. The Impact of Ex Parte Reexamination
Petitioners first contend that, because the claims of
the ’836 patent were materially changed during a subse-
quent ex parte reexamination, neither they nor any other
entity was served with a complaint alleging infringement
of this patent more than one year before the IPR petition
was filed. See Appellees Br. 8, 19–21. In particular, they
claim that, “[b]ecause each claim of the reexamined
patent substantively differs from the claims of the origi-
nal patent, the reexamined ’836 patent should be treated
as a new patent for purposes of § 315(b).” Id. at 21.
Petitioners are mistaken. “Unlike reissue, reexami-
nation does not result in the surrender of the original
patent and the issuance of a new patent.” Aspex Eyewear,
Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341–42
(Fed. Cir. 2012). Indeed, the relevant provision provides
that a reexamination certificate “incorporat[es] in the
patent any proposed amended or new claim determined to
be patentable.” 35 U.S.C. § 307(a) (emphasis added).
Petitioners’ reliance on 35 U.S.C. § 307(b) is unavailing.
That provision simply means that any amended or new
claim incorporated in a reexamined patent has the same
effect as that specified in 35 U.S.C. § 252 for a reissued
patent only with respect to so-called “intervening rights.”
In other words, § 307(b) statutorily protects the ability of
a “person or that person’s successors in business” to
continue to use, offer for sale, or sell anything protected
by the amended or new claims, provided such actions do
not infringe a valid claim of the reexamined patent that
was in the original patent. Compare 35 U.S.C. § 307(b),
with 35 U.S.C. § 252. Congress could have included in
any of 35 U.S.C. §§ 252, 307(b), or 315(b) language regard-
ing the effect of reexamination on the deadline to file an
IPR—it chose not to do so.
Petitioners’ emphasis on alleged differences in claim
scope misunderstands that § 315(b) does not speak in
26 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
terms of claims. Instead, the provision asks on what date
the petitioner, real party in interest, or privy of the peti-
tioner “is served with a complaint alleging infringement of
the patent,” making clear that the timeliness analysis is to
be made with reference to “the patent.” The Director
agrees with this conclusion. See Intervenor Second Suppl.
Br. 10 n.3.
Even if we were to hold that § 315(b) is ambiguous
with respect to whether the term “the patent” includes
reexamined patents having amended or new claims of
“substantively differ[ent]” scope than the original claims,
we would still reject Petitioners’ argument that the time
bar does not apply here. We have held that, “in the
absence of a clear showing that such a material difference
in fact exists in a disputed patentable reexamination
claim, it can be assumed that the reexamined claims will
be a subset of the original claims and that no new cause of
action will be created.” Senju Pharm. Co., Ltd. v. Apotex
Inc., 746 F.3d 1344, 1353 (Fed. Cir. 2014). We reached
this holding after asking whether “it is possible that a
reexamination could ever result in the issuance of new
patent claims that were so materially different from the
original patent claims as to create a new cause of action,
but at the same time were sufficiently narrow so as not to
violate the rule against reexamined claims being broader
than the original claims.” Id. Petitioners did not make
any showing in the IPR proceeding that the amended or
new claims of the ’836 patent are “materially different”
than the original claims, and we reject their unsupported
effort to do so for the first time on appeal.
For these reasons, we reject Petitioners’ effort to deem
the reexamined ’836 patent a “new patent” for § 315(b)
purposes.
2. The Relevance of “Non-Barred” Petitioners
Petitioners also submit that, even if § 315(b)’s time
bar applies to YP Interactive, it would not apply to Yel-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 27
lowPages.com, Oracle Corporation, or Oracle OTC Subsid-
iary LLC. According to Petitioners, because YellowPag-
es.com was not in privity with YP Interactive or its
predecessors “before at least 2008,” YellowPages.com
never had any opportunity, as a privy or otherwise, to
participate in the Inforocket Action or Keen Action, which
were voluntarily dismissed years earlier. Appellees Br.
24. They also submit that the Oracle entities were not
parties, real parties in interest, or privies of Ingenio with
respect to these earlier proceedings. In Petitioners’ view,
these arguments are relevant because, if these entities
had filed separate petitions, those petitions would not
have been time barred under § 315(b). Moreover, they
submit that, had YP Interactive filed a separate petition,
the Director could have joined its petition with the hypo-
thetical non-barred petitions pursuant to 35 U.S.C.
§ 315(c), rendering any error in the Board’s § 315(b)
determination vis-à-vis YP Interactive harmless.
We reject these efforts to separate YP Interactive
from the other Petitioners to save the petition as to the
latter. We need not scrutinize the legal relationships
between YellowPages.com, Oracle Corporation, and
Oracle OTC Subsidiary LLC, on the one hand, and Ingen-
io/YP Interactive, on the other, to address Petitioners’
arguments. These four entities declared themselves as
“the Petitioner” in their sole IPR petition, and certified
that Ingenio (now YP Interactive) is a “real party in
interest.” J.A. 345. In these circumstances, under cur-
rent law, Petitioners are properly treated as an undiffer-
entiated unit that filed an untimely petition.
Section 315(b) and the implementing regulation both
treat a petition as if there is a single petitioner for pur-
poses of the one-year rule. Section 315(b) bars institution
of an IPR where “the petition requesting the proceeding is
filed more than 1 year after the date on which the peti-
tioner, real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of the
28 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
patent.” 35 U.S.C. § 315(b) (emphases added). The
governing regulation, which largely parrots § 315(b), is to
the same effect:
[a] person who is not the owner of a patent may
file with the [Patent & Trademark Office] a peti-
tion to institute an [IPR] of the patent unless . . .
[t]he petition requesting the proceeding is filed
more than one year after the date on which the
petitioner, the petitioner’s real party-in-interest,
or a privy of the petitioner is served with a com-
plaint alleging infringement of the patent.
37 C.F.R. § 42.101(b) (emphases added). Both the statute
and the regulation ask only two questions: (1) when was
“the petition” filed; and (2) when was “the petitioner,” the
petitioner’s real party in interest, or a privy of the peti-
tioner served with a complaint? They do not differentiate
between multiple petitioners.
We read section 315(b), as implemented by the exist-
ing regulation, to apply petition-by-petition, not petition-
er-by-petitioner, with the collection of petitioners on a
single petition treated as a unit indistinguishable from
each member of that collection. This reading of the statu-
tory and regulatory reference to the singular “the peti-
tioner” for the one-year time bar is supported by the fact
that, in the same statutory scheme, Congress expressly
recognized the possibility of multiple petitioners and
permitted separate treatment of them for different pur-
poses. See, e.g., 35 U.S.C. § 317(a) (addressing continua-
tion of IPR as to some petitioners after dismissal of
others). In concluding that this is the best reading of the
statute and its parroting regulation, we are not deciding
whether the statute is ambiguous and could permissibly
be implemented through a different regulation providing
for separate treatment of multiple petitioners in assessing
timeliness under the one-year time bar—a distinct ques-
tion that would arise if the Director newly adopted such a
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 29
regulation. See Nat’l Cable & Telecomms. Ass’n v. Brand
X Internet Servs., 545 U.S. 967, 982–85 (2005) (holding
that, where a court determines the “best reading” of a
provision without finding an “unambiguous” meaning, the
Chevron step one question is not answered, and an agency
having Chevron authority may adopt a different statutory
position and have it tested under the Chevron frame-
work). 7
Under the unitary-entity interpretation of section
315(b) and its implementing regulation, the petition at
issue here was untimely. “The petitioner” (all four peti-
tioners considered collectively) filed the single petition
more than one year after YP Interactive (operating under
the name Keen), which is itself both “the petitioner” and a
real party in interest, was served with a complaint alleg-
ing infringement of the ’836 patent. The Director was
therefore barred from instituting this IPR based on this
petition.
Because this IPR was not instituted properly, the fi-
nal written decision was entered contrary to a statutory
command and must be set aside. Petitioners cite nothing
7 Were the Director or Board merely to interpret
(rather than change) the current regulation to allow
separate treatment of co-petitioners for § 315(b) purposes,
that interpretation would not be owed deference in light
of our interpretation of the existing regulation, given the
statute-parroting nature of this regulation. See Gonzales
v. Oregon, 546 U.S. 243, 257 (2006) (ruling that “the
existence of a parroting regulation does not change the
fact that the question here is not the meaning of the
regulation but the meaning of the statute,” and “[a]n
agency does not acquire special authority to interpret its
own words when, instead of using its expertise and expe-
rience to formulate a regulation, it has elected merely to
paraphrase the statutory language”).
30 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
to support a conclusion that the error in instituting on
this petition could be deemed harmless just because a
different petition might have been filed that would have
permitted institution of a different IPR to review the
same patent claims. Indeed, that circumstance would
often be the case, since any “person who is not the owner
of a patent” may file a petition for an IPR. 35 U.S.C.
§ 311(a). Accordingly, what matters here is whether this
petition provided a lawful basis upon which to institute
this IPR. Cf. SAS, 138 S. Ct. at 1358 n.* (explaining that
the possible existence of a different path to the same
agency result—there, partial institution—did not validate
the path actually followed). Section 315(b), as imple-
mented by the current regulation, is best understood to
answer that question no.
Petitioners’ additional reliance on §§ 315(c) and 317(a)
in an effort to save this petition as to some petitioners
does not persuade. Petitioners’ § 315(c) theory would
seem to be that the petition may be viewed as having been
filed solely by the Oracle and YellowPages.com petitioners
and merely joined by YP Interactive, so that the timeli-
ness determination could disregard YP Interactive.
Petitioners’ § 317(a) theory would seem to be that YP
Interactive might be dropped from the IPR, leaving only
the other petitioners, as to which the Board may continue.
As already noted, however, the availability of a path not
taken does not validate the path actually taken. SAS, 138
S. Ct. at 1358 n.*. Although § 315(b) provides that its
time bar “shall not apply to a request for joinder under
subsection (c),” it is undisputed that no such “request for
joinder” was made in this case. Indeed, the regulation
governing joinder requires that “[a]ny request for joinder
must be filed . . . no later than one month after the insti-
tution date of any [IPR] for which joinder is requested.”
37 C.F.R. § 42.122(b) (emphasis added). This one-month
deadline, which the Director imposed by regulation after
notice and comment, Changes to Implement Inter Partes
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 31
Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Pa-
tents, 77 Fed. Reg. 48,680–01, 48,681, 2012 WL 3276880
(Aug. 14, 2012), has long since passed. 8
Similarly, while § 317(a) permits the termination of
IPR proceedings that have been instituted “with respect
to any petitioner”—and even permits the Office to “pro-
ceed to a final written decision” where “no petitioner
remains in the inter partes review”—such termination
can only occur “upon the joint request of the petitioner
and the patent owner unless the Office has decided the
merits of the proceeding before the request for termina-
tion is filed.” No joint request for termination was made
in this case. The fact that Congress afforded petitioners
the opportunity to settle with patent owners after institu-
tion does not address the predicate question of whether
the IPR was properly instituted in the first place.
Further support for our reading of § 315(b) is found in
decisions of the Board’s own panels. In Terremark North
8 We recognize that a number of Board panels have
constrained joinder in apparent recognition of a tension
between §§ 315(b) and (c). Where an otherwise time-
barred petitioner seeks to join an IPR under § 315(c),
Board panels consistently have granted such requests
only under limiting conditions, such as (1) that the party
seeking joinder “maintain a secondary role in the proceed-
ing,” Pfizer, Inc. v. Biogen, Inc., No. IPR2017-01115, 2017
WL 3081981 (P.T.A.B. July 18, 2017), Paper No. 13; or
(2) that they appear in the IPR proceeding and attend
depositions and oral hearing, but not file papers, engage
in discovery, or participate in any deposition or oral
hearing, Ion Geophysical Corp. v. WesternGeco LLC, No.
IPR2015-00565, 2015 WL 1906173, at *4 (P.T.A.B. Apr.
23, 2015), Paper No. 14. There was no such limitation on
YP Interactive’s participation in this IPR.
32 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
America LLC v. Joao Control & Monitoring Systems, LLC,
No. IPR2015-01482, 2015 Pat. App. LEXIS 12695
(P.T.A.B. Dec. 28, 2015), Paper No. 10, the panel con-
fronted a situation involving multiple petitioners seeking
institution of an IPR, in which some but not all of the
petitioners were time-barred. In that case, CoxCom was
the only petitioner that was not served with a complaint
more than one year before the IPR petition was filed.
2015 Pat. App. LEXIS 12695, at *19. The petitioners
argued that, because CoxCom was not time-barred,
§ 315(b) should not apply to the jointly filed IPR petition.
Id. The Board rejected this argument based on the rea-
soning set forth in an earlier decision, PNC Bank, N.A. v.
Maxim Integrated Products, Inc., No. CBM2014-00041,
2014 WL 2536982, at *2 (P.T.A.B. June 3, 2014), Paper
No. 19, in which the Board denied institution of CBM
review where PNC Bank was “both a petitioner . . . and a
real party in interest,” and previously filed a civil action
challenging the validity of claims of the challenged pa-
tent. Id. at *2. This set of facts resulted in institution
being barred under § 325(a)(1), notwithstanding that
other named petitioners were not barred by this provi-
sion. Id. The Board held that, as a result, Ҥ 325(a)(1)
precludes institution of a review in this proceeding,”
notwithstanding that other named petitioners were not
barred by this provision. Id.
Notably, the Board also considered, but rejected, the
petitioners’ argument that § 325(a)(1) would not bar
institution if PNC were to “forswear all further control
and participation in this case” or have adverse judgment
entered against it, permitting the other petitioners to
proceed without its involvement. 9 Id. The Board rea-
9 37 C.F.R. § 42.73(b) provides that “[a] party may
request judgment against itself at any time during a
proceeding.”
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 33
soned that, because “PNC has already exerted substantial
control over the case” and because “granting PNC’s re-
quest for adverse judgment would not obviate the control
that PNC has already exerted in this proceeding by its
filing of the Petition,” ruling upon PNC’s motion for
judgment “would not alter [its] conclusion that § 325(a)(1)
precludes institution of a CBM review as requested in the
Petition.” Id. 10
Turning back to Terremark, the Board there wrote
that the non-CoxCom petitioners, like PNC, “already have
exerted substantial control over the case by participating
in filing the Petition, appointing counsel, etc.,” and there-
fore “[t]he presence of CoxCom . . . does not remove the
statutory bar.” 2015 Pat. App. LEXIS 12695, at *21.
Here, too, “removing” Ingenio/YP Interactive from the IPR
would not alter the fact that it has participated for several
years in this proceeding in violation of § 315(b). Appel-
lees’ unsupported assertion that there is nothing about
the relationship between these parties that indicates
control over the other joint petitioners by Ingenio/YP
Interactive does not change our view. Where the parties
choose to be joint petitioners in a single petition, the
petition must—under current law—be assessed in light of
that choice.
In conclusion, to the extent Petitioners rely on
§§ 315(b), 315(c), and 317(a) to argue that the Board’s
10 At oral argument, counsel for the Director was
unable to articulate why the fact that PNC involved CBM
review, rather than an IPR, was relevant, given that the
applicable statutes are similarly worded. See Oral Arg. at
33:45–33:55. Nor did counsel for the Director or for
Petitioners explain why additional fact-finding (or re-
mand) would be necessary on the issue of Ingenio/YP
Interactive’s control over or active involvement in this
IPR proceeding.
34 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
institution of IPR proceedings in this case was “harmless,”
we have made clear that “[t]he timely filing of a petition
under § 315(b) is a condition precedent to the Director’s
authority to act”—indeed, it “sets limits on the Director’s
statutory authority to institute.” Wi-Fi One, 878 F.3d at
1374. There is nothing “harmless” about the institution of
this IPR in excess of statutory authority and contrary to
“the law’s demands.” SAS, 138 S. Ct. at 1359.
Finally, we conclude that a remand for consideration
of this multi-petitioner issue is not warranted. Neither
Petitioners nor CTC seek a remand for further Board
proceedings. That fact is significant not only because of
the IPR regime’s general policy of expedition, see 35
U.S.C. §§ 314(b), 316(a)(11), but also because the IPR
regime creates “a party-directed, adversarial process”
rather than an “agency-led, inquisitorial process,” SAS,
138 S. Ct. at 1355. After all, “it’s the petitioner, not the
Director, who gets to define the contours of the proceed-
ing.” Id.
Only the Director suggests a remand on this issue.
But the Director identifies no material facts requiring
further development on remand. And, the Director has
not explained exactly what the Board might wish to, or be
able to, consider on remand. The issue in this case thus
raises only a legal question, and under current law,
including the current regulation, the answer to the legal
question is already determined in this opinion. The Board
must follow the governing regulations, see, e.g., Creditor v.
Shulkin, 877 F.3d 1040, 1047 (Fed. Cir. 2017), and it must
follow our binding interpretation where, because the
regulation merely parrots the statute, deference is not
owed even to the Director’s interpretation of the regula-
tion, much less to a Board panel’s interpretation, see
supra n.6 (quoting Gonzales v. Oregon). See In re Lovin,
652 F.3d 1349, 1353–54 (Fed. Cir. 2011) (discussing
Brand X and agency’s duty to follow judicial interpreta-
tion of regulations generally, but deferring to intervening
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 35
change of regulation). It is conceivable that the Director
might promulgate a new regulation during remand—
though the Director has not even taken a position on this
issue, much less suggested that a regulation is on the
horizon, and there would be a question about retroactive
application of any such changed regulation. See Bowen v.
Georgetown Univ. Hosp., 488 U.S. 204, 208–09 (1988). We
know of no authority or sound basis to support a remand
to allow for a possible intervening change of law, especial-
ly in the context of a statute prizing expedition. We
therefore vacate the Board’s Final Written Decision and
remand so the Board can dismiss this IPR proceeding.
We leave Petitioners to litigate the merits of the ’836
patent in the long-stayed district court case, where there
will be no estoppel bar to such litigation, as CTC has
expressly conceded.
III. CONCLUSION
For the foregoing reasons, we vacate the Board’s Final
Written Decision and remand for the Board to dismiss
IPR2013-00312.
VACATED AND REMANDED
COSTS
Costs to Click-to-Call Technologies, LP.
United States Court of Appeals
for the Federal Circuit
______________________
CLICK-TO-CALL TECHNOLOGIES, LP,
Appellant
v.
INGENIO, INC., YELLOWPAGES.COM, LLC,
Appellees
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2015-1242
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00312.
______________________
TARANTO, Circuit Judge, concurring.
I join the panel’s opinion in full. Here I add a few
thoughts on why I am unpersuaded by the key rationales
set forth in the dissent from the court’s en banc holding.
The en banc issue is governed by statutory language
that, as the panel opinion explains, is plain in its mean-
ing. In September 2001, Ingenio (then called Keen) was
served with a complaint asserting that it infringed the
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
’836 patent, and there is no dispute about the content of
the complaint or the propriety of service. In 2013, Ingenio
filed a petition for an inter partes review (IPR)—far more
than one year after the 2001 service. With respect to the
en banc issue, those facts make § 315(b)’s time bar appli-
cable by its plain terms. Nothing in that language makes
relevant whether the 2001 complaint was eventually
dismissed voluntarily without prejudice; the fact that
service occurred does not change when the complaint (or
action) is later dismissed, whether voluntarily or other-
wise, and whether with or without prejudice to the right
to file another action on the same claims. No other provi-
sion of the statute calls for a different conclusion. Indeed,
whereas Congress in § 315(a)(2)(C) specifically addressed
the effect of a voluntary dismissal of an IPR petitioner’s
own district court complaint challenging a patent, Con-
gress left § 315(b) unmodified by any language addressed
to dismissals of patentees’ complaints.
This is not a case where the scope of a word or phrase
in the statute, considered alone and in context, “may be
open to competing interpretations” as in Kasten v. Saint-
Gobain Performance Plastics Corp., 563 U.S. 1, 7 (2011),
and Dolan v. U.S. Postal Service, 546 U.S. 481, 486
(2006). In Kasten, the Court addressed a genuine textual
issue about whether the phrase “filed any complaint” in
29 U.S.C. § 215(a)(3) encompasses an oral complaint or
instead requires a writing. 563 U.S. at 7. In Dolan, the
Court addressed a genuine textual issue about whether
the phrase “negligent transmission” of the mail, when
read in the context of the statute, encompassed what
might be the last act of the transmission—a negligent
placement of a package on a porch. 546 U.S. at 486.
Numerous authorities state that statutory language
as plain in its meaning as to an issue as is § 315(b), when
read alone and in context, is controlling on that issue,
subject to very narrow exceptions. See, e.g., SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1357 (2018) (“We need not and
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3
will not invent an atextual explanation for Congress’s
drafting choices when the statute’s own terms supply an
answer. See United States v. Ron Pair Enterprises, Inc.,
489 U.S. 235, 240–41 (1989) (‘[A]s long as the statutory
scheme is coherent and consistent, there generally is no
need for a court to inquire beyond the plain language of
the statute’).” (alteration in original) (unofficial reporter
citations omitted)); Cyan, Inc. v. Beaver Cty. Employees
Ret. Fund, 138 S. Ct. 1061, 1072 (2018) (“Even assuming
clear text can ever give way to purpose, [the Director]
would need some monster arguments on this score to
create doubts about [§ 315(b)’s] meaning.”); Star Athletica,
L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010
(2017); Sebelius v. Cloer, 569 U.S. 369, 381 (2013) (“when
[a] statute’s language is plain, the sole function of the
courts—at least where the disposition required by the text
is not absurd—is to enforce it according to its terms”)
(alteration in original) (internal quotation marks omit-
ted); Gross v. FBL Fin. Servs., Inc., 557 U.S. 167, 175
(2009); Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450
(2002); Board of Governors of Fed. Reserve Sys. v. Dimen-
sion Fin. Corp., 474 U.S. 361, 368 (1986).
I see no basis strong enough to justify the proposed
contrary-to-text result urged by the Director—that
§ 315(b) becomes inapplicable when the complaint whose
service would otherwise bar the IPR was dismissed volun-
tarily without prejudice under Rule 41(a) of the Federal
Rules of Civil Procedure. Respecting § 315(b)’s plain
meaning leaves the statutory scheme “coherent and
consistent,” Barnhart, 534 U.S. at 450; Ron Pair Enters.,
489 U.S. at 240, and without “absurd” results, Sebelius,
569 U.S. at 381. I therefore agree that the Director’s
position must be rejected and the task of making any
advisable adjustments left to Congress.
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
I
The principal rationale offered to support the Direc-
tor’s position is that a background rule of law exists that
Congress must have intended to modify § 315(b)’s plain
meaning. The asserted “rule” is that “[t]he effect of a
voluntary dismissal without prejudice pursuant to Rule
41(a) is to render the proceedings a nullity and leave the
parties as if the action had never been brought.” Bonne-
ville Assocs., Ltd. P’ship v. Barram, 165 F.3d 1360, 1364
(Fed. Cir. 1999) (Bonneville II) (alteration in original)
(internal quotation marks omitted). This court has also
stated the point in terms seemingly applicable even to an
involuntary dismissal without prejudice. Graves v. Prin-
cipi, 294 F.3d 1350, 1356–57 (Fed. Cir. 2002) (“[A]s a
matter of law, once his appeal was dismissed—for what-
ever purpose and whether with or without prejudice—it
was as if the appeal had never been filed. . . . The dismis-
sal of an action without prejudice leaves the parties as
though the action had never been brought.”). The Direc-
tor invokes those formulations as providing a “solidly
grounded rule” of civil procedure, Greenlaw v. United
States, 554 U.S. 237, 250 (2008), that Congress must have
understood would override the contrary plain meaning of
§ 315(b) by nullifying the time-bar effect of service of a
complaint if that complaint is later voluntarily dismissed
without prejudice.
But this court has already observed that the cases ar-
ticulating an “as if never brought” principle do not “ad-
dress § 315(b) or whether service of a complaint can be
nullified.” Shaw Indus. Grp., Inc. v. Automated Creel
Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016). And even
aside from the distinction between nullifying the effect of
a complaint’s service and nullifying the effect of a com-
plaint’s filing, the case law invoked by the Director (and
the dissent) does not justify overriding the plain meaning
of the § 315(b) bar.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5
The fundamental problem with the Director’s position
is that it takes judicial language used as explanation in
particular contexts and mistakenly treats the language as
establishing a rule sweeping enough to apply to the
§ 315(b) context. That is a mistake here because the
federal courts do not always treat a voluntary, without-
prejudice dismissal as leaving the dismissed action with-
out legal effect. Only for some purposes does a voluntary,
without-prejudice dismissal leave the dismissed action
without legal effect, as if it had never been brought; for
other purposes, the dismissed action continues to have
legal effect. And the legal effect at issue for § 315(b)—
triggering the start of a clock for filing an action—has
never been in the first category. The Director has noted
that he knows of no case holding that a voluntary, with-
out-prejudice dismissal of a complaint nullifies the statu-
tory effect of the filing of that complaint (or, here, of its
service) of starting a clock on initiating another proceed-
ing. Oral Arg. at 30:08–31:20. We cannot soundly infer a
nontextual exception to § 315(b)’s plain-meaning applica-
tion based on a nullification principle that has not been
applied, and certainly is not established, in the clock-
starting situation present here.
A
Some of this court’s and other courts’ cases deny cer-
tain legal effects to the filing of a complaint later volun-
tarily dismissed without prejudice. One such effect
concerns what is needed to satisfy (or toll) a time limit on
initiating an action or appeal. The rationale is simple. A
particular case or appeal must itself be initiated within a
prescribed time. A filing that initiated an earlier case or
appeal, if voluntarily dismissed without prejudice, does
not meet, or toll the running of the clock for meeting, the
time limit for filing the document that initiates the later
(even substantively identical) case.
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
This court so held in Bonneville II, a government-
contract dispute in which Bonneville timely appealed to
the General Services Administration Board of Contract
Appeals; voluntarily dismissed that appeal to pursue
relief in the Claims Court instead; was denied a forum for
lack of jurisdiction there (as this court held in Bonneville
Assocs. v. United States, 43 F.3d 649, 655 (Fed. Cir. 1994)
(Bonneville I)); and then returned to the Board by filing a
new appeal. This court in Bonneville II held that the new
appeal was untimely because the earlier Board appeal did
not count to meet the applicable time limit for an appeal
to the Board. 165 F.3d at 1363–65. In the same vein, we
held in Graves that the time limit for appealing to the
Veterans Court, 38 U.S.C. § 7266(a), had to be met by the
notice of appeal initiating that appeal, and could not be
met by an earlier, voluntarily dismissed notice of appeal
from the same Board of Veterans’ Appeals decision. 294
F.3d at 1355–56. Other circuits’ decisions are to the same
effect in not allowing the satisfaction, or tolling, of a
limitations period by an earlier filing that is voluntarily
dismissed without prejudice. 1
1 See, e.g., Jorge v. Rumsfeld, 404 F.3d 556, 563 (1st
Cir. 2005) (“[A] prescriptive period is not tolled by filing a
complaint that is subsequently dismissed without preju-
dice.”); Garfield v. J.C. Nichols Real Estate, 57 F.3d 662,
666 (8th Cir. 1995) (“A dismissal without prejudice does
not toll a statute of limitations.”); Beck v. Caterpillar Inc.,
50 F.3d 405, 407–08 (7th Cir. 1995) (holding that the
statute of limitations was not tolled and continued to run
when plaintiff voluntarily dismissed his first suit under
Rule 41(a)); Simons v. Sw. Petro-Chem, Inc., 28 F.3d 1029,
1030 (10th Cir. 1994) (holding that the plaintiff’s Title VII
claim was not timely filed because her earlier case that
was voluntarily dismissed without prejudice under Rule
41(a)(2) did not toll the statutory limitations period);
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7
But the § 315(b) en banc issue does not involve the le-
gal effect of the type at issue in the cases just described.
A legal effect of that type would be at issue if an IPR
petitioner filed a petition within the one-year period,
voluntarily dismissed the petition without prejudice, then
filed another IPR petition outside the period: the earlier
(timely) petition would be disregarded in assessing the
timeliness of the later petition. Here, there were no
successive IPR petitions, and the issue is not whether a
Robinson v. Willow Glen Acad., 895 F.2d 1168, 1169 (7th
Cir. 1990) (holding that a tolling provision under Wiscon-
sin state law that was tied to the “commencement of an
action” did not apply if that action was then voluntarily
dismissed under Rule 41(a)(2)); Davis v. Smith’s Transfer,
Inc., 841 F.2d 139, 140 (6th Cir. 1988) (per curiam) (no
tolling of statute of limitations based on earlier suit
dismissed under Rule 41(a)); Dupree v. Jefferson, 666 F.2d
606, 610–11 (D.C. Cir. 1981) (taking note of the “rule”
“that a statute of limitations is not tolled during pendency
of an action voluntarily dismissed without prejudice”);
Curtis v. United Transp. Union, 648 F.2d 492, 495 (8th
Cir. 1981) (stating “the rule that the entry of a voluntary
dismissal without prejudice leaves the action as if suit
had never been brought for purposes of the statute of
limitations”); Humphreys v. United States, 272 F.2d 411,
412 (9th Cir. 1959) (holding that a voluntary dismissal
under Rule 41(a)(2) does not toll the statute of limitations
under the Federal Tort Claims Act).
See also Willard v. Wood, 164 U.S. 502, 523 (1896)
(noting “[t]he general rule in respect of limitations . . .
that if . . . [an] action abates or is dismissed, and, during
the pendency of the action, the limitation runs, the reme-
dy is barred”); 8 Moore’s Fed. Prac. Civ. § 41.33(6)(d)
(2018); 9 Charles A. Wright & Arthur R. Miller, Fed. Prac.
& Proc. Civ. § 2367 (3d ed. 2018).
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
voluntarily dismissed filing could be treated as satisfying
the one-year rule.
Rather, the issue is whether the 2001 service of a
complaint asserting that Ingenio infringed the ’836 patent
should be treated as losing its clock-starting legal effect
for filing an IPR before the Board, just because the
properly served complaint was later voluntarily dismissed
without prejudice. None of the just-cited cases involved
that legal effect. Indeed, while those cases insist on
enforcing a time limit on initiating legal proceedings for
the same or similar claims brought by the same party in
(usually) the same forum, the Director’s position here
would have the opposite effect of nullifying a time limit—
and doing so based on the filing of different claims (inva-
lidity, not infringement) by a different party (accused
infringer, not patent owner) in a different forum (Board,
not district court). In multiple ways, then, the main line
of authority invoking the “as if never brought” rationale
does not apply to the circumstances addressed by § 315(b).
The clock-starting effect that is at issue here is also
different from certain other legal effects that are denied to
a complaint once it has been voluntarily dismissed with-
out prejudice. Notably, once a complaint has been volun-
tarily dismissed without prejudice, most further action in
the very case initiated by that complaint is neither re-
quired nor permitted. 2 Relatedly, as indicated by the
2 See, e.g., In re Matthews, 395 F.3d 477, 480 (4th
Cir. 2005) (“[A]fter an action is voluntarily dismissed, the
court lacks authority to conduct further proceedings on
the merits.”); Williams v. Clarke, 82 F.3d 270, 272–73 (8th
Cir. 1996) (holding that voluntary dismissal under Rule
41(a)(1) applies to habeas corpus petitions filed under 28
U.S.C. § 2254 and strips the appellate court of jurisdiction
over the action); Norman v. Arkansas Dep’t of Educ., 79
F.3d 748, 751 (8th Cir. 1996) (holding that after the
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9
“without prejudice” language, invocation of issue or claim
preclusion is generally not available based on the action
that was voluntarily dismissed without prejudice. 3 Those
legal effects are not what is at stake here.
district court dismissed the case without prejudice, it
“lacked jurisdiction to take any further action in it, in-
cluding dismissing the case with prejudice”); Smith v.
Dowden, 47 F.3d 940, 943 (8th Cir. 1995) (holding that
the voluntary dismissal of a claim in the bankruptcy court
under Fed. R. Bankr. P. 3006 strips the bankruptcy court
of its equitable jurisdiction and restores the dismissed
party’s jury-trial right); LeCompte v. Mr. Chip, Inc., 528
F.2d 601, 603 (5th Cir. 1976) (explaining that a plaintiff
generally cannot appeal a voluntary dismissal without
prejudice under Rule 41(a)(2), but may appeal if the order
has the effect of being a dismissal with prejudice).
3 See, e.g., Harvey Specialty & Supply, Inc. v. Anson
Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005)
(holding that a voluntary dismissal under Rule 41(a)(1)
does not result in a final judgment that could support
collateral estoppel or the relitigation exception under the
Anti-Injunction Act); AVX Corp. v. Cabot Corp., 424 F.3d
28, 32–34 (1st Cir. 2005) (holding that claim preclusion
did not apply to claims that had been voluntarily dis-
missed under Rule 41(a)(1)(ii) by joint stipulation of the
parties); In re Corey, 892 F.2d 829, 835 (9th Cir. 1989)
(holding that a voluntary dismissal without prejudice “has
no res judicata effect”); In re Piper Aircraft Distrib. Sys.
Antitrust Litig., 551 F.2d 213, 219–20 (8th Cir. 1977)
(holding that the district court erred by giving preclusive
effect to the denial of class action status under Rule 23(c)
in another case that had been subsequently dismissed
without prejudice pursuant to Rule 41(a)(1)(i), because
there was no “valid and final judgment” necessary for
“collateral estoppel”). Cf. Navellier v. Sletten, 262 F.3d
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
B
As just set forth, although a voluntary, without-
prejudice dismissal has been held to eliminate some legal
effects of a dismissed action, the clock-starting effect of
§ 315(b) is not among them. Nor does the law recognize a
universal nullification rule that such a dismissal elimi-
nates all legal effects of a dismissed action. To the con-
trary, in various circumstances, such a dismissed action
has continuing legal effects, i.e., is not treated as if it had
never been brought.
For example, Rule 41 itself makes clear that a first
voluntary dismissal has an effect in forbidding a without-
prejudice dismissal of a second action “based on or includ-
ing the same claim.” Fed. R. Civ. P. 41(a)(1)(B). Rule 41
adds that a first such dismissal may give rise to a court-
imposed requirement that the costs of the first action be
paid as a precondition to litigation of a second action
based on or including the same claim against the same
defendant. Fed. R. Civ. P. 41(d). And a voluntary, with-
out-prejudice dismissal may give rise to costs and fees
under Rule 11. See Wright & Miller, §§ 1336, 2367.
Continuing effects are also evident in sources outside
the Federal Rules of Civil Procedure. For example, as the
Director appears to acknowledge, the filing of a patent
infringement complaint, even if later voluntarily dis-
missed, can play a role, even a definitive role, in proving
the defendant’s knowledge of the patent if the defendant
is later charged with willful infringement. Intervenor’s
Second Supp. Br. 8 (“[D]ismissing a complaint without
prejudice could have ongoing legal consequences because,
923, 938 (9th Cir. 2001) (finding no abuse of discretion in
district court’s voluntary dismissal of claims under Rule
41(a)(2) and holding that the court did not have to inform
the jury that the dismissed claims might later be refiled).
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11
for example, the notice turns a defendant’s unwitting
actions into intentional ones.”); see also Fed. R. Evid.
201(b)(2) (allowing judicial notice of facts from “sources
whose accuracy cannot reasonably be questioned”). And
as the panel opinion notes, the filing of such a complaint,
though later voluntarily dismissed, has formed the basis
for declaratory judgment jurisdiction where the initial
defendant later brings a validity challenge: the initial
action by the patentee may establish the necessary case
or controversy for the later action. See TransWeb, LLC v.
3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir.
2016).
Another continuing effect is evident in the context of
28 U.S.C. § 1500. The Supreme Court in Keene v. United
States addressed the § 1500 bar on the Court of Federal
Claims’s jurisdiction over a case when, at the time of its
filing, a sufficiently related action is pending in another
court, and the Court held that the bar continues to apply
even after the other court action has been voluntarily
dismissed without prejudice. 508 U.S. 200, 203, 207–09
(1993); see Brief for the United States, Keene Corp. v.
United States, No. 92-166, 1993 WL 290106, at *3 (filed
Jan. 25, 1993). The other court action, though voluntarily
dismissed without prejudice, is not treated in that context
as if it had never been brought.
Similarly, in Flowers v. Secretary of the Department of
Health and Human Services, which involved a Vaccine
Act provision barring certain benefits if a plaintiff had
certain related actions pending, this court held that the
bar applied even after the other actions were voluntarily
dismissed without prejudice. 49 F.3d 1558, 1560–62 (Fed.
Cir. 1995). The earlier actions were not treated as if
never brought. And in Bonneville I, this court held that
the Claims Court lacked jurisdiction over Bonneville’s
claim because Bonneville had initially brought an appeal
to the Board and had therefore elected that forum—even
though Bonneville had later obtained a voluntary, with-
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
out-prejudice dismissal of its Board appeal. 43 F.3d at
651, 653–55. The earlier action, though it had been
voluntarily dismissed without prejudice, blocked the
Claims Court case—the opposite of being treated as if it
had never been brought.
C
In short, the background law on the nullification ef-
fect of a voluntary, without-prejudice dismissal is a mixed
bag, and it does not state a near-monolithic rule with only
aberrational exceptions. Some effects are nullified, some
not. More particularly, it is anything but established—in
fact, the Director has acknowledged the absence of any
authority holding—that such a dismissal nullifies the
legal effect at issue here: a clock-starting effect prescribed
by statute. In these circumstances, I conclude, there is no
basis in the asserted background law for overriding the
plain meaning of § 315(b).
II
When the Director moves beyond his argument about
background law, he presents nothing to indicate a clear
congressional intent contrary to the plain meaning.
Legislative history indications of congressional policy at
most establish that § 315(b) is generally based on an
assessment of the period suitable for a formally accused
infringer (or privies or real parties in interest) to shape
any IPR petition after formally receiving notice of a
patentee’s charges of infringement, with the patentee and
district courts thereafter given repose against IPR peti-
tions filed by that accused infringer (or privies or real
parties in interest). See 157 Cong. Rec. S5429 (daily ed.
Sept. 8, 2011) (statement of Sen. Kyl) (stating that the
“section 315(b) deadline afford[s] defendants a reasonable
opportunity to identify and understand the patent claims
that are relevant to the litigation”); H.R. Rep. No. 112-98,
at 48 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 78 (ex-
pressing concern about use of IPR proceedings as a “tool[]
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13
for harassment” by “repeated litigation and administra-
tive attacks”). Those policies do nothing to undermine the
plain meaning of the text: a bright-line rule of one year
from service is a sensible prescription for serving those
purposes. 4
The dissent suggests that, when an action is voluntar-
ily dismissed without prejudice, “the accused infringer is
led to think that the controversy has dissipated” and “the
notice function of the filing is effectively eliminated.”
Dissent at 11. Those suggestions, even if accepted on
their own terms, do not establish the kind of incoherence
or absurdity that would support adoption of an exception
for voluntary dismissals without prejudice. Congress can
sensibly choose a bright-line rule based on underlying
notice concerns. In any event, the suggestions are, I
think, weak on their own terms. The point of a dismissal
“without prejudice” is to preserve, rather than eliminate,
the ability of the plaintiff to sue the defendant again on
the same claim. No defendant, if not given something
more, such as a covenant not to sue, can reasonably
understand a without-prejudice dismissal to give repose
as to future assertion of that very patent; no defendant in
that situation is entitled “to think that the controversy
4 Several legislators opposed § 315(b) in the House
bill for exactly that reason, explaining that § 315(b)’s
bright-line “12-month deadline” is not “tied to substantive
progress in patent litigation, such as the entry of an order
by the district court construing the relevant patent
claims,” and arguing that a strict 12-month deadline is
“arbitrary” as it “does not account for the complexity of
many patent cases that can encompass dozens of patents
and defendants and hundreds of separate patent claims.”
H.R. Rep. No. 112-98, at 164–65. A proposed amendment
offered by one of those legislators to tie the deadline to
entry of a claim construction order failed. Id. at 58.
14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
has dissipated.” Indeed, as already noted, the bringing of
an infringement suit, even if later voluntarily dismissed,
can play a role, even a decisive role, in establishing the
case or controversy needed for the once-accused infringer
to bring an action for a declaratory judgment.
The dissent and the Director (in the Luminara case to
which the dissent refers) suggest another reason that the
statutory purpose requires an exception to § 315(b) for
service of a complaint that is later voluntarily dismissed
without prejudice. Specifically, they suggest a possibility
of manipulative abuse if § 315(b) is applied in accordance
with its terms, without such an exception. Dissent at 12;
Oral Arg. at 19:45–20:22, Luminara Worldwide, LLC v.
Iancu, Nos. 17-1629, -1631, -1633 (Fed Cir. Apr. 5, 2018).
The scenario of abuse is this: A patent owner could sue
many possible infringers, serve them with complaints,
and then quickly and unilaterally dismiss all of those
cases under Rule 41(a)(1)(A)(i), which applies before the
filing of an answer or motion for summary judgment.
Such a unilateral dismissal would start the one-year IPR
clock for all such defendants under § 315(b), were there no
exception. After the year had elapsed without any of
those defendants filing an IPR challenge, the patent
owner could again sue any of them on the same patent,
without fear of an IPR initiation by any of them (or their
privies or real parties in interest), though others could file
IPR challenges.
This hypothesized scenario cannot support the sug-
gested inference that Congress, to avoid such abuse, must
have silently prescribed an exception to § 315(b) for
voluntary dismissals without prejudice. Notably, the
scenario is purely hypothetical, as far as we know. We
have been pointed to no evidence that any patent owners
have behaved in the way posited.
“[T]he Court rarely invokes [an absurd results] test to
override unambiguous legislation.” Barnhart v. Sigmon
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15
Coal Co., Inc., 534 U.S. 438, 459 (2002). The stringency of
this test for overcoming plain meaning reflects a strong
deference to the legislature as the instiution for identify-
ing and curing defects in laws. See SAS, 138 S. Ct. at
1358 (“whatever its virtues or vices, Congress’s prescribed
policy here is clear”); Antonin Scalia & Bryan A. Garner,
Reading Law: The Interpretation of Legal Texts 237–39
(2012) (explaining that “error-correction for absurdity can
be a slippery slope” and that the absurdity doctrine
should accordingly be narrow). I do not think that the
merely hypothetical possibility of the abuse posited here
makes the bright-line rule in § 315(b) absurd or incoher-
ent. Cf. Silva-Hernandez v. U.S. Bureau of Citizenship &
Immigration Servs., 701 F.3d 356, 363–64 (11th Cir. 2012)
(ruling that hypothetical scenarios did not show absurdity
sufficient to reject a provision’s plain meaning).
That is especially so because there are reasons to
doubt the likely significance of the hypothesized scenario
even beyond the fact that it has not yet shown up in
reality. The scenario posits that the initially sued de-
fendants, although already sued once on the patent,
would decide to rely on the belief that they are substan-
tially unlikely to be sued on it again—a premise that is
dubious given that the initial dismissal was specifically
without prejudice to the patentee’s right to file again,
there has been no covenant not to sue, and the posited
legal stratagem for avoiding IPRs is apparent. Without
such (doubtful) reliance, it is plausible that one or more of
the defendants would initiate IPR challenges to the
patent at issue within the one-year period, defeating the
posited scheme of the patentee. The assumptions of legal
ignorance, naiveté, or uniform fingers-crossed risk as-
sessment seem strained.
The posited scenario also requires downplaying evi-
dent risks to the patentee of implementing the scheme.
By suing many defendants in the first place, the patentee
would be expanding the pool of persons objectively threat-
16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
ened by the patent, which would seem to increase the
likelihood of an early IPR challenge and to lower the cost
of an IPR for any individual defendant if the defendants
file jointly. That risk to the patentee further diminishes
the likelihood of the abuse scenario. So does the risk that
the patentee would face sanctions—in the initial litigation
or later litigation—for acting as posited in the scenario.
See Chambers v. NASCO, Inc., 501 U.S. 32, 46–47 (1991)
(explaining that inherent power “extends to a full range of
litigation abuses”); Roadway Express, Inc. v. Piper, 447
U.S. 752, 766 (1980) (discussing power to sanction the
“willful[] abuse [of] judicial processes”); Willy v. Coastal
Corp., 503 U.S. 131, 136–37 (1992) (discussing sanction
power even where court lacked jurisdiction); Cooter & Gell
v. Hartmarx Corp., 496 U.S. 384, 395–96 (1990) (post-
dismissal sanction power); Winslow v. Hunter (In re
Winslow), 17 F.3d 314, 315 (10th Cir. 1994) (per curiam)
(discussing sanctions for “a pattern of litigation activity
which is manifestly abusive”) (quoting Johnson v. Cowley,
872 F.2d 342, 344 (10th Cir. 1989)).
Finally, and in any event, the hypothetical abuse sce-
nario cannot support adoption of the particular judicial
modification of § 315(b)’s plain terms proposed by the
Director—which is a gross mismatch for the abuse scenar-
io. The suggested exception to § 315(b) would go far
beyond dismissals under Rule 41(a)(1)(A)(i), which are the
only ones the plaintiff can effectuate unilaterally. The
suggested exception would also cover voluntary, without-
prejudice dismissals under Rule 41(a)(1)(A)(ii)—which are
within the control of the defendant (later petitioner)—and
under Rule 41(a)(2)—which are within the control of the
court. Unilateral manipulation is not possible under
those provisions: for all of those dismissals, the defendant
and the court have power to protect against the posited
abuse. (The present case involved a non-unilateral dis-
missal.) There is no basis for inferring, or adopting, a
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17
nontextual exception that extends far beyond a very
limited scenario of merely hypothetical potential abuse.
***
In sum, I think that the statutory issue in this case
falls within the principle that “where the language of an
enactment is clear, and construction according to its
terms does not lead to absurd or impracticable conse-
quences, the words employed are to be taken as the final
expression of the meaning intended.” United States v.
Mo. Pac. R.R. Co., 278 U.S. 269, 278 (1929). If there turns
out to be a problem in the statute’s application according
to its plain meaning, it is up to Congress to address the
problem.
United States Court of Appeals
for the Federal Circuit
______________________
CLICK-TO-CALL TECHNOLOGIES, LP,
Appellant
v.
INGENIO, INC., YELLOWPAGES.COM, LLC,
Appellees
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2015-1242
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00312.
______________________
DYK, Circuit Judge, joined by LOURIE, Circuit Judge,
dissenting.
The en banc issue in this case is whether the time bar
of 35 U.S.C. § 315(b) applies when a petitioner is served
with a complaint more than one year before the petition
for inter partes review (“IPR”), but the complaint is dis-
missed without prejudice. En banc consideration was
occasioned by the fact that two different panels reached
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
opposite conclusions on this issue in this case and in
Luminara Worldwide, LLC, v. Matal, No. 17-1629 (Fed.
Cir. filed Feb. 13, 2018). The en banc court now agrees
with the Click-to-Call panel and holds that section 315(b)
applies, even when the earlier complaint was dismissed
without prejudice. 1 In our view, the use of traditional
tools of statutory construction leads to a conclusion oppo-
site to the en banc court.
Section 315(b) provides that “inter partes review may
not be instituted if the petition requesting the proceeding
is filed more than 1 year after the date on which the
petitioner . . . is served with a complaint alleging in-
fringement of the patent.” In our view, the Board’s inter-
pretation of the statute was correct, and section 315(b)’s
time-bar should not apply when the underlying suit has
been voluntarily dismissed without prejudice. We reach
this conclusion for three reasons.
First, the panel opinion relies on the language of sec-
tion 315(b) as being unambiguous, because, on its face, it
does not exclude voluntary dismissals without prejudice.
But, the meaning of “service of a complaint” is not on its
face unambiguous. In closely comparable circumstances,
the Supreme Court has held that it is necessary to look
beyond the language, to the context and purpose of the
statute. Kasten v. Saint-Gobain Performance Plastics
Corp., involved language in the Fair Labor and Standards
Act (the “Act”). 563 U.S. 1, 7 (2011). The Act’s anti-
retaliation section prevented employers from “dis-
charg[ing] or in any other manner discriminat[ing]
against any employee because such employee has filed
any complaint . . . under or related to [the Act].” 29
1 Contrary to the panel opinion (Panel Op. 14), this
issue was not addressed, much less resolved, in the en
banc Wi-Fi opinion. See Wi-Fi One, LLC v. Broadcom
Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc).
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3
U.S.C. § 215(a)(3) (emphasis added). The issue was
whether an oral complaint fit within the language “filed
any complaint.” Kasten, 563 U.S. at 7. The Court con-
cluded “the text, taken alone, cannot provide a conclusive
answer to our interpretive question . . . . We must look
further.” Id. at 11. The Court examined how the words
had been used by “legislators, administrators, and judg-
es,” id. at 8, and reviewed “contemporaneous judicial
usage,” id. at 9. These sources helped the Court conclude
that oral complaints should qualify, because “considering
the provision in conjunction with the purpose and context
[led the Court] to conclude that only one interpretation is
permissible.” Id. at 7.
This situation is similar. In this context, the concept
of service and filing seem to be equivalent. Section
315(b)’s phrase, “served with a complaint,” is almost the
same as the phrase “filed any complaint” at issue in
Kasten. In Kasten, the issue was whether the complaint
could include written and oral complaints, whereas the
issue here is whether the complaint could include a com-
plaint later voluntarily dismissed without prejudice. Both
are situations where “[t]he definition of words in isola-
tion,” is not “necessarily controlling,” or even clear in
terms of ordinary meaning. Dolan v. U.S. Postal Serv.,
546 U.S. 481, 486 (2006). Rather, “[i]nterpretation of
[the] word or phrase depends upon reading the whole
statutory text, considering the purpose and context of the
statute, and consulting any precedents or authorities that
inform the analysis.” Id.; see also FDA v. Brown & Wil-
liamson Tobacco Corp., 529 U.S. 120, 132 (2000) (“In
determining whether Congress has specifically addressed
the question at issue, a reviewing court should not confine
itself to examining a particular statutory provision in
isolation. The meaning—or ambiguity—of certain words
or phrases may only become evident when placed in
context.”).
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
Second, a well-established background principle sup-
ports the PTO’s reading of the statute. Courts have
typically treated voluntary dismissals without prejudice
as restoring the parties to the situation that existed
before the case had ever been brought. In Bonneville
Assocs. v. Barram, 165 F.3d 1360, 1362–64 (Fed. Cir.
1999), an appeal to the General Services Administration
Board of Contract Appeals had been voluntarily dis-
missed, and the question was whether the requirement of
timely filing had been satisfied by the dismissed appeal.
This made it necessary to “determine the effect of the
voluntary dismissal of Bonneville’s appeal without preju-
dice.” Id. at 1364. Our court recognized that “[t]he rule in
the federal courts is that ‘[t]he effect of a voluntary dis-
missal without prejudice pursuant to Rule 41(a) “is to
render the proceedings a nullity and leave the parties as
if the action had never been brought.”’” Id. (second alter-
ation in original) (quoting Williams v. Clarke, 82 F.3d
270, 273 (8th Cir. 1996)). Thus, dismissal “leaves the
situation as if the suit had never been brought.” Id. at
1363.
Similarly, in Graves v. Principi, 294 F.3d 1350, 1355–
56 (Fed. Cir. 2002), we held that filing an appeal in Vet-
erans Court did not toll the 120-day period for appeals
from the decision of the Board of Veteran’s Appeals, when
the appeal was voluntarily dismissed without prejudice.
We held that “as a matter of law, once [the veteran’s]
appeal was dismissed . . . it was as if the appeal had never
been filed.” Id. We explained that the
dismissal of his initial appeal meant that Mr.
Graves was barred from appealing the January
18, 1998 decision of the Board . . . . because, in
light of the dismissal, he was in the same situa-
tion that he would have been in if he had never
filed a notice of appeal, and by June 18, 1998, the
date of the dismissal, the 120–day period under
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5
section 7266(a) for filing a notice of appeal had
passed.
Id. at 1356. We reiterated that “[t]he dismissal of an
action without prejudice leaves the parties as though the
action had never been brought.” Id.
Other circuits have likewise treated dismissals with-
out prejudice as restoring the parties to the exact situa-
tion as if the original complaint had never been filed. See,
e.g., Norman v. Ark. Dep’t of Educ., 79 F.3d 748, 751 (8th
Cir. 1996) (“[T]he ‘effect of a voluntary dismissal without
prejudice is to render the proceedings a nullity and leave
the parties as if the action had never been brought.’”
(quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig.,
551 F.2d 213, 219 (8th Cir. 1997))). 2 The understanding
that dismissal without prejudice renders the original
2 See also Harvey Specialty & Supply, Inc. v. Anson
Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005)
(“The effect of [a Rule 41(a)(1)] dismissal is to put the
plaintiff in a legal position as if he had never brought the
first suit.” (alteration in original) (quoting LeCompte v.
Mr. Chip, Inc., 528 F.2d 601, 603 (5th Cir. 1976))); Na-
vellier v. Sletten, 262 F.3d 923, 938 (9th Cir. 2001) (“A
dismissal without prejudice . . . leaves the parties where
they would have stood had the lawsuit never been
brought.” (citing In re Corey, 892 F.2d 829, 835 (9th
Cir.1989))); Beck v. Caterpillar, Inc., 50 F.3d 405, 407 (7th
Cir. 1995) (“While [plaintiff’s] first lawsuit was filed
within the limitations period, that suit was voluntarily
dismissed . . . and is treated as if it had never been
filed.”); Simons v. Southwest Petro–Chem, Inc., 28 F.3d
1029, 1030–31 (10th Cir. 1994); Humphreys v. United
States, 272 F.2d 411, 412 (9th Cir. 1959) (“[A] suit dis-
missed without prejudice pursuant to Rule 41(a)(2) leaves
the situation the same as if the suit had never been
brought in the first place.”).
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
filing a “nullity” and restores the parties to the situation
that would have prevailed if the original complaint had
never been filed is supported by the leading federal prac-
tice treatise. See 9 CHARLES ALAN WRIGHT & ARTHUR R.
MILLER, FEDERAL PRAC. AND PROC. § 2367 (3d. ed. 2018)
(“[A]s numerous federal courts have made clear, a volun-
tary dismissal without prejudice . . . leaves the situation
as if the action never had been filed.”).
This rule has been applied in the closely comparable
situation where a complaint dismissed without prejudice
is held not to toll the statute of limitations, absent some
evidence of a contrary legislative intent. See Willard v.
Wood, 164 U.S. 502, 523 (1896) (“The general rule in
respect of limitations must also be borne in mind, that if a
plaintiff mistakes his remedy, in the absence of any
statutory provision saving his rights, or where, from any
cause, a plaintiff becomes nonsuit, or the action abates or
is dismissed, and, during the pendency of the action, the
limitation runs, the remedy is barred.”); Jorge v.
Rumsfeld, 404 F.3d 556, 563 (1st Cir. 2005) (“[A] prescrip-
tive period is not tolled by filing a complaint that is sub-
sequently dismissed without prejudice.”); Garfield v. J.C.
Nichols Real Estate, 57 F.3d 662, 666 (8th Cir. 1995) (“A
dismissal without prejudice does not toll a statute of
limitation.”); Robinson v. Willow Glen Acad., 895 F.2d
1168, 1169 (7th Cir. 1990) (holding that a tolling provision
triggered by the “commencement of an action” did not
apply where a complaint was filed but was later voluntar-
ily dismissed); Davis v. Smith’s Transfer, Inc., 841 F.2d
139, 140 (6th Cir. 1988) (per curiam) (“The initial filing of
plaintiff’s suit within the six-month time period is simply
not the effective filing date of plaintiff’s suit because it
was later dismissed by the plaintiff under Fed. R. Civ. P.
41(a). A suit, so dismissed, does not toll nor effect in any
way the continuous running of the applicable statutory
time period.”); Dupree v. Jefferson, 666 F.2d 606, 611
(D.C. Cir. 1981) (“We conclude, then, that the rule against
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7
tolling . . . applies with equal force to nonprejudicial
dismissals, be they voluntary or involuntary.”); Curtis v.
United Transp. Union, 648 F.2d 492, 495 (8th Cir. 1981)
(“It is our view that Rule 54(b) does not provide an excep-
tion in this case to the rule that the entry of a voluntary
dismissal without prejudice leaves the action as if suit
had never been brought for purposes of the statute of
limitations.”); Bomer v. Ribicoff, 304 F.2d 427, 429 (6th
Cir. 1962) (“In the absence of a statute to the contrary a
party cannot deduct from the period of the statute of
limitations the time during which the action so dismissed
was pending.”).
The panel opinion suggests that this treatment of
dismissals without prejudice is not a uniform rule and
that “for many . . . purposes, the dismissed action contin-
ues to have legal effect.” Panel Op. 23. This is not cor-
rect. The panel indicates only two such claimed
instances: (1) where a dismissal without prejudice does
not bar an award of costs as a sanction for a frivolous
filing, see, e.g., Cooter & Gell v. Hartmarx Corp., 496 U.S.
384, 395–96 (1990), and (2) where the filing is relied on to
establish a controversy between the parties for assessing
declaratory judgment jurisdiction, see TransWeb, LLC v.
3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir.
2016). But neither of these is a situation where the issue
is the legal effect of the earlier filing, and the question is
whether the original filing triggers a legal obligation, such
as the start of a time period. In that situation, the cases
are uniform that, absent contrary intent, the earlier
dismissed filing (or in this case service) has no legal effect.
We ruled in Abbott Laboratories v. TorPharm, Inc.,
503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume
Congress’s familiarity with general principles of law when
enacting a statute.” In other words, “Congress is pre-
sumed to legislate against the backdrop of existing law.”
Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003);
accord Cannon v. Univ. of Chi., 441 U.S. 677, 698–99
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
(1979). This widespread treatment of voluntary dismis-
sals without prejudice provided the background for the
enactment of section 315(b), and section 315(b) must be
read in light of that background legal principle, so that
the one year time-bar is not triggered if the underlying
infringement action is voluntarily dismissed without
prejudice.
The importance of assessing the statutory language in
the light of background principles is confirmed by Keene
Corp. v. United States, 508 U.S. 200 (1993). There the
statute provided that “the Court of Federal Claims ‘shall
not have jurisdiction’ over a claim, ‘for or in respect to
which’ the plaintiff ‘has [a suit or process] pending’ in any
other court.” Id. at 207 (alteration in original) (quoting 28
U.S.C. § 1500). The question was whether dismissal
without prejudice of the previously filed action eliminated
the jurisdictional bar. Id. at 202–05. The Supreme Court
held that it did not. Id. at 209, 217. The Supreme Court
did not primarily rely on the language of the statute to
resolve the question, but looked instead to another appli-
cable background principle—in that case the principle
that jurisdiction is to be determined at the time the action
(there the Claims Court action) was filed. Id. at 205–07.
“In applying the jurisdictional bar here by looking to the
facts existing when Keene filed each of its complaints, the
Court of Federal Claims followed the longstanding princi-
ple that ‘the jurisdiction of the Court depends upon the
state of things at the time of the action brought.’” Keene,
508 U.S. at 207 (quoting Mollan v. Torrance, 9 Wheat.
537, 539 (1824) (Marshall, C.J.)). In light of that princi-
ple, the Court held that the pendency of the district court
action, at the time the Claims Court action was filed, was
a bar. Id. at 209. So here, the background principle is
that the dismissal of an action without prejudice leaves
the parties as though the action had never been brought.
Third, typically where there is an intention to depart
from the normal treatment of voluntary dismissals with-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9
out prejudice, the statute or the rule says so explicitly,
there is a clear legislative decision to depart from the
usual rule, or, as in Keene, there is a conflicting back-
ground principle. For example, Rule 41 itself states that
we should depart from the normal rule when “the plaintiff
previously dismissed any federal- or state-court action
based on or including the same claim, [in which case] a
notice of dismissal operates as an adjudication on the
merits.” Fed. R. Civ. P. 41(a)(1)(B). Similarly, in Flowers
v. Secretary of the Department of Health & Human Ser-
vices, 49 F.3d 1558, 1560–61 (Fed. Cir. 1995), we found
that the Vaccine Act banned claimants from seeking
related benefits “[i]f a plaintiff has pending a civil action
for damages for a vaccine-related injury or death,” 42
U.S.C. § 300aa–11(a)(5), even if that action was subse-
quently voluntarily dismissed without prejudice. Con-
gress originally provided in the act that the co-pending
bar would not apply if the plaintiff “withdraw[s] the
action.” Flowers, 49 F.3d at 1560 (quoting Pub. L. No. 99–
660, tit. III, § 2111(a)(5), 100 Stat. 3755, 3759 (codified at
42 U.S.C. § 300aa–11(a)(5) (1988))). Congress, however,
specifically repealed the exception. We concluded that the
usual rule concerning voluntary dismissals without
prejudice did not apply, because Congress specifically
manifested contrary intent by removing the provision. Id.
at 1561.
Likewise, in Jenkins v. Village of Maywood, 506 F.3d
622 (7th Cir. 2007), the Seventh Circuit recognized that
the statute of limitations for a § 1983 claim could be tolled
by the filing of a suit, later voluntarily dismissed without
prejudice, because the Illinois statute governing the
statute of limitations
provides that if an action is voluntarily dismissed
by the plaintiff, “then, whether or not the time
limitation for bringing such action expires during
the pendency of such action, the plaintiff . . . may
commence a new action within one year or within
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
the remaining period of limitation, whichever is
greater . . . after the action is voluntarily dis-
missed by the plaintiff[.]
Id. at 624 (alterations in original) (quoting 735 ILL. COMP.
STAT. ANN. 5/13–217). 3
The fact is that Congress did not include any lan-
guage in section 315(b) addressing voluntary dismissals
without prejudice and here, contrary to the panel opinion,
there is no legislative history supporting an opposing
interpretation, suggesting that Congress intended to
follow the usual rule, that such dismissals render the
complaint a nullity. 4
Finally, the purpose of the statute, as reflected in the
legislative history, supports reading section 315(b)’s time
bar as being inapplicable to voluntary dismissals without
prejudice. One purpose of the statute was to require that
the IPR petitioner file the IPR promptly after receiving
notice of the patentee’s claims through the filing of the
infringement action. The panel opinion notes that Sena-
tor Kyl explained that the “315(b) deadline afford[s]
defendants a reasonable opportunity to identify and
understand the patent claims that are relevant to the
3 Both the panel opinion and Judge Taranto’s con-
curring opinion rely on section 315(a)(2)(C) as supporting
the en banc holding showing that Congress made a delib-
erate choice not to refer to voluntary dismissals. Panel
Op. 15; Concurring Op. 2. Section 315(a)(2)(C) simply
provides that when an IPR has been instituted a later
filed court action must be stayed until the court action is
“dismissed.” It is difficult to see how this can be read as
congressional rejection in section 315(b) of the usual rule
concerning the consequences of a voluntary dismissal.
4 Nor is this like Keene, discussed above, in which
another background principle is predominant.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11
litigation.” 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011)
(statement of Sen. Kyl).
While the panel opinion argues that the notice func-
tion supports their interpretation, in fact, the notice
function would not be vindicated if the underlying com-
plaint were voluntarily dismissed without prejudice.
When an action is filed, and then later voluntarily dis-
missed, the accused infringer is led to think that the
controversy has dissipated. In other words, the notice
function of the filing is effectively eliminated by the
dismissal without prejudice.
As discussed earlier, in the comparable situation in-
volving statutes of limitations, while the original filing
provides notice to the defendant, 5 that notice is nullified
by a voluntary dismissal without prejudice, and the
original filing does not toll the statute of limitations. See,
e.g., Willard, 164 U.S. at 523. Here, as in the limitations
context, the underlying purpose of section 315(b) is not
served by filing a complaint that is voluntary dismissed
without prejudice.
The statute was designed to give the petitioner a full
year after receiving notice of the filing of the action to file
the IPR, so that the potential petitioner could be fully
aware of the claims and products at issue in the infringe-
ment litigation. The one year time-bar was intended to go
into effect only after the defendant knows “which claims
will be relevant and how those claims are alleged to read
on the defendant’s products.” 157 Cong. Rec. S5429 (daily
ed. 2011) (statement of Sen. Kyl). Despite the assertions
to the contrary (Panel Op. 15–17), this purpose is thwart-
5 See Crown, Cork & Seal Co. v. Parker, 462 U.S.
345, 352 (1983) (“Limitations periods are intended to put
defendants on notice of adverse claims and to prevent
plaintiffs from sleeping on their rights . . . .”).
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.
ed by an early voluntary dismissal without prejudice. In
that situation, the defendant is unlikely to have received
the contemplated information, and that information will
be of limited value, as the defendant has been led to
believe that the underlying infringement action will no
longer continue.
So too, one of the purposes of section 315(b) in setting
a one year time period was to bar the filing of an IPR
when, typically, the district court action would have
already consumed the time and attention of the court and
parties. We have pointed out that in the inter partes
review context, the “legislative history confirms . . . ‘Con-
gress’s desire to enhance the role of the PTO and limit the
burden of litigation on courts and parties.’” Murata
Mach. USA, Ltd. v. Daifuku Co., 830 F.3d 1357, 1362
(Fed. Cir. 2016) (quoting NFC Tech. LLC v. HTC Am.,
Inc., 2015 WL 1069111, at *5 (E.D. Tex. 2015)) (discussing
AIA legislative history). However, the situations that
result in a voluntary dismissal without prejudice do not
implicate these concerns. This is because voluntary
dismissals usually come early in the case, typically before
the answer is filed or by agreement from both parties.
Finally, the purposes of section 315(b) will be defeated
if the patentee plaintiff is allowed to manipulate the filing
of infringement actions in order to bar a future IPR
challenge. Indeed, if dismissals without prejudice did not
nullify the underlying complaint, patent owners would
have an incentive to file suits alleging infringement and
subsequently voluntarily dismiss these suits without
prejudice after service of a complaint. Such actions would
effectively begin the one year clock for the accused in-
fringer to file an IPR, even when there was no longer an
underlying infringement action. Congress could not have
intended to provide a mechanism for such manipulation.
Thus, we conclude that, contrary to the en banc hold-
ing, the section 315(b) time-bar should not apply when the
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13
underlying complaint alleging infringement has been
voluntarily dismissed without prejudice.