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Petitioner Estopped On “Uninstituted” Claim, PTAB Litigation Blog

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Click-to-Call (Plaintiff/Patent Owner) filed an infringement suit against Ingenio (Defendant/Petitioner) and others.  Defendant filed an IPR challenging the asserted claims.  In the IPR petition, Petitioner asserted multiple grounds based on Dezonno and Freeman.  The PTAB partially instituted on Dezonno, but refused to institute on Freeman.  Notably, claim 27 was only challenged in the petition on Freeman.  The district court case was stayed pending resolution of the IPR.  Meanwhile, the PTAB found all claims challenged on the Dezonno grounds to be unpatentable, but this finding did not include claim 27.  After all appeals, the decision became final.  During the pendency of the appeals, the Supreme Court decided SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), where the Court overruled partial institution.  Post-SAS but before the appeals were decided, Petitioner did not ask for remand under SAS to review the non-instituted grounds. So, dependent claim 27 survived the IPR.

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