Trial@uspto.gov
`571-272-7822
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` Paper 40
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` Entered: December 18, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION,
`ORACLE OTC SUBSIDIARY LLC,
`INGENIO LLC, and
`YELLOWPAGES.COM LLC
`Petitioners
`
`v.
`
`CLICK-TO-CALL TECHNOLOGIES LP
`Patent Owner
`____________
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`____________
`
`
`
`Before MICHAEL R. ZECHER, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`Yamaha Corporation of America Exhibit 1007 Page 1
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 40
`
`
`
`
` Entered: December 18, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION,
`ORACLE OTC SUBSIDIARY LLC,
`INGENIO LLC, and
`YELLOWPAGES.COM LLC
`Petitioners
`
`v.
`
`CLICK-TO-CALL TECHNOLOGIES LP
`Patent Owner
`____________
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`____________
`
`
`
`Before MICHAEL R. ZECHER, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`Yamaha Corporation of America Exhibit 1007 Page 1
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`I. INTRODUCTION
`
`Click-to-Call Technologies LP (“Patent Owner”) requests rehearing (Paper
`37, “Reh’g Req.”) on the Board’s decision to institute (Paper 26, “Dec.”) an inter
`partes review of claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 of U.S.
`Patent No. 5,818,836 (“the ’836 patent”). In its preliminary response (Paper 14,
`“Prelim. Resp.”), Patent Owner contends that the petition is barred under 35 U.S.C.
`§ 315(b) as a result of service of a complaint alleging infringement of the ʼ836
`patent on a predecessor of Ingenio LLC—one of the Petitioners—more than a year
`before the petition was filed on May 28, 2013. Prelim. Resp. 3-9. In the decision
`to institute, the Board determined that Petitioners—namely Ingenio LLC—are not
`barred from pursuing an inter partes review under § 315(b). Dec. 15-18.
`In its request for rehearing, Patent Owner contends that the Board
`erroneously interpreted § 315(b) because: (1) the legislative history associated
`with § 315(b) dictates that the plain meaning of “served with a complaint alleging
`infringement of a patent” is conclusive, and, therefore, the Board’s analysis of the
`issue erred in looking beyond the statutory language; (2) the Board erred in looking
`to the Federal Rules of Civil Procedure to interpret the statute because the language
`of § 315(b) is unambiguous and there is no legislative history that contradicts its
`plain meaning; (3) voluntary dismissal of a complaint for patent infringement does
`not affect the running of the “one year” time period under § 315(b); and (4) the
`holdings of the Federal Circuit in Graves and Bonneville relied upon by the Board
`are inapposite to the Board’s determination that the dismissal of an action without
`prejudice leaves the parties as though the underlying complaint had never been
`
`2
`
`Yamaha Corporation of America Exhibit 1007 Page 2
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`served. Reh’g Req. 2-13. For the reasons set forth below, Patent Owner’s request
`for rehearing is denied.
`
`II. ANALYSIS
`
`When rehearing a decision on institution, the Board reviews the decision for
`an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
`indicated if a decision is based on an erroneous interpretation of law, if a factual
`finding is not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
`1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
`The request for rehearing must specifically identify all matters the party believes
`the Board misapprehended or overlooked. 37 C.F.R. § 427.71(d). Given the
`similarities that exist between the issues that Patent Owner raises in its request for
`rehearing, we group the issues into two subsets and address them in turn.
`With respect to the first and second issues set forth above, Patent Owner’s
`contentions are predicated on the notion that there is nothing ambiguous about the
`statutory language of § 315(b) (Reh’g Req. 3-8), which provides:
`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than one year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served
`with a complaint alleging infringement of the patent.
`
`Emphasis added. However, Patent Owner does not provide us with a credible
`reason why we should not look to both the Federal Rules of Civil Procedure and
`Federal Circuit precedent when interpreting the statutory language of § 315(b).
`3
`
`Yamaha Corporation of America Exhibit 1007 Page 3
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`See, e.g., Macauto U.S.A. v. BOS GmbH & Kg, Paper 18, IPR2012-00004, slip op.
`at 14-16 (PTAB 2013 Jan. 24, 2013); Ariosa Diagnostics v. Isis Innovation Ltd.,
`Paper 20, IPR2012-00022, slip op. at 4-8 (PTAB Feb. 12, 2013).
`
`With respect to the third and fourth issues set forth above, we maintain our
`initial position that both the Federal Rules of Civil Procedure and Federal Circuit
`precedent treat a dismissal without prejudice as something that, de jure, never
`existed. Dec. 16-17. It is undisputed that the patent infringement suit filed by
`Inforocket against Keen—now Ingenio LLC—on June 8, 2001, was dismissed
`without prejudice on March 21, 2003. Ex. 1019; Ex. 1017 at 4; Ex. 1018 at 8.
`We have determined that, because that patent infringement suit 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. See Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville
`Assoc., Ltd. Partnership v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999); accord 9
`WRIGHT, MILLER, KANE, and MARCUS, FEDERAL PRAC. & PROC. CIV. § 2367
`(3d. ed.).
`
`Patent Owner’s argument that the holdings of the Federal Circuit in Graves
`
`and Bonneville are inapposite to the Board’s determination is not persuasive.
`Reh’g Req. 9-12. Patent Owner does not reconcile how the dismissal of an action
`without prejudice leaves the parties in the same legal position as if the action had
`“never been filed,” which Patent Owner readily admits is the correct holding in the
`Federal Circuit’s Graves decision (id. at 10-11), yet somehow would not affect the
`running of the “one year” time period under § 315(b). Nor does Patent Owner
`explain adequately why the holdings of the Federal Circuit in Graves and
`
`4
`
`Yamaha Corporation of America Exhibit 1007 Page 4
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`Bonneville should not apply to a petition for inter partes review. In addition,
`Patent Owner does not direct us to Federal Circuit or other precedent that supports
`its argument.
`
`
`III. CONCLUSION
`For the foregoing reasons, the Board did not abuse its discretion when
`determining that Petitioners—namely Ingenio LLC—are not barred from pursuing
`an inter partes review under 35 U.S.C. § 315(b). Accordingly, Patent Owner’s
`request for rehearing is denied.
`
`5
`
`Yamaha Corporation of America Exhibit 1007 Page 5
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`For PETITIONERS:
`
`James M. Heintz
`DLA Piper LLP (US)
`Oracle-IPRP@dlapiper.com
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`mstockwell@kilpatricktownsend.com
`
`
`
`For PATENT OWNER:
`Peter J. Ayers
`LEE & HAYES, PLLC
`peter@leehayes.com
`
`Craig J. Yudell
`Yudell Isidore Ng Russell PLLC
`Yudell@yudellisidore.com
`
`
`6
`
`Yamaha Corporation of America Exhibit 1007 Page 6
`
`
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