IP News

In 2001, Inforocket.com sued Keen, Inc. for infringement of U.S. Patent No. 5,818,836 (the '836 Patent). Subsequently Keen, Inc. acquired Inforocket.com, and, as part of the merger, the parties dismissed the suit without prejudice in 2003. Keen, Inc. went through a series of mergers, acquisitions, and name changes from 2003 to 2019 and is now named Thryv, Inc. While the mergers and acquisitions were ongoing, the '836 Patent was assigned to Click-to-Call Technologies, L.P. and was asserted against various defendants. Thryv, the owner of the '836 Patent in another life, found itself as one of the defendants accused of infringing the same. See generally, Click-To-Call Techs., L.P. v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).

Thryv and the other defendants (collectively, Thryv) challenged the validity of the patent by filing a petition for IPR, and the case bounced up and down multiple times between the Federal Circuit and the PTAB. At issue in the Supreme Court was whether the §315(b) time bar applies to Thryv for the case that was filed against it in 2001 when it was Keen, Inc. The PTAB found that it did not, and allowed the IPR to proceed and ultimately invalidated the patent on the merits of the petition. On appeal to the Federal Circuit, Click-To-Call challenged the Board's decision to institute IPR notwithstanding its time bar argument, and ultimately, after en banc review considering multiple developments in both the Federal Circuit and the Supreme Court, the Federal Circuit held that not only could it review the Board's decision to institute, but also reversed the Board's rejection of applying the time bar, thus preventing the invalidity argument to proceed on the merits.