Case: 22-1016 Document: 42 Page: 1 Filed: 08/17/2022
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States District Court for the
`Western District of Texas in No. 1:12-cv-00465-LY, Judge
`Lee Yeakel.
`Decided: August 17, 2022
`DANIEL J. SHIH, Susman Godfrey LLP, Seattle, WA, ar-
`gued for plaintiff-appellant. Also represented by BRIAN
` AMANDA N. BROUILLETTE, Kilpatrick Townsend &
`Stockton LLP, Atlanta, GA, argued for defendants-appel-
` Also represented by DAVID CLAY HOLLOWAY,
` ______________________


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


`Case: 22-1016 Document: 42 Page: 3 Filed: 08/17/2022
`SAS, Ingenio did not seek remand for institution on the
`non-instituted grounds. We conclude that under the facts
`of this case, the district court erred in not applying IPR es-
`toppel under 35 U.S.C. § 315(e)(2) to claim 27 based on De-
`zonno. Accordingly, we reverse as to claim 27 and remand
`for further proceedings.
`Click-to-Call also argues that the district court abused
`its discretion in not allowing Click-to-Call to amend its se-
`lection of asserted claims to add two claims that were not
`at issue in the IPR (claims 24 and 28). The district court
`did not abuse its discretion in this regard, and thus we af-
`firm the district court’s denial of Click-to-Call’s request to
`Click-to-Call filed a complaint for patent infringement
`against several entities (including Ingenio) more than ten
`years ago, on May 29, 2012. J.A. 30. Originally, Click-to-
`Call asserted sixteen claims of the ’836 patent. J.A. 64–65
`(asserting claims 1, 2, 8, 12–13, 15–16, 19, 22–24, 26–30).
`In response, on May 28, 2013, Ingenio filed a petition for
`IPR challenging the sixteen asserted claims and one addi-
`tional claim (claim 18). In its petition, Ingenio challenged
`these claims on six grounds, three based on Dezonno and
`three based on Freeman.
`While the IPR petition was pending, the district court
`issued a Markman order construing certain claim terms on
`August 16, 2013. J.A. 38 (docket report showing D.I. 137
`(Consolidated Markman Order)). On September 11, 2013,
`the district court entered a scheduling order requiring
`plaintiffs to narrow their asserted claims to only eight
`claims. J.A. 38 (docket report showing D.I. 138 (Schedul-
`ing Order)); J.A. 1255. Click-to-Call complied on Octo-
`ber 11, 2013, selecting claims 1, 2, 8, 12, 13, 16, 26, and 27.
`J.A. 1258.


`Case: 22-1016 Document: 42 Page: 4 Filed: 08/17/2022
`Less than a month after this selection, the Board par-
`instituted IPR based on Ingenio’s petition.
`J.A. 1539–68 (Oct. 30, 2013). The Board instituted only on
`the Dezonno-based grounds and refused institution of the
`Freeman-based grounds. As shown below, claim 27 was
`challenged in the petition based only on Freeman, not De-
`J.A. 1547 (Board’s institution decision listing grounds)
`(green shading added to instituted grounds, yellow high-
`lighting added to the only challenge of claim 27).
`Back at the district court, Ingenio moved to stay the
`case until the IPR was resolved. The district court granted
`the motion on December 5, 2013. J.A. 39 (docket report
`showing D.I. 147 (Order Granting Motion to Stay Case)).
`This stay would last for years because of the lengthy sub-
`sequent appellate history of the IPR.
`The Board issued its final written decision on Octo-
`ber 28, 2014. The Board found all claims challenged on the
`Dezonno grounds to be unpatentable. J.A. 1597. Click-to-


`Case: 22-1016 Document: 42 Page: 5 Filed: 08/17/2022
`Call appealed based on a time-bar dispute.1 After all ap-
`peals, the Board’s decision became final after our May 28,
`2020 order dismissing the appeal. Click-to-Call Techs., LP
`v. Ingenio, Inc., 810 F. App’x 881 (Fed. Cir. 2020). During
`the pendency of the IPR appeal, Ingenio did not ask for re-
`mand under SAS to review the non-instituted grounds.
`Thus, dependent claim 27 survived the IPR. That claim
`recites: “The method of claim 1, wherein the second infor-
`mation comprises an advertisement.” ’836 patent Ex Parte
`Reexamination Certificate col. 4 ll. 26–27.
`After the IPR finally concluded, the district court lifted
`the stay. On October 20, 2020, Ingenio filed a motion for
`summary judgment of invalidity. In responding to In-
`genio’s motion, Click-to-Call requested leave to amend its
`asserted claims to add two other claims (claims 24 and 28)
`that were not at issue in the IPR. In addition, Click-to-Call
`argued that Ingenio was estopped from pressing invalidity
`of claim 27 based on Dezonno due to IPR estoppel under
`35 U.S.C. § 315(e)(2). The magistrate judge filed a Report
`and Recommendation recommending granting Ingenio’s
`motion on the basis that Dezonno anticipated claim 27 and
`that Click-to-Call should not be granted leave to amend its
`asserted claims. J.A. 7–19. The district court adopted the
`Report and Recommendation on August 30, 2021, and
`1 During the IPR, Click-to-Call had argued that In-
`genio’s petition was time barred under 35 U.S.C. § 315(b).
`The Board disagreed and reached the merits. Oracle Corp.
`v. Click-to-Call Techs. LP, No. IPR2013-00312, 2014
`WL 5490583 (P.T.A.B. Oct. 28, 2014). Click-to-Call ap-
`pealed, and we held that the Board erred in its time-bar
`determination. Click-to-Call Techs., LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018). The Supreme Court, how-
`ever, held that this time-bar question was unreviewable
`under 35 U.S.C. § 314(d). Thryv, 140 S. Ct. at 1373–74.


`Case: 22-1016 Document: 42 Page: 6 Filed: 08/17/2022
`granted summary judgment of invalidity. J.A. 3–6. Final
`judgment issued on September 2, 2021. J.A. 1–2.
`Click-to-Call appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(1).
`We review a grant of summary judgment according to
`the law of the regional circuit, here, the Fifth Circuit. La-
`serDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 66
`(Fed. Cir. 2012). The Fifth Circuit reviews a district court’s
`grant of summary judgment de novo. Id. Summary judg-
`ment is improper where there is a genuine dispute of ma-
`terial fact and where “the evidence is such that a
`reasonable jury could return a verdict for the nonmoving
`party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
`Statutory interpretation, including interpretation of
`the IPR estoppel statute, is a question of law that we re-
`view de novo. Intuitive Surgical, Inc. v. Ethicon LLC,
`25 F.4th 1035, 1040 (Fed. Cir. 2022); see also Cal. Inst. of
`Tech. v. Broadcom Ltd., 25 F.4th 976, 989 (Fed. Cir. 2022)
`We review district court decisions on procedural mat-
`ters in patent cases, such as granting leave to amend claim
`selections, for an abuse of discretion. See O2 Micro Int’l
`Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366–68
`(Fed. Cir. 2006); Mayeaux v. La. Health Serv. & Indem. Co.,
`376 F.3d 420, 425 (5th Cir. 2004) (reviewing a ruling on a
`motion for leave to amend a pleading for an abuse of dis-
`We first turn to Click-to-Call’s argument that the dis-
`trict court erred in refusing to estop Ingenio from arguing
`that claim 27 is anticipated by Dezonno. We agree that the
`district court erred by not addressing the actual basis of


`Case: 22-1016 Document: 42 Page: 7 Filed: 08/17/2022
`Click-to-Call’s estoppel argument, and we hold as a matter
`of law that IPR estoppel applies. At the outset, the district
`court erred by analyzing Click-to-Call’s argument only un-
`der common law issue preclusion. J.A. 18 (Report and Rec-
`ommendation); J.A. 4
`the Report and
`Recommendation). Click-to-Call’s argument regarding De-
`zonno and claim 27 was grounded in IPR estoppel under
`35 U.S.C. § 315(e)(2), not standard issue preclusion.
`J.A. 1717–20 (Click-to-Call’s response to Ingenio’s motion
`for summary judgment). Thus, the district court erred in
`failing to address the basis of Click-to-Call’s argument.
`Furthermore, the district court’s reason for rejecting
`Click-to-Call’s argument—a reason derived from the issue-
`preclusion rubric—does not apply to IPR estoppel. The dis-
`trict court rejected Click-to-Call’s estoppel argument under
`the “actually litigated” prong of issue preclusion. J.A. 18
`(citing United States v. Shanbaum, 10 F.3d 305, 311
`(5th Cir. 1994) (explaining that, for issue preclusion to ap-
`ply, the “issue must have been fully and vigorously liti-
`gated in the prior action”)). But IPR estoppel has no such
`express requirement. And it would not be reasonable to
`engraft such a requirement into IPR estoppel, given that
`the IPR statute also estops grounds that “reasonably could
`have [been] raised.” § 315(e)(2). Thus, it was error to reject
`Click-to-Call’s IPR estoppel argument on the basis that an-
`ticipation by Dezonno “was not litigated in the IPR,” J.A.
`18, because Ingenio might still be estopped if it “reasonably
`could have raised” that ground in the IPR. Accordingly, we
`reject the district court’s basis for denying Click-to-Call’s
`estoppel argument.
`We turn now to the merits of Click-to-Call’s estoppel
`argument. We hold that IPR estoppel applies here as a
`matter of law and precludes Ingenio from arguing that
`claim 27 is anticipated by Dezonno. Ingenio’s IPR petition
`included a challenge to claim 27 (based upon Freeman, but
`not Dezonno) and included unpatentability challenges to
`other claims based on Dezonno (including an anticipation


`Case: 22-1016 Document: 42 Page: 8 Filed: 08/17/2022
`challenge to claim 1 on which claim 27 depends), evidenc-
`ing its awareness of the Dezonno reference. Accordingly,
`anticipation of claim 27 in view of Dezonno—the invalidity
`challenge the district court accepted—is a ground that In-
`genio “reasonably could have raised” in the IPR. Ingenio’s
`arguments to the contrary based on the language of
`§ 315(e)(2) and Shaw Industries Group, Inc. v. Automated
`Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), are un-
`Specifically, Ingenio argues that it is not estopped be-
`cause claim 27 “was not part of the Board’s Final Written
`Decision,” which it contends is required by § 315(e)(2). Ap-
`pellees’ Br. 9. Ingenio focuses on the below-underlined lan-
`guage in § 315(e)(2), referencing “a claim in a patent” and
`“the claim,” in addition to requiring that the IPR “results
`in a final written decision”:
`(e) ESTOPPEL.— . . .
`PROCEEDINGS.—The petitioner in an in-
`ter partes review of a claim in a patent un-
`der this chapter that results in a final
`written decision under section 318(a), or
`the real party in interest or privy of the pe-
`titioner, may not assert either in a civil ac-
`tion arising in whole or in part under
`section 1338 of title 28 or in a proceeding
`before the International Trade Commission
`under section 337 of the Tariff Act of 1930
`that the claim is invalid on any ground that
`the petitioner raised or reasonably could
`have raised during that inter partes re-
`35 U.S.C. § 315(e)(2) (emphases added); see Appellees’
`Br. 8–9. Ingenio argues that as a result of this language,
`IPR estoppel is applied on a claim-by-claim basis and is


`Case: 22-1016 Document: 42 Page: 9 Filed: 08/17/2022
`limited to only those claims that were “subject to a final
`written decision.” Appellees’ Br. 8–9.
`The fact that claim 27 was not part of the Board’s final
`written decision, however, does not have the dispositive
`weight Ingenio ascribes to it because of the unusual proce-
`dural posture of this case. It is true that § 315(e) estoppel
`applies on a “claim-by-claim basis.” Intuitive, 25 F.4th
`at 1042 (analyzing § 315(e)(1) estoppel at the U.S. Patent
`and Trademark Office). And the statute does specify that
`it applies estoppel from “an inter partes review of a claim
`in a patent under this chapter that results in a final writ-
`ten decision.” § 315(e)(2). But here, Ingenio included claim
`27 in its petition, and the IPR did result in a final written
`decision. The fact that the Board, due to a legal error cor-
`rected by SAS, failed to include claim 27 in its final written
`decision does not absolve Ingenio of the estoppel triggered
`by its choice to challenge claim 27 at the Board.
`As described in the Background, Ingenio crafted its pe-
`tition to challenge claim 27 only on the alternative Free-
`man-based ground, rather than Dezonno. The Board,
`consistent with its practice at the time in 2013, instituted
`only on the Dezonno-based grounds, thus leaving claim 27
`unaddressed. This partial-institution practice, however,
`was inconsistent with the IPR statute and was overruled
`by the Supreme Court in SAS. 138 S. Ct. at 1359–60. The
`Court explained that “the statute tells us that the peti-
`tioner’s contentions, not the Director’s discretion, define
`the scope of the litigation all the way from institution
`through to conclusion.” Id. at 1357. Our court has also
`recognized the primacy of a petitioner’s contentions, specif-
`ically in the context of IPR estoppel. In Caltech, we noted
`that “it is the petition, not the institution decision, that de-
`fines the scope of the IPR.” Caltech, 25 F.4th at 990 (citing
`SAS, 138 S. Ct. at 1357–58). Thus, it is the “petitioner’s
`contentions” that define “the scope of the [IPR] litigation”
`and thus the extent of the estoppel (so long as the IPR ends
`in a final written decision). Here, the scope of the IPR as


`Case: 22-1016 Document: 42 Page: 10 Filed: 08/17/2022
`defined in the petition included claim 27 and Dezonno,
`even if it did not include a challenge to claim 27 based upon
`Furthermore, unlike pre-SAS petitioners whose par-
`tially instituted proceedings went final before SAS issued,
`Ingenio was not helpless to remedy the Board’s institution
`error. Due to the long appellate history of the IPR proceed-
`ing, the appeal of Ingenio’s IPR was still pending at the
`time SAS issued in 2018. Ingenio, however, never sought
`a SAS remand directing the Board to address its non-insti-
`tuted claims and grounds. See Appellant’s Reply Br. 3 (not-
`ing Ingenio’s failure to request SAS remand); Oral Arg. at
`fault.aspx?fl=22-1016_06092022.mp3 (Ingenio conceding it
`“could have” sought SAS remand to address claim 27 but
`did not because its Dezonno ground was successful). In-
`genio thus forewent the route taken by many other parties
`post-SAS to have the Board address all claims and all
`grounds in their petitions. See, e.g., Adidas AG v. Nike,
`Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018) (granting SAS
`remand); BioDelivery Scis. Int’l, Inc. v. Aquestive Thera-
`peutics, Inc., 898 F.3d 1205, 1208 (Fed. Cir. 2018) (citing
`cases where remand was granted). Ingenio’s choice to leave
`unremedied the Board’s mistake does not shield it from es-
`toppel as to a claim it included in its IPR petition.
`Ingenio also relies on Shaw in opposing IPR estoppel.
`Appellees’ Br. 9–10. In Shaw, the appellant had been suc-
`cessful in partially invalidating the claims of a certain pa-
`tent. Shaw, 817 F.3d at 1297. The petitioner included a
`huge number of unpatentability grounds (fifteen) in its pe-
`tition. The Board, according to its then-current practice,
`instituted review of only some of the grounds, denying oth-
`ers as redundant. Id. at 1296–97. One ground that was
`denied as redundant relied on a prior art reference called
`“Payne” as allegedly rendering invalid certain claims. Id.
`at 1296. In the end, the Board determined that the claims
`had not been shown to be unpatentable based on the


`Case: 22-1016 Document: 42 Page: 11 Filed: 08/17/2022
`instituted ground. Id. at 1297. The Board did not address
`the non-instituted grounds, including Payne. Id.
`The petitioner sought a writ of mandamus from our
`court to instruct the Board to reconsider its redundancy de-
`cision and to institute IPR on the Payne ground. One ar-
`gued basis for the writ was that the petitioner “may be
`estopped from arguing the [Payne] ground in any future
`proceedings.” Id. at 1299. Our court denied the request for
`mandamus, agreeing with the PTO (who intervened in that
`case) that “the denied ground never became part of the
`IPR.” Id. at 1300. Accordingly, the denied ground was not
`raised nor could it have been reasonably raised “during”
`the IPR—i.e., after institution—and thus the petitioner
`would not be estopped. Id. Shaw, therefore, held that un-
`patentability grounds that were in a petition but rejected
`by the Board at institution were not subject to IPR estop-
`Ingenio argues that it should not be estopped because,
`as in Shaw, claim 27 was not considered “during” the IPR,
`“which only begins after institution” and claim 27 “was not
`a part of the Board’s Final Written Decision.” Appellees’
`Br. 9–10. Ingenio’s reliance on Shaw is misplaced.
`We recently overruled Shaw. Caltech, 25 F.4th at 991.
`In Caltech, we relied on SAS’s abrogation of the Board’s
`practice of partial institutions as undermining Shaw’s ra-
`tionale. To give effect to the language “reasonably could
`have raised,” we held that “estoppel applies not just to
`claims and grounds asserted in the petition and instituted
`for consideration by the Board, but to all grounds not stated
`in the petition but which reasonably could have been as-
`serted against the claims included in the petition.” Id.
`at 991. Here, claim 27 was “included in the petition” and
`there is no reasonable argument that Ingenio could not
`have raised Dezonno against that claim. And under SAS,
`Ingenio was entitled to have all of its claims and grounds
`considered after institution. See SAS, 138 S. Ct. at 1355


`Case: 22-1016 Document: 42 Page: 12 Filed: 08/17/2022
`(“Much as in the civil litigation system it mimics, in an in-
`ter partes review the petitioner is master of its complaint
`and normally entitled to judgment on all of the claims it
`raises, not just those the decisionmaker might wish to ad-
`dress.”); see also PGS Geophysical AS v. Iancu, 891 F.3d
`1354, 1360 (Fed. Cir. 2018) (“We will treat claims and
`grounds the same in considering the SAS issues currently
`before us.”).2 Thus, Ingenio’s reliance on Shaw is out of
`date and IPR estoppel applies.3
`Ingenio hypothesizes that “[i]t is equally likely the
`PTAB would have rejected the entire petition instead of in-
`stituting the entire petition in the post-SAS world.” Appel-
`lees’ Br. 11 n.1. Perhaps. See, e.g., BioDelivery, 935 F.3d
`at 1366–67. But if that were the case, estoppel would not
`apply at all because the IPR would not have “result[ed] in
`a final written decision under section 318(a).” § 315(e)(2).
`3 Even if Shaw had not been overruled, its exemp-
`tion would not apply here. In Shaw, this court held that
`IPR estoppel does not apply to grounds not instituted by
`the Board. If Ingenio asserted in district court that Free-
`man in view of Lewis rendered obvious claim 27—the
`ground that Ingenio pressed in its IPR petition but was de-
`nied by the Board—it would have had a much stronger ar-
`gument that its case is analogous to Shaw. Here, Ingenio
`chose not to assert that Dezonno anticipated claim 27 in its
`petition and put all its eggs in the Freeman basket. In
`other words, the Board was never given the chance to con-
`sider whether Dezonno anticipated claim 27. Thus, Shaw
`would not apply because the Board never denied institu-
`tion of claim 27 as anticipated by Dezonno. Ingenio argues
`that, like in Shaw, “there was no means by which [Ingenio]
`could have raised the invalidity of Claim 27 during the
`IPR.” Appellees’ Br. 10. That is incorrect. As explained
`above, Ingenio could have sought a SAS remand.


`Case: 22-1016 Document: 42 Page: 13 Filed: 08/17/2022
`We therefore reverse the district court and hold that
`Ingenio is estopped under 35 U.S.C. § 315(e)(2) from assert-
`ing anticipation of claim 27 by Dezonno, the only invalidity
`basis applied by the district court.
`Next, we turn to the district court’s denial of Click-to-
`Call’s request to amend its listing of asserted claims to add
`claims 24 and 28, which were not challenged in the IPR.
`This is a decision concerning the management of a district
`court’s case docket, a decision we review under a highly
`deferential lens for an abuse of discretion. S&W Enters.,
`L.L.C. v. SouthTrust Bank of Ala., NA, 315 F.3d 533, 535
`(5th Cir. 2003) (“We review for abuse of discretion the dis-
`trict court’s denial of leave to amend.”); see also Alpek Pol-
`yester, S.A. de C.V. v. Polymetrix AG, No. 2021-1706,
`2021 WL 5974163, at *8 (Fed. Cir. Dec. 16, 2021) (“We de-
`fer to the broad discretion of the district court to manage
`its own docket.”). Because the district court did not abuse
`its discretion in this regard, we affirm.
`In October 2013, Click-to-Call selected eight patent
`claims for assertion against defendants at the district
`court. J.A. 1258. The Board shortly thereafter partially
`instituted IPR on the asserted patent. J.A. 1567–68. At
`that time, Click-to-Call did not request to amend its listing
`of selected claims at the district court.
`Ingenio then moved to stay the district court case the
`following month. J.A. 1260; J.A. 39 (D.I. 144). The district
`court granted the stay. Click-to-Call Techs. LP v. Ingenio,
`Inc., Case No. A-12-CA-465-SS, 2013 WL 11311782 (W.D.
`Tex. Dec. 5, 2013). One rationale that the district court
`provided for granting the stay was that the IPR would
`“simplify the issues in th[e] case” because “a[ll] but one of
`the claims to be asserted at trial in this case” were at issue
`in the IPR. Id. at *2. Clearly, the district court did not
`envision adding other claims to the case following the IPR.
`And Click-to-Call has not, on appeal, pointed us to any


`Case: 22-1016 Document: 42 Page: 14 Filed: 08/17/2022
`briefing or statements before the district court where it
`hinted at such an addition before the stay.
`The case was stayed for more than six years while the
`Board appeals were resolved. During that time, the parties
`filed a number of status reports with the district court. At
`no time during the stay did Click-to-Call request leave to
`amend its asserted claims. Oral Arg. at 11:44–12:12,
`2-1016_06092022.mp3 (noting lack of communication with
`the court during the stay regarding which claims were be-
`ing asserted).
`The Board issued its final written decision in 2014,
`during the stay. Even though Click-to-Call was aware of
`the Board’s reasoning holding the asserted claims un-
`patentable over Dezonno since 2014, it did not request
`leave to amend its asserted claims until six years later,
`when it filed its response to Ingenio’s summary judgment
`motion in 2020. J.A. 1720–21. And even that request was
`cursory, with Click-to-Call arguing “[g]ood cause exists” to
`allow amendment merely because “only three claims [are]
`at issue, Click-to-Call promptly gave notice after the IPR
`was final that it would pursue all three claims without
`timely objection from defendants, and defendants are not
`prejudiced.” J.A. 1721. Click-to-Call provided no further
`justification for this request.
`The district court addressed this terse request from
`Click-to-Call in an equally short denial, determining
`“Click-to-Call failed to provide good cause to amend its no-
`tice of claims selected for trial.” J.A. 5. The district court
`also adopted the magistrate judge’s recommendation,
`which reasoned that “[c]ourts generally refuse to reopen
`what has been decided previously” and recommended deny-
`ing Click-to-Call’s request to amend. J.A. 14. Like the dis-
`trict court, the magistrate judge found “Click-to-Call has
`not provided good cause for leave to amend nearly eight
`years after its original selection of claims for trial.” Id. We


`Case: 22-1016 Document: 42 Page: 15 Filed: 08/17/2022
`see no abuse of discretion in this decision by the district
`Click-to-Call makes two principal arguments on ap-
`peal: (1) the parties agreed that claims 24 and 28 were in
`the case after the stay was lifted and (2) the district court
`failed to properly analyze its request for amendment under
`the factors enumerated in S&W Enterprises. Appellant’s
`Br. 30–34. Neither argument is persuasive.
`First, Click-to-Call argues that there was a “clear
`agreement” between it and Ingenio that claims 24 and 28
`were in the case. Appellant’s Br. 30. We disagree. Upon
`restarting the district court case, Click-to-Call expressed
`that “it intends to proceed with litigation of the asserted
`claims not affected by the Inter Partes Review proceedings:
`specifically, claims 24, 27, and 28.” J.A. 1415. But, at that
`time, claims 24 and 28 were not among the “asserted
`claims” because Click-to-Call had not sought to amend.
`Click-to-Call also points to Ingenio’s response at that
`time that it would seek invalidity of all three claims as
`some sort of an admission that claims 24 and 28 were in
`the case. Appellant’s Br. 30. But it is unsurprising that a
`defendant would assert invalidity of any claim a plaintiff
`purported to assert. This does not act as a waiver of In-
`genio’s right to challenge whether these claims were
`properly part of the case and does not prohibit the district
`court from denying Click-to-Call’s subsequent request to
`Second, Click-to-Call argues the district court abused
`its discretion in denying Click-to-Call’s proposed amend-
`ment by failing to consider the factors enumerated in S&W
`Enterprises. Appellant’s Br. 31–34. But, as we described
`above, Click-to-Call’s request to amend consisted of a two-
`sentence paragraph that did not even cite S&W Enter-
`prises, let alone analyze the factors therein. J.A. 1721. We
`will not fault the district court for failing to apply a case
`that Click-to-Call did not even present to the district court.


`Case: 22-1016 Document: 42 Page: 16 Filed: 08/17/2022
`And we refuse to find an abuse of discretion in the district
`court’s short analysis, considering the minimal effort Click-
`to-Call put into making its argument. Cf. Novartis AG
`v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir.
`2017) (refusing to fault the lower tribunal for “arguably
`limited treatment” of arguments that were only tersely
`made). Nor will we analyze those factors de novo in the
`first instance, as Click-to-Call would have us do. Appel-
`lant’s Br. 32–34 (analyzing the factors for the first time on
`The district court did not abuse its discretion in refus-
`ing to allow Click-to-Call to amend its selection of claims
`for trial to add claims 24 and 28. Accordingly, we affirm
`that portion of the district court’s decision.
`We reverse the district court’s determination that In-
`genio is not estopped under 35 U.S.C. § 315(e)(2) from as-
`serting invalidity of claim 27 based on anticipation by
`Dezonno and its summary judgment of invalidity. We thus
`remand for further proceedings regarding claim 27. We af-
`firm the district court’s denial of Click-to-Call’s request to
`amend its asserted claims to include claims 24 and 28.
`No costs.

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