Click-To-Call Technologies, Lp v. Ingenio, Inc.

45 F.4th 1363

• Court: Court of Appeals for the Federal Circuit
• Decided: August 17, 2022
• Docket: 22-1016
• Status: Published

Opinion

Case: 22-1016 Document: 42 Page: 1 Filed: 08/17/2022

United States Court of Appeals for the Federal Circuit ______________________

CLICK-TO-CALL TECHNOLOGIES LP, Plaintiff-Appellant

v.

INGENIO, INC., DBA KEEN, ETHER, THRYV, INC., Defendants-Appellees ______________________

2022-1016 ______________________

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 MELTON, MAX LALON TRIBBLE, JR., Houston, TX.

AMANDA N. BROUILLETTE, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for defendants-appel- lees. Also represented by DAVID CLAY HOLLOWAY, MITCHELL G. STOCKWELL. ______________________ 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

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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 amend. BACKGROUND 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- tially 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- zonno.

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

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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). DISCUSSION 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 (1986). 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) (“Caltech”). 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- cretion). I 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

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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 (adopting 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- persuasive. 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.— . . . (2) CIVIL ACTIONS AND OTHER 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- view. 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

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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 Dezonno. 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 18:30–19:10, https://oralarguments.cafc.uscourts.gov/de- 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

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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- pel. 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

2 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

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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. II 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, https://oralarguments.cafc.uscourts.gov/default.aspx?fl=2 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

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see no abuse of discretion in this decision by the district court. 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 amend. 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 appeal). 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. CONCLUSION 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. REVERSED-IN-PART, AFFIRMED-IN-PART, AND REMANDED COSTS No costs.