United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

Decided: August 16, 2018

______________________ 

 PETER J. AYERS, Law Office of Peter J. Ayers, Austin, 

TX, for appellant. 

 STANLEY JOSEPH PANIKOWSKI, III, DLA Piper US LLP, 

San Diego, CA, argued for all appellees. Appellees Ingenio, Inc., YellowPages.com, LLC represented by MITCHELL 
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

G. STOCKWELL, Kilpatrick Townsend & Stockton LLP, 

Atlanta, GA. Appellee YellowPages.com, LLC also represented by DAVID CLAY HOLLOWAY. 

 MOLLY R. SILFEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by SARAH E. CRAVEN, MARY 

L. KELLY, THOMAS W. KRAUSE. 

______________________ 

Before O’MALLEY and TARANTO, Circuit Judges, and 

STARK, Chief District Judge*. 

Opinion for the court filed by Circuit Judge O’MALLEY, in 

which TARANTO, Circuit Judge, and STARK, Chief District

Judge, join.

Footnote 3 of the opinion is joined by PROST, Chief Judge, 

NEWMAN, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, 

CHEN, HUGHES, and STOLL, Circuit Judges. 

Opinion concurring in footnote 3 of the opinion filed by 

Circuit Judge TARANTO. 

Opinion dissenting from footnote 3 of the opinion filed by 

Circuit Judge DYK, in which Circuit Judge LOURIE joins. 

O’MALLEY, Circuit Judge.

This long-marooned case returns to us after a voyage 

alongside two others interpreting the scope of 35 U.S.C. 

§ 314(d)’s “No Appeal” provision and its applicability to 

time-bar determinations under 35 U.S.C. § 315(b): Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), 

and Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 

(Fed. Cir. 2018) (en banc). Because we have held en banc

 

* The Honorable Leonard P. Stark, Chief District 

Judge, United States District Court for the District of 

Delaware, sitting by designation.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

“that the time-bar determinations under § 315(b) are 

appealable,” Wi-Fi One, 878 F.3d at 1367, we address for 

the first time the merits of Appellant Click-to-Call Technologies, LP’s (“CTC”) contention that the Patent Trial 

and Appeal Board (“Board”) erred in determining that an

inter partes review (“IPR”) petition challenging claims of

CTC’s patent was not time-barred under § 315(b).

We conclude that the Board committed legal error in 

rendering its § 315(b) determination, and reject the 

proposed, alternative grounds for affirmance. Because 

the subject petition was time-barred, the Board lacked 

jurisdiction to institute the IPR proceedings. Accordingly, 

we vacate the Board’s Final Written Decision in Oracle 

Corp. v. Click-to-Call Technologies LP, No. IPR2013-

00312 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Written Decision), and remand with instructions to dismiss 

IPR2013-00312. 

I. BACKGROUND

A. The District Court Actions

On June 8, 2001, Inforocket.Com, Inc. (“Inforocket”), 

the exclusive licensee of U.S. Patent No. 5,818,836 (“the 

’836 patent”), filed a civil action in the United States 

District Court for the Southern District of New York.

Compl., Inforocket.Com, Inc. v. Keen, Inc., CA No. 1:01-cv05130-LAP (S.D.N.Y.), ECF No. 1 (Inforocket Action). 

Inforocket served a complaint asserting infringement of 

the ’836 patent on defendant Keen, Inc. (“Keen”) on 

September 14, 2001. Affidavit of Service, Inforocket

Action, ECF No. 4. 

Shortly thereafter, Keen brought its own infringement 

suit against Inforocket based on U.S. Patent No. 

6,223,165, which proceeded before the same district judge 

as the Inforocket Action. See generally Keen, Inc. v. Inforocket.Com, Inc., CA No. 1:01-cv-8226-LAP (S.D.N.Y.) 

(Keen Action). In the Keen Action, the district court 
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

granted Inforocket’s motion for summary judgment of 

noninfringement and entered judgment in favor of Inforocket in July 2002. See Order Granting Inforocket’s 

Mot. for Summ. J., Keen Action, ECF No. 47; Judgment, 

Keen Action, ECF No. 48. Keen filed a Notice of Appeal to 

this court on August 23, 2002. Notice of Appeal, Keen 

Action, ECF No. 49.

In 2003, while its appeal was pending, Keen acquired 

Inforocket as its wholly-owned subsidiary. Thereafter, 

subject to the terms of the merger, Inforocket and Keen 

stipulated to a voluntary dismissal of both suits “without 

prejudice,” and the district court dismissed both actions 

on the same day—March 21, 2003. See Stipulation and 

Order of Dismissal, Inforocket Action; Stipulation and 

Order of Dismissal, Keen Action.1 Later in 2003, Keen 

changed its name to Ingenio, Inc. (“Ingenio”).

On April 20, 2004, Ingenio requested ex parte reexamination of claims 1–21 of the ’836 patent. The Director of 

the Patent & Trademark Office (“Director”) granted 

Ingenio’s request, and issued an ex parte reexamination 

certificate on December 30, 2008. Several claims were 

cancelled, others were determined to be patentable as 

amended, and new claims 22–30 were added.

Meanwhile, in late 2007, non-party AT&T announced 

its plan to acquire Ingenio and integrate Ingenio and 

YellowPages.com, also owned by AT&T. In January 2008, 

Ingenio was acquired by a subsidiary of AT&T Inc. and its 

name was changed to Ingenio, LLC (also “Ingenio”). In 

April 2012, AT&T sold its interest in YellowPages.com 

and Ingenio.

 

1 The appeal in the Keen Action was also dismissed 

by agreement of the parties on March 19, 2003, under 

Fed. R. App. P. 42(b). Keen, Inc. v. Inforocket.Com, Inc., 

60 F. App’x 809 (Fed. Cir. 2003).
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

CTC subsequently acquired the ’836 patent, and, on 

May 29, 2012, asserted patent infringement claims

against multiple parties in the United States District 

Court for the Western District of Texas. Compl., Click-toCall Techs. LP v. AT&T, Inc., No. 1:12-cv-00465-LY (W.D. 

Tex.), ECF No. 1 (AT&T Action); Compl., Click-to-Call 

Techs. LP v. Oracle Corp., No. 1:12-cv-00468-LY (W.D. 

Tex.), ECF No. 1 (Oracle Action). Among the defendants

named in the AT&T Action was Ingenio, which subsequently changed its name to YP Interactive LLC (“YP 

Interactive”). Both the AT&T Action and the Oracle 

Action are currently stayed.

B. The IPR Proceedings

On May 28, 2013, Ingenio, together with Oracle Corp., 

Oracle OTC Subsidiary LLC, and YellowPages.com LLC

(together, “Petitioners” or “Appellees”),2 filed a single IPR 

petition challenging claims of the ’836 patent on anticipation and obviousness grounds. CTC filed its Preliminary 

 

2 As we discuss in Section II(D)(2), infra, Petitioners identified themselves as a singular “Petitioner” in 

their IPR petition. For simplicity, we refer to the collective as “Petitioners” in this Opinion. We use this convention even though Oracle Corp. and Oracle OTC Subsidiary 

LLC filed an unopposed motion to withdraw from further 

participation in this appeal on June 14, 2018, after settling their disputes with CTC. See Mot. to Withdraw, No. 

15-1242 (Fed. Cir. June 14, 2018), ECF No. 121. These 

entities noted that their “motion does not affect the participation of the non-Oracle Appellees, YellowPages.com 

LLC and YP Interactive LLC, in this appeal.” Id. at 1. As

neither the other Petitioners’ participation in this appeal 

nor the outcome of this case would be affected by granting 

the Oracle entities’ requested relief, we granted their 

motion. See Order Granting Mot. to Withdraw, No. 15-

1242 (Fed. Cir. July 24, 2018), ECF No. 123.
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

Response on August 30, 2013, contending, among other 

things, that § 315(b) statutorily barred institution of IPR 

proceedings, and that Ingenio lacked standing under 37 

C.F.R. § 42.101(b). In its Preliminary Response, CTC 

presented evidence that Ingenio was served with a complaint alleging infringement of the ’836 patent in 2001.

The Board held a conference call with counsel for CTC 

and Petitioners in September 2013, in part to discuss

CTC’s § 315(b) argument. The Board then issued an 

order pursuant to 37 C.F.R. § 42.5 in which it requested 

additional briefing addressing the terms of the dismissal 

of the Inforocket Action. Both parties submitted additional briefing in compliance with the Board’s request.

The Board issued its Institution Decision on October 

30, 2013. With respect to the § 315(b) issue, the Board 

acknowledged that Ingenio was served with a complaint 

alleging infringement of the ’836 patent on June 8, 2001 

and found CTC’s timeline of events “helpful in determining whether Ingenio, LLC is barred from filing an inter 

partes review of the ’836 patent.” J.A. 287. The Board 

then recited the language of § 315(b), and stated that the 

“statute requires that the service date of the complaint be 

more than one year before the petition was filed—in this 

case more than one year before May 28, 2013.” J.A. 288. 

Notwithstanding the above, the Board concluded that 

CTC “has not established that service of the complaint in 

the [Inforocket Action] bars Ingenio, LLC from pursuing 

an inter partes review for the ’836 patent” because that

infringement suit was “dismissed voluntarily without 

prejudice on March 21, 2003, pursuant to a joint stipulation under Fed. R. Civ. P. 41(a).” J.A. 288–89. The Board 

wrote that “[t]he Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties 

as though the action had never been brought,” citing this 

court’s decisions in Graves v. Principi, 294 F.3d 1350 

(Fed. Cir. 2002), and Bonneville Associates, Ltd. Partner-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

ship v. Barram, 165 F.3d 1360 (Fed. Cir. 1999). J.A. 289. 

The Board also relied on Wright & Miller’s Federal Practice and Procedure treatise for the proposition that, “as 

numerous federal courts have made clear, a voluntary 

dismissal without prejudice under Rule 41(a) leaves the 

situation as if the action never had been filed.” J.A. 289 

(quoting 9 Wright, Miller, Kane, and Marcus, Federal 

Prac. & Proc. Civ. § 2367 (3d ed.)). The Board concluded 

by determining that “the dismissal of the infringement 

suit brought by Inforocket against Keen—now Ingenio, 

LLC—nullifies the effect of the service of the complaint 

and, as a consequence, does not bar Ingenio, LLC or any 

of the other Petitioners from pursuing an inter partes

review of the ’836 patent.” J.A. 289. In light of this 

determination, the Board did not address the following 

two contingent questions: (1) whether the patent at issue 

in the Inforocket Action is the same patent at issue in the 

IPR due to amendments made in the interim; and 

(2) whether § 315(b)’s time bar should be determined on a 

“petitioner-by-petitioner” basis. J.A. 289–90.

CTC requested rehearing of this § 315(b) determination, but the Board denied its request. CTC filed its 

Patent Owner Response on January 16, 2014, addressing 

the merits of Petitioners’ unpatentability arguments and 

again requesting dismissal of the petition because the 

Board lacked statutory authority to review the ’836 patent 

under § 315(b), and because Petitioners lacked standing 

under 37 C.F.R. § 42.101(b).

The Board issued its Final Written Decision on October 28, 2014, reaffirming its conclusion that Petitioners 

were not barred from filing an IPR petition by stating 

that, “because [the Inforocket Action] 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.” Final Written Decision at *7. The Board also 

determined that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

26, 29, and 30 either were anticipated by or would have 

been obvious in view of certain prior art references. Id. at 

*14. Those merits determinations are not at issue in this 

appeal.

C. The History of this Appeal

CTC filed its Notice of Appeal on November 25, 2014, 

and briefing commenced shortly thereafter. In April 

2015, the Director intervened solely to address the 

§ 315(b) time bar issue. See Intervenor Docketing Statement, No. 15-1242 (Fed. Cir. Apr. 1, 2015), ECF No. 28.

On October 12, 2015, counsel for Appellees submitted 

a Rule 28(j) letter informing the court of our decision in 

Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 

652 (Fed. Cir. 2015), arguing that Achates mandates 

dismissal of the appeal for lack of appellate jurisdiction. 

Rule 28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. 

Cir. Oct. 12, 2015), ECF No. 64. In light of Achates, this

panel subsequently waived oral argument, and, on November 12, 2015, issued an order dismissing CTC’s appeal 

for lack of jurisdiction. Click-to-Call Techs., LP v. Oracle 

Corp., 622 F. App’x 907 (Fed. Cir. 2015) (per curiam)

(Click-to-Call I). 

CTC petitioned for writ of certiorari, and, on June 27, 

2016, the Supreme Court granted the petition, vacated 

this court’s judgment in Click-to-Call I, and remanded for 

further consideration in light of its opinion in Cuozzo. 

Click-to-Call Techs., LP v. Oracle Corp., No. 15-1014 

(June 27, 2016). We directed the parties to file supplemental briefs and the parties complied with our directive.

On September 21, 2016, counsel for Appellees filed a

second letter regarding supplemental authority, this time 

informing the court of our decision in Wi-Fi One, LLC v. 

Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016). Rule 

28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. Cir. 

Sept. 21, 2016), ECF No. 83. In this letter, Appellees 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

argued that, because Wi-Fi One confirmed that Achates

remained good law, CTC’s appeal should again be dismissed for lack of appellate jurisdiction. We agreed with 

Appellees that we were bound by our precedents in Wi-Fi 

One and Achates, and on November 17, 2016, dismissed 

CTC’s appeal for a second time. Click-to-Call Techs., LP 

v. Oracle Corp., No. 15-1242, 2016 WL 6803054 (Fed. Cir. 

Nov. 17, 2016) (Click-to-Call II). 

On December 5, 2016, CTC filed a petition for en banc 

rehearing, principally arguing that Achates and Wi-Fi 

One should be overruled. Pet. for Reh’g En Banc, No. 15-

1242 (Fed. Cir. Dec. 5, 2016), ECF No. 91. Less than one 

month later, CTC’s wish was partially granted when this 

court agreed to consider en banc whether it should overrule Achates and hold that judicial review is available for 

a patent owner to challenge the Director’s determination 

that the petitioner satisfied the timeliness requirement of 

35 U.S.C. § 315(b). Order, Wi-Fi One, LLC v. Broadcom 

Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir. Jan. 4, 

2017) (en banc), ECF No. 67. The panel in this case 

subsequently held CTC’s petition for rehearing in abeyance pending the outcome of Wi-Fi One. 

On January 8, 2018, we issued our en banc decision in 

Wi-Fi One, expressly overruling Achates and holding that 

time-bar determinations under § 315(b) are appealable. 

878 F.3d at 1367. We subsequently granted CTC’s petition for rehearing en banc, which we construed as a 

petition for panel rehearing, and authorized supplemental 

briefing regarding the merits of the Board’s compliance 

with § 315(b). Order, No. 15-1242 (Fed. Cir. Jan. 19, 

2018), ECF No. 99. CTC, Petitioners, and the Director, as 

Intervenor, all filed supplemental briefs in February and 

March of this year.

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

II. DISCUSSION

A. Section 315(b) and Voluntary Dismissals

Without Prejudice

The principal question on appeal is whether the Board 

erred in interpreting the phrase “served with a complaint 

alleging infringement of [a] patent” recited in § 315(b)

such that the voluntary dismissal without prejudice of the 

civil action in which the complaint was served “does not 

trigger” the bar. Final Written Decision, slip op. at 12. 

We hold that it did.3

1. Legal Standards

We review the Board’s statutory interpretation pursuant to Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), Auer v. Robbins, 

519 U.S. 452 (1997), and United States v. Mead Corp., 533 

U.S. 218, 229–30 (2001). Chevron requires that a court 

reviewing an agency’s construction of a statute it administers first discern “whether Congress has directly spoken 

to the precise question at issue.” 467 U.S. at 842. If the 

answer is yes, the inquiry ends, and the reviewing court

must give effect to Congress’s unambiguous intent. Id. at 

842–43. If the answer is no, the court must consider 

“whether the agency’s answer [to the precise question at 

 

3 The en banc court formed of PROST, Chief Judge, 

NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA, 

WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit 

Judges, considered whether 35 U.S.C. § 315(b)’s time bar 

applies to bar institution when an IPR petitioner was 

served with a complaint for patent infringement more 

than one year before filing its petition, but the district 

court action in which the petitioner was so served was 

voluntarily dismissed without prejudice. The en banc

court holds that § 315(b)’s time bar applies in such a 

scenario.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

issue] is based on a permissible construction of the statute.” Id. at 843. The agency’s “interpretation governs in 

the absence of unambiguous statutory language to the 

contrary or unreasonable resolution of language that is 

ambiguous.” United States v. Eurodif S.A., 555 U.S. 305, 

316 (2009) (citing Mead, 533 U.S. at 229–30). 

When a statute expressly grants an agency rulemaking authority and does not “unambiguously direct[ ]” the 

agency to adopt a particular rule, the agency may “enact 

rules that are reasonable in light of the text, nature, and 

purpose of the statute.” Cuozzo, 136 S. Ct. at 2142 (citing 

Mead, 533 U.S. at 229, and Chevron, 467 U.S. at 843). 

When the Director does adopt rules, “[w]e accept the 

[Director’s] interpretation of Patent and Trademark Office 

regulations unless that interpretation is plainly erroneous 

or inconsistent with the regulation.” In re Sullivan, 362 

F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v. 

Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266 

(Fed. Cir. 2003) (citing Auer, 519 U.S. at 461–62, and 

Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414 

(1945))) (internal quotations omitted). 

Where an agency instead engages in “interpretive,” 

rather than “formal,” rulemaking, a lower level of deference might apply. See Mead, 533 U.S. at 230–31 (describing notice-and-comment as “significant . . . in pointing to 

Chevron authority”); Reno v. Koray, 515 U.S. 50, 61 (1995)

(according “some deference” to an interpretive rule that 

“do[es] not require notice and comment” (citations omitted)). The Supreme Court has explained that “[t]he fair 

measure of deference to an agency administering its own 

statute has been understood to vary with circumstances, 

and courts have looked to the degree of the agency’s care, 

its consistency, formality, and relative expertness, and to 

the persuasiveness of the agency’s position.” Mead, 553 

U.S. at 228 (footnotes omitted) (citing Skidmore v. Swift 

& Co., 323 U.S. 134, 139–40 (1944)).
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

2. Chevron Step One

We begin our analysis of the Board’s interpretation of 

§ 315(b) by construing the provision. “As in any case of 

statutory construction, our analysis begins with the 

language of the statute.” Hughes Aircraft Co. v. Jacobson, 

525 U.S. 432, 438 (1999) (internal quotation marks and 

citation omitted). “The first step ‘is to determine whether 

the language at issue has a plain and unambiguous 

meaning with regard to the particular dispute in the 

case.’” Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438, 

450 (2002) (quoting Robinson v. Shell Oil Co., 519 U.S. 

337, 340 (1997)). In doing so, we “must read the words ‘in 

their context and with a view to their place in the overall 

statutory scheme.’” King v. Burwell, –– U.S. ––, 135 S. 

Ct. 2480, 2489 (2015) (quoting FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 133 (2000)). This is 

because statutory “[a]mbiguity is a creature not of definitional possibilities but of statutory context.” Brown v. 

Gardner, 513 U.S. 115, 118 (1994). Importantly, we may 

not conclude that a statutory provision is ambiguous until 

we conclude that resort to all standard forms of statutory 

interpretation are incapable of resolving any apparent 

ambiguity which might appear on the face of the statute. 

See Chevron, 467 U.S. at 843 n.9. And, in discerning 

whether a statute is ambiguous, we must take care not to 

weigh competing policy goals, for “[i]t is Congress’s job to 

enact policy and it is th[e] [c]ourt’s job to follow the policy 

Congress has prescribed.” SAS Inst., Inc. v. Iancu, 138 S. 

Ct. 1348, 1358 (2018).

a. Plain and Unambiguous Language

We “[s]tart where the statute does.” SAS, 138 S. Ct. 

at 1355. Section 315(b), titled “Patent Owner’s Action,” 

provides that an IPR “may not be instituted if the petition 

requesting the proceeding is filed more than 1 year after 

the date on which the petitioner, real party in interest, or 

privy of the petitioner is served with a complaint alleging 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

infringement of the patent.” 35 U.S.C. § 315(b) (emphasis 

added). The statute does not contain any exceptions or 

exemptions for complaints served in civil actions that are 

subsequently dismissed, with or without prejudice. Nor 

does it contain any indication that the application of 

§ 315(b) is subject to any subsequent act or ruling. Instead, the provision unambiguously precludes the Director from instituting an IPR if the petition seeking 

institution is filed more than one year after the petitioner, 

real party in interest, or privy of the petitioner “is served 

with a complaint” alleging patent infringement. Simply 

put, § 315(b)’s time bar is implicated once a party receives 

notice through official delivery of a complaint in a civil 

action, irrespective of subsequent events. 

The “ordinary, contemporary, common meaning[s]” of 

the operative terms “served” and “complaint” support the 

understanding that it is wholly irrelevant to the § 315(b) 

inquiry whether the civil action in which the complaint

was filed is later voluntarily dismissed without prejudice. 

Black’s Law Dictionary defines “serve” as “[t]o make legal 

delivery of (a notice or process)” or “[t]o present (a person) 

with a notice or process as required by law,” and defines 

“service” as “[t]he formal delivery of a writ, summons, or 

other legal process[.]” Black’s Law Dictionary 1491 (9th 

ed. 2009). It defines “complaint” as “[t]he initial pleading 

that starts a civil action and states the basis for the 

court’s jurisdiction, the basis for the plaintiff’s claim, and 

the demand for relief.” Id. at 323. These definitions 

confirm that the plain meaning of the phrase “served with 

a complaint” is “presented with a complaint” or “delivered 

a complaint” in a manner prescribed by law. Indeed, at 

least one Board decision has interpreted the phrase 

“served with a complaint” in precisely this manner: “the 

legally-charged text ‘served with a complaint’ is used 

ordinarily in connection with the official delivery of a 

complaint in a civil action.” Amkor Tech., Inc. v. Tessera, 
14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

Inc., No. IPR2013-00242, slip op. at 9 (P.T.A.B. Jan. 31, 

2014), Paper No. 98.

This reading of § 315(b) is confirmed by our en banc 

decision in Wi-Fi One, in which we held that the provision

sets forth a “condition precedent to the Director’s authority to act,” based on the “timely filing of a petition.” 878 

F.3d at 1374. Indeed, we observed that, “if a petition is 

not filed within a year after a real party in interest, or 

privy of the petitioner is served with a complaint, it is 

time-barred by § 315(b), and the petition cannot be rectified and in no event can IPR be instituted.” Id. at 1374 

n.9 (emphases added). This is so because § 315(b)’s time 

bar concerns “real-world facts that limit the agency’s 

authority to act under the IPR scheme,” reflecting Congress’s “balancing [of] various public interests.” Id. at 

1374; see id. at 1377 (O’Malley, J., concurring) (explaining 

that “§ 315(b) codifies one of the ‘important procedural 

rights’ that Congress chose to afford patent owners in the 

IPR context” (quoting Lindahl v. Office of Pers. Mgmt., 

470 U.S. 768, 791 (1985))). It is impossible to square WiFi One’s “cannot be rectified” and “in no event” language 

with the possibility that subsequent events in the civil 

action might operate to “nullify” service of the complaint 

for the purpose of § 315(b)’s time bar.4

 

4 Although the stipulations of dismissal in this case 

were jointly entered by the predecessors of both CTC and 

Ingenio, we acknowledge that plaintiffs in civil suits can 

seek dismissal without prejudice pursuant to Rule 

41(a)(1) of the Federal Rules of Civil Procedure in certain 

circumstances without a court order and without any 

involvement by the defendant. This reality does not alter 

our conclusion that the subsequent dismissal of a civil 

action is irrelevant to whether a petitioner, real party in 

interest, or privy of the petitioner was previously “served 

with a complaint” within the meaning of § 315(b). To the 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15

Moreover, adopting the Board’s preferred construction 

of the phrase “served with a complaint” in § 315(b) “would 

impose additional conditions not present in the statute’s 

text.” Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d 

1350, 1363 (Fed. Cir. 2017) (citing Norfolk Dredging Co. v. 

United States, 375 F.3d 1106, 1111 (Fed. Cir. 2004), for its 

holding that courts must avoid “add[ing] conditions” to 

the applicability of a statute that do not appear in the 

provision’s text). Congress specifically addressed the 

effect of a dismissal of an IPR petitioner’s district court 

action in § 315(a)(2), but did not include any similar 

language in § 315(b). Congress also demonstrated that it 

knew how to provide an exception to the time bar by 

including a second sentence in the provision: “The time 

limitation set forth in the preceding sentence shall not 

apply to a request for joinder under subsection (c).” 35 

U.S.C. § 315(b). Similarly, Congress could have chosen to 

include a variation of the phrase “unless the action in 

which the complaint was served was later dismissed 

without prejudice,” but it did not do so. We reject the 

Board’s effort to graft this additional language into 

§ 315(b). Cf. Return Mail, 868 F.3d at 1363 (rejecting 

appellant’s argument, in part, because “Congress could 

have easily specified the phrase ‘sued for infringement’ to 

require being sued for infringement under 35 U.S.C. § 271 

or otherwise excluded [28 U.S.C.] § 1498 suits from the 

definition of ‘sued for infringement,’ but it did not do so”).

b. Legislative History

The legislative history of § 315(b) further supports the

understanding that its time bar concerns only the date on 

which the complaint was formally served. For example, 

 

extent the parties debate whether the Board’s interpretation of § 315(b) results in good policy, “who should win 

that debate isn’t our call to make.” SAS, 138 S. Ct. at 

1358. 
16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

during the March 2011 Senate debates, Senator Kyl made 

clear that, under the version of § 315(b) then being considered, “if a party has been sued for infringement and 

wants to seek inter partes review, he must do so within 6 

months of when he was served with the infringement

complaint.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) 

(statement of Sen. Kyl) (emphases added). This unequivocal reference to the date on which an accused infringer 

was served suggests that Congress did not contemplate 

subsequent events “nullifying” § 315(b)’s time bar.

The legislative history also clarifies that Congress 

chose the date of service, as opposed to some other event, 

as the trigger for § 315(b)’s time bar because service of a 

complaint is the seminal notice-conferring event in a 

district court action. As the Supreme Court has explained, “the core function of service is to supply notice of 

the pendency of a legal action, in a manner and at a time 

that affords the defendant a fair opportunity to answer 

the complaint and present defenses and objections.” 

Henderson v. United States, 517 U.S. 654, 672 (1996)

(emphasis added). During the September 2011 Senate 

debates, Senator Kyl offered the following justification for 

extending the previously contemplated six-month time 

bar to one year. He observed that companies, in particular those in the high-technology sector, “are often sued by 

[patentees] asserting multiple patents with large numbers of vague claims, making it difficult to determine in 

the first few months of the litigation which claims will be 

relevant and how those claims are alleged to read on the 

defendant’s products.” 157 Cong. Rec. S5429 (daily ed. 

Sept. 8, 2011) (statement of Sen. Kyl). Recognizing that

“[c]urrent law imposes no deadline on seeking inter partes 

reexamination,” he reasoned that, “in light of the present 

bill’s enhanced estoppels, it is important that the section 

315(b) deadline afford defendants a reasonable opportunity to identify and understand the patent claims that are 

relevant to the litigation.” Id. (emphasis added). Con-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17

gress, in “balancing various public interests,” decided to 

use the “real-world fact[]” of when a petitioner, real party 

in interest, or privy of the petitioner was “served with a 

complaint” to trigger § 315(b). Wi-Fi One, 878 F.3d at 

1374. 

c. Conclusion Regarding Chevron Step One

“Because a statute’s text is Congress’s final expression 

of its intent, if the text answers the question, that is the 

end of the matter.” Timex V.I., Inc. v. United States, 157 

F.3d 879, 882 (Fed. Cir. 1998) (citations omitted); see also 

Cuozzo, 136 S. Ct. at 2142 (“Where a statute is clear, the 

agency must follow the statute.”). Here, the text of 

§ 315(b) clearly and unmistakably considers only the date 

on which the petitioner, its privy, or a real party in interest was properly served with a complaint. Because “the 

statutory language is unambiguous and ‘the statutory 

scheme is coherent and consistent,’” our inquiry ceases 

and we need not proceed to Chevron’s second step. Barnhart, 534 U.S. at 450 (quoting Robinson, 519 U.S. at 340). 

Simply put, there is no gap to fill or ambiguity to resolve: 

“[w]here a statute’s language carries a plain meaning, the 

duty of an administrative agency is to follow its commands as written, not to supplant those commands with

others it may prefer.” SAS, 138 S. Ct. at 1355 (citing Soc. 

Sec. Bd. v. Nierotko, 327 U.S. 358, 369 (1946)).

2. The Board’s Contrary Reasoning Is Unpersuasive

Notwithstanding the absence of any facial ambiguity 

in the phrase “served with a complaint,” the Board concluded that CTC “has not established that service of the 

complaint in the infringement suit brought by Inforocket 

against Keen bars Ingenio, LLC from pursuing an inter 

partes review for the ’836 patent.” JA. 288. To support 

this conclusion, the Board wrote that the “Federal Circuit 

consistently has interpreted the effect of such dismissals 

as leaving the parties as though the action had never 

been brought,” and cited this court’s decisions in Graves, 
18 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

294 F.3d at 1356, and Bonneville, 165 F.3d at 1364, and a 

section of Wright and Miller’s Federal Practice and Procedure treatise. Id. The Board concluded that, 

“[a]ccordingly, the dismissal of the infringement suit 

brought by Inforocket against Keen—now Ingenio, LLC—

nullifies the effect of the service of the complaint and, as a 

consequence, does not bar Ingenio, LLC or any of the 

other Petitioners from pursuing an inter partes review of 

the ’836 patent.” Id. (emphasis added).

The Board misunderstood that the text of § 315(b) is 

agnostic as to the “effect” of the service—i.e., what events 

transpired after the defendant was served. The provision 

only probes whether the petitioner, real party in interest, 

or privy of the petitioner was served with a complaint 

alleging patent infringement more than one year before 

the IPR petition was filed. We reject the Board’s interpretation of § 315(b) for this reason alone.

Even if the provision could fairly be read to consider

the “effect” of service—which it cannot—the Board’s 

reliance on the cited authorities was erroneous.5 We 

interpret the Board’s reasoning as presupposing that the 

phrase “served with a complaint” is a legal term of art 

with some latent ambiguity, necessitating the reliance on

additional interpretive aids. Assuming arguendo that the 

phrase is ambiguous, none of the authorities on which the

Board relied help resolve this ambiguity because they 

each concern fundamentally different contexts, and consequently shed no light on “whether service of a complaint 

can be nullified.” Shaw Indus. Grp., Inc. v. Automated 

Creel Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016) 

(recognizing that “we have held in other cases that dis-

 

5 We ignore for the purpose of this appeal whether 

the Board improperly placed the burden of demonstrating 

that the IPR petition was time-barred on CTC, the patent 

owner. 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 19

missals without prejudice leave the parties as though the 

action had never been brought,” but questioning “whether 

service of a complaint can be nullified”).

Both Bonneville and Graves concern the dismissal of 

an appeal in a first proceeding and the extent to which

that dismissal impacts the appellant’s ability to initiate a 

later proceeding. In the former, Bonneville, after receiving an adverse decision from a contracting officer, filed a 

notice of appeal with the General Services Administration 

Board of Contract Appeals, but thereafter “withdr[e]w” its 

notice of appeal pursuant to the Board’s rules to “pursue 

its appeal in the U.S. Claims Court.” Bonneville, 165 F.3d 

at 1362. Before the Board actually dismissed the appeal 

without prejudice—under the condition that the dismissal 

would transform into one with prejudice unless Bonneville reinstated its appeal in three years—Bonneville

brought suit in the Claims Court. Id. The Claims Court, 

however, dismissed the suit, holding that Bonneville’s 

filing of the appeal to the Board constituted an election of 

remedies that barred Bonneville from subsequently 

invoking the court’s jurisdiction. Id.

We affirmed the Claims Court’s dismissal, id., and ten 

days later, Bonneville sought to reinstate its appeal to the 

Board, arguing that it was complying with the three-year 

deadline set forth in the Board’s dismissal order, id. at 

1363. But the Board “applied the same principle that the 

federal courts had applied in construing the similar 

provision governing voluntary dismissals without prejudice in Federal Rule of Civil Procedure 41(a), namely, that 

an appeal so dismissed ‘leaves the situation as if the suit 

had never been brought.’” Id. The Board therefore concluded that,

because Bonneville voluntarily caused its appeal 

to be dismissed without prejudice in order to pursue the appeal in another forum, Bonneville is 

placed in the same position as if the first appeal 
20 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

had never been filed. The second filing does not 

relate back to the date of the first filing. Moreover, as the second complaint filed on December 29, 

1994 is a “new appeal” filed after the expiration of 

the CDA ninety-day time limit, it is untimely. We 

lack jurisdiction to hear this appeal.

Id.

We affirmed the Board’s dismissal, finding no plain 

error in the Board’s decision to treat Bonneville’s dismissal without prejudice the same way that federal courts 

would have treated it under Rule 41(a). Id. at 1364. We 

then disagreed with Bonneville’s criticism of the Board’s 

rule as a “legal fiction,” writing that its rule “merely 

states the consequence of a voluntary dismissal without 

prejudice, namely, that the appellant cannot thereafter 

resurrect the appeal after the statute of limitations on the 

cause of action has run.” Id. (emphasis added).

Graves likewise concerns an appellant’s effort to seek 

relief a second time beyond a limitations period. After 

Graves received an adverse decision from the Board of 

Veterans’ Appeals, he, proceeding pro se, timely appealed 

to the U.S. Court of Appeals for Veterans Claims (“Veterans Court”). 294 F.3d at 1353. He thereafter retained 

counsel, who filed in the Veterans Court a document 

requesting dismissal without prejudice, but neither mentioning any rules of the Veterans Court nor indicating 

that Graves intended to seek reconsideration of the 

Board’s decision. Id. The Veterans Court thereafter 

dismissed the appeal pursuant to Rule 42 of its Rules of 

Practice and Procedure. Id.

Graves then asked the Board to reconsider its initial 

decision, and after the Board denied this request, Graves 

appealed both the initial decision and the denial of his 

request for reconsideration to the Veterans Court. Id. 

The Veterans Court dismissed this appeal for lack of 

jurisdiction on the ground that it was untimely, pointing 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 21

out that, pursuant to 38 U.S.C. § 7266(a), Graves was 

required to file his notice of appeal with the Veterans 

Court within 120 days of the date the Board mailed its 

initial decision to him. Id. Citing an earlier decision, the 

Veterans Court observed that, if Graves had filed a motion for reconsideration with the Board within the 120-

day judicial appeal period, the finality of the initial Board 

decision “would have been abated” and a new 120-day 

period would have begun to run on the date that the 

Board mailed him a denial of his motion for reconsideration. Id.

We affirmed, writing that “[t]he most fundamental 

problem” facing Graves “is the fact that, as a matter of 

law, once his appeal was dismissed—for whatever purpose and whether with or without prejudice—it was as if 

the appeal had never been filed.” Id. at 1355–56. We 

noted that, in Bonneville, “the nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P. 41(a)(1) 

was applied in the context of a General Services Administration Board of Contract Appeals dismissal,” and 

concluded that “the rule is equally applicable to voluntary 

dismissals under Rule 42 of the Veterans Court.” Id. at 

1356. Thus, once Graves dismissed his initial appeal, “the 

Veterans Court no longer had jurisdiction over the action” 

and he “was barred from appealing” the Board’s decision 

because “he was in the same situation that he would have 

been in if he had never filed a notice of appeal.” Id.

These two cases are inapplicable to the issue presented in this appeal. Both concern whether an appellant’s 

filing of a notice of appeal and subsequent dismissal of 

that appeal “tolls” the jurisdictional deadline to appeal 

from the decision below. The cases, relying on the principle that “[t]he effect of a voluntary dismissal without 

prejudice pursuant to Rule 41(a) ‘is to render the proceedings a nullity and leave the parties as if the action had 

never been brought,’” Bonneville, 165 F.3d at 1364 (emphasis added) (quoting Williams v. Clarke, 82 F.3d 270, 
22 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

273 (8th Cir. 1996)), answer this question in the negative. 

More broadly, the background legal principle in these 

cases is that a party’s voluntary dismissal of its action or 

appeal will not toll a statute of limitations, and, as a 

result, a subsequently filed action or appeal must still be 

brought within the original limitations period.

Here, by contrast, the appropriate question is whether 

the voluntary, without prejudice dismissal of a civil action 

in which a complaint had been served nullifies an administrative time bar that is triggered by service of that 

complaint. It does not. Yet the Board, without explanation, extended the background principle of Graves and 

Bonneville to conclude that such a dismissal “nullifies the 

effect of the service of the complaint.” It then relied on

this erroneous conclusion to “un-ring” § 315(b)’s time bar. 

In effect, the Board relied on cases holding that the voluntary dismissal of an action or appeal does not toll a statute of limitations to conclude that the voluntary dismissal 

without prejudice of a civil action does indefinitely toll 

§ 315(b) and permitted an otherwise untimely IPR to 

proceed, turning Bonneville and Graves on their head. 

These cases do not delve into the meaning of the 

terms “serve” or “complaint,” nor do they hold that the 

voluntary, without prejudice dismissal of a civil action

transforms the ordinary meaning of the phrase “served 

with a complaint” into something else. Although we

“presume that ‘Congress intended to retain the substance 

of the common law’” when “a statute covers an issue 

previously governed by the common law,” Kirtsaeng v. 

John Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) (quoting Samantar v. Yousuf, 560 U.S. 305, 320, n.13 (2010)), 

where the statutory scheme is clear, we are not to “invent 

an atextual explanation for Congress’s drafting choices,”

SAS, 138 S. Ct. at 1357. 

Where, moreover, the proposed atextual explanation 

is the alleged existence of a “background legal principle,” 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 23

that principle must both be firmly established and unequivocal before it can justify ignoring the plain text of the 

statute. The background legal principle on which Petitioners and the Director rely—that a “dismissal without 

prejudice leaves the parties in the same legal position as 

if the underlying complaint had never been filed,” for all 

purposes, Appellees Suppl. Br. 3—is anything but unequivocal. A voluntary dismissal without prejudice only

leaves the dismissed action without legal effect for some

purposes; for many other purposes, the dismissed action 

continues to have legal effect. Indeed, a voluntary dismissal without prejudice (1) may give rise to costs and 

fees under Rule 11, see Wright & Miller, Federal Prac. & 

Proc. Civ. §§ 1336, 2367; (2) forbids the filing of a subsequent action “based on or including the same claim” under 

Rule 41(a)(1)(B); and (3) may establish the necessary case 

or controversy for a later declaratory judgment action, see

TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 

1295, 1300 (Fed. Cir. 2016) (“After 3M voluntarily dismissed [its] suit due to an apparent personal jurisdiction 

issue, TransWeb filed suit in New Jersey for declaratory 

judgment.”). The Director itself acknowledges that the 

filing of a patent infringement complaint, even if later 

voluntarily dismissed, can play a role in proving the 

defendant’s knowledge of the patent if charged with 

willful infringement. Intervenor’s Second Suppl. Br. 8. 

And counsel for Petitioners admitted at oral argument 

that § 315(b) “appears to be unique relative to the other 

cases cited in that it involves the act of service triggering 

a limitations period,” suggesting that there is no pertinent 

“background legal principle” that might alter our view of 

the plain and ordinary meaning of the phrase “served 

with a complaint.” Oral Arg. at 22:13–22:29, available at 

http://oralarguments.cafc.uscourts.gov/default.aspx

?fl=2015-1242.mp3.6

 

6 The background legal principle on which the Di-
24 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

For all of these reasons, we conclude that a defendant 

served with a complaint as part of a civil action that is 

voluntarily dismissed without prejudice remains “served” 

with the “complaint.” This remains true even if that 

action becomes a “nullity” for other purposes and even if 

such service becomes legally irrelevant in a subsequent

court action.

B. Petitioners’ Alternative Arguments

Petitioners also argue that, even if the Board erred in 

concluding that the voluntary dismissal of the district 

court action rendered § 315(b) inapplicable because the 

dismissal “nullifie[d] the effect of the service,” the institution of the IPR proceeding was nevertheless proper for 

two independent reasons. Although CTC initially posited 

that subsidiary factual questions precluded us from 

deciding in the first instance the merits of Petitioners’ 

alternative arguments, Reply Br. 24, the parties (but not 

the Director) now agree that no further fact-finding is 

required. We therefore address these arguments in turn. 

See Killip v. Office of Pers. Mgmt., 991 F.2d 1564, 1568–69 

(Fed. Cir. 1993) (recognizing, in the context of a Merit 

Systems Protection Board case, that we may “affirm the 

Board on grounds other than those relied upon in rendering its decision, when upholding the Board’s decision does 

not depend upon making a determination of fact not 

previously made by the Board”).

 

rector and Petitioners rely cannot be as absolute as they 

contend. We have little doubt that a contract clearly and 

unambiguously providing for a payment to be due upon 

service of a complaint would render such payment due, 

and remaining due, upon service of a complaint that is 

later dismissed without prejudice. A statutory bar that is 

clearly and unambiguously triggered by service of a 

complaint, such as § 315(b), is to the same effect.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 25

1. The Impact of Ex Parte Reexamination 

Petitioners first contend that, because the claims of 

the ’836 patent were materially changed during a subsequent ex parte reexamination, neither they nor any other 

entity was served with a complaint alleging infringement 

of this patent more than one year before the IPR petition 

was filed. See Appellees Br. 8, 19–21. In particular, they 

claim that, “[b]ecause each claim of the reexamined 

patent substantively differs from the claims of the original patent, the reexamined ’836 patent should be treated 

as a new patent for purposes of § 315(b).” Id. at 21.

Petitioners are mistaken. “Unlike reissue, reexamination does not result in the surrender of the original 

patent and the issuance of a new patent.” Aspex Eyewear, 

Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341–42 

(Fed. Cir. 2012). Indeed, the relevant provision provides 

that a reexamination certificate “incorporat[es] in the 

patent any proposed amended or new claim determined to 

be patentable.” 35 U.S.C. § 307(a) (emphasis added). 

Petitioners’ reliance on 35 U.S.C. § 307(b) is unavailing. 

That provision simply means that any amended or new

claim incorporated in a reexamined patent has the same 

effect as that specified in 35 U.S.C. § 252 for a reissued 

patent only with respect to so-called “intervening rights.” 

In other words, § 307(b) statutorily protects the ability of 

a “person or that person’s successors in business” to 

continue to use, offer for sale, or sell anything protected 

by the amended or new claims, provided such actions do 

not infringe a valid claim of the reexamined patent that 

was in the original patent. Compare 35 U.S.C. § 307(b), 

with 35 U.S.C. § 252. Congress could have included in 

any of 35 U.S.C. §§ 252, 307(b), or 315(b) language regarding the effect of reexamination on the deadline to file an 

IPR—it chose not to do so. 

Petitioners’ emphasis on alleged differences in claim 

scope misunderstands that § 315(b) does not speak in 
26 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

terms of claims. Instead, the provision asks on what date 

the petitioner, real party in interest, or privy of the petitioner “is served with a complaint alleging infringement of 

the patent,” making clear that the timeliness analysis is to 

be made with reference to “the patent.” The Director

agrees with this conclusion. See Intervenor Second Suppl. 

Br. 10 n.3.

Even if we were to hold that § 315(b) is ambiguous 

with respect to whether the term “the patent” includes

reexamined patents having amended or new claims of

“substantively differ[ent]” scope than the original claims, 

we would still reject Petitioners’ argument that the time 

bar does not apply here. We have held that, “in the 

absence of a clear showing that such a material difference 

in fact exists in a disputed patentable reexamination 

claim, it can be assumed that the reexamined claims will 

be a subset of the original claims and that no new cause of 

action will be created.” Senju Pharm. Co., Ltd. v. Apotex 

Inc., 746 F.3d 1344, 1353 (Fed. Cir. 2014). We reached 

this holding after asking whether “it is possible that a 

reexamination could ever result in the issuance of new 

patent claims that were so materially different from the 

original patent claims as to create a new cause of action, 

but at the same time were sufficiently narrow so as not to 

violate the rule against reexamined claims being broader 

than the original claims.” Id. Petitioners did not make 

any showing in the IPR proceeding that the amended or 

new claims of the ’836 patent are “materially different” 

than the original claims, and we reject their unsupported 

effort to do so for the first time on appeal.

For these reasons, we reject Petitioners’ effort to deem 

the reexamined ’836 patent a “new patent” for § 315(b) 

purposes.

2. The Relevance of “Non-Barred” Petitioners 

Petitioners also submit that, even if § 315(b)’s time 

bar applies to YP Interactive, it would not apply to Yel-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 27

lowPages.com, Oracle Corporation, or Oracle OTC Subsidiary LLC. According to Petitioners, because YellowPages.com was not in privity with YP Interactive or its 

predecessors “before at least 2008,” YellowPages.com 

never had any opportunity, as a privy or otherwise, to 

participate in the Inforocket Action or Keen Action, which 

were voluntarily dismissed years earlier. Appellees Br. 

24. They also submit that the Oracle entities were not 

parties, real parties in interest, or privies of Ingenio with 

respect to these earlier proceedings. In Petitioners’ view, 

these arguments are relevant because, if these entities 

had filed separate petitions, those petitions would not 

have been time barred under § 315(b). Moreover, they 

submit that, had YP Interactive filed a separate petition, 

the Director could have joined its petition with the hypothetical non-barred petitions pursuant to 35 U.S.C. 

§ 315(c), rendering any error in the Board’s § 315(b) 

determination vis-à-vis YP Interactive harmless.

We reject these efforts to separate YP Interactive 

from the other Petitioners to save the petition as to the 

latter. We need not scrutinize the legal relationships 

between YellowPages.com, Oracle Corporation, and

Oracle OTC Subsidiary LLC, on the one hand, and Ingenio/YP Interactive, on the other, to address Petitioners’ 

arguments. These four entities declared themselves as 

“the Petitioner” in their sole IPR petition, and certified 

that Ingenio (now YP Interactive) is a “real party in 

interest.” J.A. 345. In these circumstances, under current law, Petitioners are properly treated as an undifferentiated unit that filed an untimely petition.

Section 315(b) and the implementing regulation both 

treat a petition as if there is a single petitioner for purposes of the one-year rule. Section 315(b) bars institution 

of an IPR where “the petition requesting the proceeding is 

filed more than 1 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 
28 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

patent.” 35 U.S.C. § 315(b) (emphases added). The 

governing regulation, which largely parrots § 315(b), is to 

the same effect: 

[a] person who is not the owner of a patent may 

file with the [Patent & Trademark Office] a petition to institute an [IPR] of the patent unless . . . 

[t]he petition requesting the proceeding is filed 

more than one year after the date on which the 

petitioner, the petitioner’s real party-in-interest, 

or a privy of the petitioner is served with a complaint alleging infringement of the patent. 

37 C.F.R. § 42.101(b) (emphases added). Both the statute 

and the regulation ask only two questions: (1) when was 

“the petition” filed; and (2) when was “the petitioner,” the 

petitioner’s real party in interest, or a privy of the petitioner served with a complaint? They do not differentiate 

between multiple petitioners. 

We read section 315(b), as implemented by the existing regulation, to apply petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a 

single petition treated as a unit indistinguishable from 

each member of that collection. This reading of the statutory and regulatory reference to the singular “the petitioner” for the one-year time bar is supported by the fact

that, in the same statutory scheme, Congress expressly 

recognized the possibility of multiple petitioners and 

permitted separate treatment of them for different purposes. See, e.g., 35 U.S.C. § 317(a) (addressing continuation of IPR as to some petitioners after dismissal of 

others). In concluding that this is the best reading of the 

statute and its parroting regulation, we are not deciding 

whether the statute is ambiguous and could permissibly 

be implemented through a different regulation providing 

for separate treatment of multiple petitioners in assessing 

timeliness under the one-year time bar—a distinct question that would arise if the Director newly adopted such a 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 29

regulation. See Nat’l Cable & Telecomms. Ass’n v. Brand 

X Internet Servs., 545 U.S. 967, 982–85 (2005) (holding 

that, where a court determines the “best reading” of a 

provision without finding an “unambiguous” meaning, the 

Chevron step one question is not answered, and an agency 

having Chevron authority may adopt a different statutory 

position and have it tested under the Chevron framework).7

Under the unitary-entity interpretation of section 

315(b) and its implementing regulation, the petition at 

issue here was untimely. “The petitioner” (all four petitioners considered collectively) filed the single petition 

more than one year after YP Interactive (operating under 

the name Keen), which is itself both “the petitioner” and a 

real party in interest, was served with a complaint alleging infringement of the ’836 patent. The Director was 

therefore barred from instituting this IPR based on this 

petition. 

Because this IPR was not instituted properly, the final written decision was entered contrary to a statutory 

command and must be set aside. Petitioners cite nothing 

 

7 Were the Director or Board merely to interpret 

(rather than change) the current regulation to allow 

separate treatment of co-petitioners for § 315(b) purposes, 

that interpretation would not be owed deference in light 

of our interpretation of the existing regulation, given the 

statute-parroting nature of this regulation. See Gonzales 

v. Oregon, 546 U.S. 243, 257 (2006) (ruling that “the 

existence of a parroting regulation does not change the 

fact that the question here is not the meaning of the 

regulation but the meaning of the statute,” and “[a]n 

agency does not acquire special authority to interpret its 

own words when, instead of using its expertise and experience to formulate a regulation, it has elected merely to 

paraphrase the statutory language”).
30 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

to support a conclusion that the error in instituting on 

this petition could be deemed harmless just because a 

different petition might have been filed that would have 

permitted institution of a different IPR to review the 

same patent claims. Indeed, that circumstance would 

often be the case, since any “person who is not the owner 

of a patent” may file a petition for an IPR. 35 U.S.C. 

§ 311(a). Accordingly, what matters here is whether this

petition provided a lawful basis upon which to institute 

this IPR. Cf. SAS, 138 S. Ct. at 1358 n.* (explaining that 

the possible existence of a different path to the same 

agency result—there, partial institution—did not validate 

the path actually followed). Section 315(b), as implemented by the current regulation, is best understood to 

answer that question no.

Petitioners’ additional reliance on §§ 315(c) and 317(a) 

in an effort to save this petition as to some petitioners 

does not persuade. Petitioners’ § 315(c) theory would 

seem to be that the petition may be viewed as having been 

filed solely by the Oracle and YellowPages.com petitioners 

and merely joined by YP Interactive, so that the timeliness determination could disregard YP Interactive. 

Petitioners’ § 317(a) theory would seem to be that YP 

Interactive might be dropped from the IPR, leaving only 

the other petitioners, as to which the Board may continue. 

As already noted, however, the availability of a path not 

taken does not validate the path actually taken. SAS, 138 

S. Ct. at 1358 n.*. Although § 315(b) provides that its 

time bar “shall not apply to a request for joinder under 

subsection (c),” it is undisputed that no such “request for 

joinder” was made in this case. Indeed, the regulation 

governing joinder requires that “[a]ny request for joinder 

must be filed . . . no later than one month after the institution date of any [IPR] for which joinder is requested.” 

37 C.F.R. § 42.122(b) (emphasis added). This one-month 

deadline, which the Director imposed by regulation after 

notice and comment, Changes to Implement Inter Partes 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 31

Review Proceedings, Post-Grant Review Proceedings, and 

Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680–01, 48,681, 2012 WL 3276880 

(Aug. 14, 2012), has long since passed.8

Similarly, while § 317(a) permits the termination of 

IPR proceedings that have been instituted “with respect 

to any petitioner”—and even permits the Office to “proceed to a final written decision” where “no petitioner 

remains in the inter partes review”—such termination 

can only occur “upon the joint request of the petitioner 

and the patent owner unless the Office has decided the 

merits of the proceeding before the request for termination is filed.” No joint request for termination was made 

in this case. The fact that Congress afforded petitioners 

the opportunity to settle with patent owners after institution does not address the predicate question of whether 

the IPR was properly instituted in the first place. 

Further support for our reading of § 315(b) is found in 

decisions of the Board’s own panels. In Terremark North 

 

8 We recognize that a number of Board panels have 

constrained joinder in apparent recognition of a tension 

between §§ 315(b) and (c). Where an otherwise timebarred petitioner seeks to join an IPR under § 315(c), 

Board panels consistently have granted such requests 

only under limiting conditions, such as (1) that the party 

seeking joinder “maintain a secondary role in the proceeding,” Pfizer, Inc. v. Biogen, Inc., No. IPR2017-01115, 2017 

WL 3081981 (P.T.A.B. July 18, 2017), Paper No. 13; or 

(2) that they appear in the IPR proceeding and attend 

depositions and oral hearing, but not file papers, engage 

in discovery, or participate in any deposition or oral 

hearing, Ion Geophysical Corp. v. WesternGeco LLC, No. 

IPR2015-00565, 2015 WL 1906173, at *4 (P.T.A.B. Apr. 

23, 2015), Paper No. 14. There was no such limitation on 

YP Interactive’s participation in this IPR.
32 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

America LLC v. Joao Control & Monitoring Systems, LLC, 

No. IPR2015-01482, 2015 Pat. App. LEXIS 12695 

(P.T.A.B. Dec. 28, 2015), Paper No. 10, the panel confronted a situation involving multiple petitioners seeking 

institution of an IPR, in which some but not all of the 

petitioners were time-barred. In that case, CoxCom was 

the only petitioner that was not served with a complaint 

more than one year before the IPR petition was filed. 

2015 Pat. App. LEXIS 12695, at *19. The petitioners 

argued that, because CoxCom was not time-barred, 

§ 315(b) should not apply to the jointly filed IPR petition. 

Id. The Board rejected this argument based on the reasoning set forth in an earlier decision, PNC Bank, N.A. v. 

Maxim Integrated Products, Inc., No. CBM2014-00041, 

2014 WL 2536982, at *2 (P.T.A.B. June 3, 2014), Paper 

No. 19, in which the Board denied institution of CBM 

review where PNC Bank was “both a petitioner . . . and a 

real party in interest,” and previously filed a civil action 

challenging the validity of claims of the challenged patent. Id. at *2. This set of facts resulted in institution 

being barred under § 325(a)(1), notwithstanding that 

other named petitioners were not barred by this provision. Id. The Board held that, as a result, “§ 325(a)(1) 

precludes institution of a review in this proceeding,” 

notwithstanding that other named petitioners were not 

barred by this provision. Id. 

Notably, the Board also considered, but rejected, the 

petitioners’ argument that § 325(a)(1) would not bar 

institution if PNC were to “forswear all further control 

and participation in this case” or have adverse judgment 

entered against it, permitting the other petitioners to 

proceed without its involvement.9 Id. The Board rea-

 

9 37 C.F.R. § 42.73(b) provides that “[a] party may 

request judgment against itself at any time during a 

proceeding.”
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 33

soned that, because “PNC has already exerted substantial 

control over the case” and because “granting PNC’s request for adverse judgment would not obviate the control 

that PNC has already exerted in this proceeding by its 

filing of the Petition,” ruling upon PNC’s motion for 

judgment “would not alter [its] conclusion that § 325(a)(1) 

precludes institution of a CBM review as requested in the 

Petition.” Id.10

Turning back to Terremark, the Board there wrote 

that the non-CoxCom petitioners, like PNC, “already have 

exerted substantial control over the case by participating 

in filing the Petition, appointing counsel, etc.,” and therefore “[t]he presence of CoxCom . . . does not remove the 

statutory bar.” 2015 Pat. App. LEXIS 12695, at *21. 

Here, too, “removing” Ingenio/YP Interactive from the IPR 

would not alter the fact that it has participated for several 

years in this proceeding in violation of § 315(b). Appellees’ unsupported assertion that there is nothing about 

the relationship between these parties that indicates 

control over the other joint petitioners by Ingenio/YP 

Interactive does not change our view. Where the parties 

choose to be joint petitioners in a single petition, the 

petition must—under current law—be assessed in light of 

that choice.

In conclusion, to the extent Petitioners rely on 

§§ 315(b), 315(c), and 317(a) to argue that the Board’s 

 

10 At oral argument, counsel for the Director was 

unable to articulate why the fact that PNC involved CBM 

review, rather than an IPR, was relevant, given that the 

applicable statutes are similarly worded. See Oral Arg. at 

33:45–33:55. Nor did counsel for the Director or for 

Petitioners explain why additional fact-finding (or remand) would be necessary on the issue of Ingenio/YP 

Interactive’s control over or active involvement in this 

IPR proceeding.
34 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

institution of IPR proceedings in this case was “harmless,” 

we have made clear that “[t]he timely filing of a petition 

under § 315(b) is a condition precedent to the Director’s 

authority to act”—indeed, it “sets limits on the Director’s 

statutory authority to institute.” Wi-Fi One, 878 F.3d at 

1374. There is nothing “harmless” about the institution of 

this IPR in excess of statutory authority and contrary to 

“the law’s demands.” SAS, 138 S. Ct. at 1359. 

Finally, we conclude that a remand for consideration 

of this multi-petitioner issue is not warranted. Neither 

Petitioners nor CTC seek a remand for further Board 

proceedings. That fact is significant not only because of 

the IPR regime’s general policy of expedition, see 35 

U.S.C. §§ 314(b), 316(a)(11), but also because the IPR 

regime creates “a party-directed, adversarial process” 

rather than an “agency-led, inquisitorial process,” SAS, 

138 S. Ct. at 1355. After all, “it’s the petitioner, not the 

Director, who gets to define the contours of the proceeding.” Id. 

Only the Director suggests a remand on this issue. 

But the Director identifies no material facts requiring 

further development on remand. And, the Director has 

not explained exactly what the Board might wish to, or be 

able to, consider on remand. The issue in this case thus 

raises only a legal question, and under current law, 

including the current regulation, the answer to the legal 

question is already determined in this opinion. The Board 

must follow the governing regulations, see, e.g., Creditor v. 

Shulkin, 877 F.3d 1040, 1047 (Fed. Cir. 2017), and it must 

follow our binding interpretation where, because the 

regulation merely parrots the statute, deference is not 

owed even to the Director’s interpretation of the regulation, much less to a Board panel’s interpretation, see 

supra n.6 (quoting Gonzales v. Oregon). See In re Lovin, 

652 F.3d 1349, 1353–54 (Fed. Cir. 2011) (discussing 

Brand X and agency’s duty to follow judicial interpretation of regulations generally, but deferring to intervening 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 35

change of regulation). It is conceivable that the Director 

might promulgate a new regulation during remand—

though the Director has not even taken a position on this 

issue, much less suggested that a regulation is on the 

horizon, and there would be a question about retroactive 

application of any such changed regulation. See Bowen v. 

Georgetown Univ. Hosp., 488 U.S. 204, 208–09 (1988). We 

know of no authority or sound basis to support a remand 

to allow for a possible intervening change of law, especially in the context of a statute prizing expedition. We 

therefore vacate the Board’s Final Written Decision and 

remand so the Board can dismiss this IPR proceeding. 

We leave Petitioners to litigate the merits of the ’836 

patent in the long-stayed district court case, where there 

will be no estoppel bar to such litigation, as CTC has 

expressly conceded.

III. CONCLUSION

For the foregoing reasons, we vacate the Board’s Final 

Written Decision and remand for the Board to dismiss 

IPR2013-00312. 

VACATED AND REMANDED

COSTS

Costs to Click-to-Call Technologies, LP.
United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

TARANTO, Circuit Judge, concurring. 

I join the panel’s opinion in full. Here I add a few 

thoughts on why I am unpersuaded by the key rationales 

set forth in the dissent from the court’s en banc holding.

The en banc issue is governed by statutory language 

that, as the panel opinion explains, is plain in its meaning. In September 2001, Ingenio (then called Keen) was 

served with a complaint asserting that it infringed the 
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

’836 patent, and there is no dispute about the content of 

the complaint or the propriety of service. In 2013, Ingenio 

filed a petition for an inter partes review (IPR)—far more 

than one year after the 2001 service. With respect to the 

en banc issue, those facts make § 315(b)’s time bar applicable by its plain terms. Nothing in that language makes 

relevant whether the 2001 complaint was eventually 

dismissed voluntarily without prejudice; the fact that 

service occurred does not change when the complaint (or 

action) is later dismissed, whether voluntarily or otherwise, and whether with or without prejudice to the right 

to file another action on the same claims. No other provision of the statute calls for a different conclusion. Indeed, 

whereas Congress in § 315(a)(2)(C) specifically addressed 

the effect of a voluntary dismissal of an IPR petitioner’s 

own district court complaint challenging a patent, Congress left § 315(b) unmodified by any language addressed 

to dismissals of patentees’ complaints.

This is not a case where the scope of a word or phrase 

in the statute, considered alone and in context, “may be 

open to competing interpretations” as in Kasten v. SaintGobain Performance Plastics Corp., 563 U.S. 1, 7 (2011), 

and Dolan v. U.S. Postal Service, 546 U.S. 481, 486 

(2006). In Kasten, the Court addressed a genuine textual 

issue about whether the phrase “filed any complaint” in 

29 U.S.C. § 215(a)(3) encompasses an oral complaint or 

instead requires a writing. 563 U.S. at 7. In Dolan, the 

Court addressed a genuine textual issue about whether 

the phrase “negligent transmission” of the mail, when 

read in the context of the statute, encompassed what 

might be the last act of the transmission—a negligent 

placement of a package on a porch. 546 U.S. at 486. 

Numerous authorities state that statutory language 

as plain in its meaning as to an issue as is § 315(b), when 

read alone and in context, is controlling on that issue, 

subject to very narrow exceptions. See, e.g., SAS Inst. Inc. 

v. Iancu, 138 S. Ct. 1348, 1357 (2018) (“We need not and 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

will not invent an atextual explanation for Congress’s 

drafting choices when the statute’s own terms supply an 

answer. See United States v. Ron Pair Enterprises, Inc., 

489 U.S. 235, 240–41 (1989) (‘[A]s long as the statutory 

scheme is coherent and consistent, there generally is no 

need for a court to inquire beyond the plain language of 

the statute’).” (alteration in original) (unofficial reporter 

citations omitted)); Cyan, Inc. v. Beaver Cty. Employees 

Ret. Fund, 138 S. Ct. 1061, 1072 (2018) (“Even assuming 

clear text can ever give way to purpose, [the Director] 

would need some monster arguments on this score to 

create doubts about [§ 315(b)’s] meaning.”); Star Athletica, 

L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 

(2017); Sebelius v. Cloer, 569 U.S. 369, 381 (2013) (“when 

[a] statute’s language is plain, the sole function of the 

courts—at least where the disposition required by the text 

is not absurd—is to enforce it according to its terms”) 

(alteration in original) (internal quotation marks omitted); Gross v. FBL Fin. Servs., Inc., 557 U.S. 167, 175 

(2009); Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450 

(2002); Board of Governors of Fed. Reserve Sys. v. Dimension Fin. Corp., 474 U.S. 361, 368 (1986). 

I see no basis strong enough to justify the proposed 

contrary-to-text result urged by the Director—that 

§ 315(b) becomes inapplicable when the complaint whose 

service would otherwise bar the IPR was dismissed voluntarily without prejudice under Rule 41(a) of the Federal 

Rules of Civil Procedure. Respecting § 315(b)’s plain 

meaning leaves the statutory scheme “coherent and 

consistent,” Barnhart, 534 U.S. at 450; Ron Pair Enters., 

489 U.S. at 240, and without “absurd” results, Sebelius, 

569 U.S. at 381. I therefore agree that the Director’s 

position must be rejected and the task of making any 

advisable adjustments left to Congress. 
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

I 

The principal rationale offered to support the Director’s position is that a background rule of law exists that 

Congress must have intended to modify § 315(b)’s plain 

meaning. The asserted “rule” is that “[t]he effect of a 

voluntary dismissal without prejudice pursuant to Rule 

41(a) is to render the proceedings a nullity and leave the 

parties as if the action had never been brought.” Bonneville Assocs., Ltd. P’ship v. Barram, 165 F.3d 1360, 1364 

(Fed. Cir. 1999) (Bonneville II) (alteration in original) 

(internal quotation marks omitted). This court has also 

stated the point in terms seemingly applicable even to an 

involuntary dismissal without prejudice. Graves v. Principi, 294 F.3d 1350, 1356–57 (Fed. Cir. 2002) (“[A]s a 

matter of law, once his appeal was dismissed—for whatever purpose and whether with or without prejudice—it 

was as if the appeal had never been filed. . . . The dismissal of an action without prejudice leaves the parties as 

though the action had never been brought.”). The Director invokes those formulations as providing a “solidly 

grounded rule” of civil procedure, Greenlaw v. United 

States, 554 U.S. 237, 250 (2008), that Congress must have 

understood would override the contrary plain meaning of

§ 315(b) by nullifying the time-bar effect of service of a 

complaint if that complaint is later voluntarily dismissed 

without prejudice.

But this court has already observed that the cases articulating an “as if never brought” principle do not “address § 315(b) or whether service of a complaint can be 

nullified.” Shaw Indus. Grp., Inc. v. Automated Creel 

Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016). And even 

aside from the distinction between nullifying the effect of 

a complaint’s service and nullifying the effect of a complaint’s filing, the case law invoked by the Director (and 

the dissent) does not justify overriding the plain meaning 

of the § 315(b) bar.
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

The fundamental problem with the Director’s position 

is that it takes judicial language used as explanation in 

particular contexts and mistakenly treats the language as 

establishing a rule sweeping enough to apply to the 

§ 315(b) context. That is a mistake here because the 

federal courts do not always treat a voluntary, withoutprejudice dismissal as leaving the dismissed action without legal effect. Only for some purposes does a voluntary, 

without-prejudice dismissal leave the dismissed action 

without legal effect, as if it had never been brought; for 

other purposes, the dismissed action continues to have 

legal effect. And the legal effect at issue for § 315(b)—

triggering the start of a clock for filing an action—has 

never been in the first category. The Director has noted 

that he knows of no case holding that a voluntary, without-prejudice dismissal of a complaint nullifies the statutory effect of the filing of that complaint (or, here, of its 

service) of starting a clock on initiating another proceeding. Oral Arg. at 30:08–31:20. We cannot soundly infer a 

nontextual exception to § 315(b)’s plain-meaning application based on a nullification principle that has not been 

applied, and certainly is not established, in the clockstarting situation present here.

A 

Some of this court’s and other courts’ cases deny certain legal effects to the filing of a complaint later voluntarily dismissed without prejudice. One such effect 

concerns what is needed to satisfy (or toll) a time limit on 

initiating an action or appeal. The rationale is simple. A 

particular case or appeal must itself be initiated within a 

prescribed time. A filing that initiated an earlier case or 

appeal, if voluntarily dismissed without prejudice, does 

not meet, or toll the running of the clock for meeting, the 

time limit for filing the document that initiates the later 

(even substantively identical) case. 
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

This court so held in Bonneville II, a governmentcontract dispute in which Bonneville timely appealed to 

the General Services Administration Board of Contract 

Appeals; voluntarily dismissed that appeal to pursue 

relief in the Claims Court instead; was denied a forum for 

lack of jurisdiction there (as this court held in Bonneville 

Assocs. v. United States, 43 F.3d 649, 655 (Fed. Cir. 1994)

(Bonneville I)); and then returned to the Board by filing a 

new appeal. This court in Bonneville II held that the new 

appeal was untimely because the earlier Board appeal did 

not count to meet the applicable time limit for an appeal 

to the Board. 165 F.3d at 1363–65. In the same vein, we 

held in Graves that the time limit for appealing to the 

Veterans Court, 38 U.S.C. § 7266(a), had to be met by the 

notice of appeal initiating that appeal, and could not be 

met by an earlier, voluntarily dismissed notice of appeal 

from the same Board of Veterans’ Appeals decision. 294 

F.3d at 1355–56. Other circuits’ decisions are to the same 

effect in not allowing the satisfaction, or tolling, of a 

limitations period by an earlier filing that is voluntarily 

dismissed without prejudice.1

 

1 See, e.g., Jorge v. Rumsfeld, 404 F.3d 556, 563 (1st 

Cir. 2005) (“[A] prescriptive period is not tolled by filing a 

complaint that is subsequently dismissed without prejudice.”); Garfield v. J.C. Nichols Real Estate, 57 F.3d 662, 

666 (8th Cir. 1995) (“A dismissal without prejudice does 

not toll a statute of limitations.”); Beck v. Caterpillar Inc., 

50 F.3d 405, 407–08 (7th Cir. 1995) (holding that the 

statute of limitations was not tolled and continued to run 

when plaintiff voluntarily dismissed his first suit under 

Rule 41(a)); Simons v. Sw. Petro-Chem, Inc., 28 F.3d 1029, 

1030 (10th Cir. 1994) (holding that the plaintiff’s Title VII 

claim was not timely filed because her earlier case that 

was voluntarily dismissed without prejudice under Rule 

41(a)(2) did not toll the statutory limitations period); 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

But the § 315(b) en banc issue does not involve the legal effect of the type at issue in the cases just described. 

A legal effect of that type would be at issue if an IPR 

petitioner filed a petition within the one-year period, 

voluntarily dismissed the petition without prejudice, then 

filed another IPR petition outside the period: the earlier 

(timely) petition would be disregarded in assessing the 

timeliness of the later petition. Here, there were no 

successive IPR petitions, and the issue is not whether a 

 

Robinson v. Willow Glen Acad., 895 F.2d 1168, 1169 (7th 

Cir. 1990) (holding that a tolling provision under Wisconsin state law that was tied to the “commencement of an 

action” did not apply if that action was then voluntarily 

dismissed under Rule 41(a)(2)); Davis v. Smith’s Transfer, 

Inc., 841 F.2d 139, 140 (6th Cir. 1988) (per curiam) (no 

tolling of statute of limitations based on earlier suit 

dismissed under Rule 41(a)); Dupree v. Jefferson, 666 F.2d 

606, 610–11 (D.C. Cir. 1981) (taking note of the “rule” 

“that a statute of limitations is not tolled during pendency 

of an action voluntarily dismissed without prejudice”); 

Curtis v. United Transp. Union, 648 F.2d 492, 495 (8th 

Cir. 1981) (stating “the rule that the entry of a voluntary 

dismissal without prejudice leaves the action as if suit 

had never been brought for purposes of the statute of 

limitations”); Humphreys v. United States, 272 F.2d 411, 

412 (9th Cir. 1959) (holding that a voluntary dismissal 

under Rule 41(a)(2) does not toll the statute of limitations 

under the Federal Tort Claims Act).

See also Willard v. Wood, 164 U.S. 502, 523 (1896)

(noting “[t]he general rule in respect of limitations . . . 

that if . . . [an] action abates or is dismissed, and, during 

the pendency of the action, the limitation runs, the remedy is barred”); 8 Moore’s Fed. Prac. Civ. § 41.33(6)(d) 

(2018); 9 Charles A. Wright & Arthur R. Miller, Fed. Prac. 

& Proc. Civ. § 2367 (3d ed. 2018). 
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

voluntarily dismissed filing could be treated as satisfying 

the one-year rule.

Rather, the issue is whether the 2001 service of a 

complaint asserting that Ingenio infringed the ’836 patent 

should be treated as losing its clock-starting legal effect

for filing an IPR before the Board, just because the 

properly served complaint was later voluntarily dismissed 

without prejudice. None of the just-cited cases involved 

that legal effect. Indeed, while those cases insist on 

enforcing a time limit on initiating legal proceedings for

the same or similar claims brought by the same party in 

(usually) the same forum, the Director’s position here 

would have the opposite effect of nullifying a time limit—

and doing so based on the filing of different claims (invalidity, not infringement) by a different party (accused 

infringer, not patent owner) in a different forum (Board, 

not district court). In multiple ways, then, the main line 

of authority invoking the “as if never brought” rationale 

does not apply to the circumstances addressed by § 315(b).

The clock-starting effect that is at issue here is also 

different from certain other legal effects that are denied to 

a complaint once it has been voluntarily dismissed without prejudice. Notably, once a complaint has been voluntarily dismissed without prejudice, most further action in 

the very case initiated by that complaint is neither required nor permitted.2 Relatedly, as indicated by the 

 

2 See, e.g., In re Matthews, 395 F.3d 477, 480 (4th 

Cir. 2005) (“[A]fter an action is voluntarily dismissed, the 

court lacks authority to conduct further proceedings on 

the merits.”); Williams v. Clarke, 82 F.3d 270, 272–73 (8th 

Cir. 1996) (holding that voluntary dismissal under Rule 

41(a)(1) applies to habeas corpus petitions filed under 28 

U.S.C. § 2254 and strips the appellate court of jurisdiction 

over the action); Norman v. Arkansas Dep’t of Educ., 79 

F.3d 748, 751 (8th Cir. 1996) (holding that after the 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

“without prejudice” language, invocation of issue or claim 

preclusion is generally not available based on the action

that was voluntarily dismissed without prejudice.3 Those 

legal effects are not what is at stake here.

 

district court dismissed the case without prejudice, it 

“lacked jurisdiction to take any further action in it, including dismissing the case with prejudice”); Smith v. 

Dowden, 47 F.3d 940, 943 (8th Cir. 1995) (holding that 

the voluntary dismissal of a claim in the bankruptcy court 

under Fed. R. Bankr. P. 3006 strips the bankruptcy court 

of its equitable jurisdiction and restores the dismissed 

party’s jury-trial right); LeCompte v. Mr. Chip, Inc., 528 

F.2d 601, 603 (5th Cir. 1976) (explaining that a plaintiff 

generally cannot appeal a voluntary dismissal without 

prejudice under Rule 41(a)(2), but may appeal if the order 

has the effect of being a dismissal with prejudice). 3 See, e.g., Harvey Specialty & Supply, Inc. v. Anson 

Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005) 

(holding that a voluntary dismissal under Rule 41(a)(1) 

does not result in a final judgment that could support 

collateral estoppel or the relitigation exception under the 

Anti-Injunction Act); AVX Corp. v. Cabot Corp., 424 F.3d 

28, 32–34 (1st Cir. 2005) (holding that claim preclusion 

did not apply to claims that had been voluntarily dismissed under Rule 41(a)(1)(ii) by joint stipulation of the 

parties); In re Corey, 892 F.2d 829, 835 (9th Cir. 1989) 

(holding that a voluntary dismissal without prejudice “has 

no res judicata effect”); In re Piper Aircraft Distrib. Sys. 

Antitrust Litig., 551 F.2d 213, 219–20 (8th Cir. 1977)

(holding that the district court erred by giving preclusive 

effect to the denial of class action status under Rule 23(c)

in another case that had been subsequently dismissed 

without prejudice pursuant to Rule 41(a)(1)(i), because 

there was no “valid and final judgment” necessary for 

“collateral estoppel”). Cf. Navellier v. Sletten, 262 F.3d 
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

B 

As just set forth, although a voluntary, withoutprejudice dismissal has been held to eliminate some legal 

effects of a dismissed action, the clock-starting effect of 

§ 315(b) is not among them. Nor does the law recognize a 

universal nullification rule that such a dismissal eliminates all legal effects of a dismissed action. To the contrary, in various circumstances, such a dismissed action 

has continuing legal effects, i.e., is not treated as if it had 

never been brought.

For example, Rule 41 itself makes clear that a first 

voluntary dismissal has an effect in forbidding a withoutprejudice dismissal of a second action “based on or including the same claim.” Fed. R. Civ. P. 41(a)(1)(B). Rule 41 

adds that a first such dismissal may give rise to a courtimposed requirement that the costs of the first action be 

paid as a precondition to litigation of a second action 

based on or including the same claim against the same 

defendant. Fed. R. Civ. P. 41(d). And a voluntary, without-prejudice dismissal may give rise to costs and fees 

under Rule 11. See Wright & Miller, §§ 1336, 2367. 

Continuing effects are also evident in sources outside 

the Federal Rules of Civil Procedure. For example, as the 

Director appears to acknowledge, the filing of a patent 

infringement complaint, even if later voluntarily dismissed, can play a role, even a definitive role, in proving

the defendant’s knowledge of the patent if the defendant 

is later charged with willful infringement. Intervenor’s 

Second Supp. Br. 8 (“[D]ismissing a complaint without 

prejudice could have ongoing legal consequences because, 

 

923, 938 (9th Cir. 2001) (finding no abuse of discretion in 

district court’s voluntary dismissal of claims under Rule 

41(a)(2) and holding that the court did not have to inform 

the jury that the dismissed claims might later be refiled).
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

for example, the notice turns a defendant’s unwitting 

actions into intentional ones.”); see also Fed. R. Evid. 

201(b)(2) (allowing judicial notice of facts from “sources 

whose accuracy cannot reasonably be questioned”). And

as the panel opinion notes, the filing of such a complaint, 

though later voluntarily dismissed, has formed the basis 

for declaratory judgment jurisdiction where the initial 

defendant later brings a validity challenge: the initial 

action by the patentee may establish the necessary case 

or controversy for the later action. See TransWeb, LLC v. 

3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 

2016).

Another continuing effect is evident in the context of 

28 U.S.C. § 1500. The Supreme Court in Keene v. United 

States addressed the § 1500 bar on the Court of Federal 

Claims’s jurisdiction over a case when, at the time of its 

filing, a sufficiently related action is pending in another 

court, and the Court held that the bar continues to apply 

even after the other court action has been voluntarily 

dismissed without prejudice. 508 U.S. 200, 203, 207–09 

(1993); see Brief for the United States, Keene Corp. v. 

United States, No. 92-166, 1993 WL 290106, at *3 (filed 

Jan. 25, 1993). The other court action, though voluntarily 

dismissed without prejudice, is not treated in that context 

as if it had never been brought. 

Similarly, in Flowers v. Secretary of the Department of 

Health and Human Services, which involved a Vaccine 

Act provision barring certain benefits if a plaintiff had 

certain related actions pending, this court held that the 

bar applied even after the other actions were voluntarily 

dismissed without prejudice. 49 F.3d 1558, 1560–62 (Fed. 

Cir. 1995). The earlier actions were not treated as if 

never brought. And in Bonneville I, this court held that 

the Claims Court lacked jurisdiction over Bonneville’s 

claim because Bonneville had initially brought an appeal 

to the Board and had therefore elected that forum—even 

though Bonneville had later obtained a voluntary, with-
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

out-prejudice dismissal of its Board appeal. 43 F.3d at 

651, 653–55. The earlier action, though it had been 

voluntarily dismissed without prejudice, blocked the 

Claims Court case—the opposite of being treated as if it 

had never been brought.

C 

In short, the background law on the nullification effect of a voluntary, without-prejudice dismissal is a mixed 

bag, and it does not state a near-monolithic rule with only 

aberrational exceptions. Some effects are nullified, some 

not. More particularly, it is anything but established—in 

fact, the Director has acknowledged the absence of any 

authority holding—that such a dismissal nullifies the 

legal effect at issue here: a clock-starting effect prescribed 

by statute. In these circumstances, I conclude, there is no 

basis in the asserted background law for overriding the 

plain meaning of § 315(b). 

II

When the Director moves beyond his argument about 

background law, he presents nothing to indicate a clear 

congressional intent contrary to the plain meaning. 

Legislative history indications of congressional policy at 

most establish that § 315(b) is generally based on an 

assessment of the period suitable for a formally accused 

infringer (or privies or real parties in interest) to shape 

any IPR petition after formally receiving notice of a 

patentee’s charges of infringement, with the patentee and 

district courts thereafter given repose against IPR petitions filed by that accused infringer (or privies or real 

parties in interest). See 157 Cong. Rec. S5429 (daily ed. 

Sept. 8, 2011) (statement of Sen. Kyl) (stating that the 

“section 315(b) deadline afford[s] defendants a reasonable 

opportunity to identify and understand the patent claims 

that are relevant to the litigation”); H.R. Rep. No. 112-98, 

at 48 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 78 (expressing concern about use of IPR proceedings as a “tool[] 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

for harassment” by “repeated litigation and administrative attacks”). Those policies do nothing to undermine the 

plain meaning of the text: a bright-line rule of one year 

from service is a sensible prescription for serving those 

purposes.4 

The dissent suggests that, when an action is voluntarily dismissed without prejudice, “the accused infringer is 

led to think that the controversy has dissipated” and “the 

notice function of the filing is effectively eliminated.” 

Dissent at 11. Those suggestions, even if accepted on 

their own terms, do not establish the kind of incoherence 

or absurdity that would support adoption of an exception 

for voluntary dismissals without prejudice. Congress can 

sensibly choose a bright-line rule based on underlying 

notice concerns. In any event, the suggestions are, I 

think, weak on their own terms. The point of a dismissal 

“without prejudice” is to preserve, rather than eliminate, 

the ability of the plaintiff to sue the defendant again on 

the same claim. No defendant, if not given something 

more, such as a covenant not to sue, can reasonably 

understand a without-prejudice dismissal to give repose 

as to future assertion of that very patent; no defendant in 

that situation is entitled “to think that the controversy 

 

4 Several legislators opposed § 315(b) in the House 

bill for exactly that reason, explaining that § 315(b)’s 

bright-line “12-month deadline” is not “tied to substantive 

progress in patent litigation, such as the entry of an order 

by the district court construing the relevant patent 

claims,” and arguing that a strict 12-month deadline is 

“arbitrary” as it “does not account for the complexity of 

many patent cases that can encompass dozens of patents 

and defendants and hundreds of separate patent claims.” 

H.R. Rep. No. 112-98, at 164–65. A proposed amendment

offered by one of those legislators to tie the deadline to 

entry of a claim construction order failed. Id. at 58.
14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

has dissipated.” Indeed, as already noted, the bringing of 

an infringement suit, even if later voluntarily dismissed, 

can play a role, even a decisive role, in establishing the 

case or controversy needed for the once-accused infringer 

to bring an action for a declaratory judgment.

The dissent and the Director (in the Luminara case to 

which the dissent refers) suggest another reason that the 

statutory purpose requires an exception to § 315(b) for

service of a complaint that is later voluntarily dismissed 

without prejudice. Specifically, they suggest a possibility 

of manipulative abuse if § 315(b) is applied in accordance 

with its terms, without such an exception. Dissent at 12; 

Oral Arg. at 19:45–20:22, Luminara Worldwide, LLC v. 

Iancu, Nos. 17-1629, -1631, -1633 (Fed Cir. Apr. 5, 2018). 

The scenario of abuse is this: A patent owner could sue 

many possible infringers, serve them with complaints, 

and then quickly and unilaterally dismiss all of those 

cases under Rule 41(a)(1)(A)(i), which applies before the 

filing of an answer or motion for summary judgment. 

Such a unilateral dismissal would start the one-year IPR 

clock for all such defendants under § 315(b), were there no 

exception. After the year had elapsed without any of 

those defendants filing an IPR challenge, the patent 

owner could again sue any of them on the same patent, 

without fear of an IPR initiation by any of them (or their 

privies or real parties in interest), though others could file 

IPR challenges.

This hypothesized scenario cannot support the suggested inference that Congress, to avoid such abuse, must 

have silently prescribed an exception to § 315(b) for 

voluntary dismissals without prejudice. Notably, the 

scenario is purely hypothetical, as far as we know. We 

have been pointed to no evidence that any patent owners 

have behaved in the way posited. 

“[T]he Court rarely invokes [an absurd results] test to 

override unambiguous legislation.” Barnhart v. Sigmon 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15

Coal Co., Inc., 534 U.S. 438, 459 (2002). The stringency of 

this test for overcoming plain meaning reflects a strong 

deference to the legislature as the instiution for identifying and curing defects in laws. See SAS, 138 S. Ct. at 

1358 (“whatever its virtues or vices, Congress’s prescribed 

policy here is clear”); Antonin Scalia & Bryan A. Garner, 

Reading Law: The Interpretation of Legal Texts 237–39 

(2012) (explaining that “error-correction for absurdity can 

be a slippery slope” and that the absurdity doctrine 

should accordingly be narrow). I do not think that the 

merely hypothetical possibility of the abuse posited here 

makes the bright-line rule in § 315(b) absurd or incoherent. Cf. Silva-Hernandez v. U.S. Bureau of Citizenship & 

Immigration Servs., 701 F.3d 356, 363–64 (11th Cir. 2012) 

(ruling that hypothetical scenarios did not show absurdity 

sufficient to reject a provision’s plain meaning).

That is especially so because there are reasons to 

doubt the likely significance of the hypothesized scenario 

even beyond the fact that it has not yet shown up in 

reality. The scenario posits that the initially sued defendants, although already sued once on the patent, 

would decide to rely on the belief that they are substantially unlikely to be sued on it again—a premise that is 

dubious given that the initial dismissal was specifically 

without prejudice to the patentee’s right to file again, 

there has been no covenant not to sue, and the posited 

legal stratagem for avoiding IPRs is apparent. Without 

such (doubtful) reliance, it is plausible that one or more of 

the defendants would initiate IPR challenges to the 

patent at issue within the one-year period, defeating the 

posited scheme of the patentee. The assumptions of legal 

ignorance, naiveté, or uniform fingers-crossed risk assessment seem strained.

The posited scenario also requires downplaying evident risks to the patentee of implementing the scheme. 

By suing many defendants in the first place, the patentee 

would be expanding the pool of persons objectively threat-
16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

ened by the patent, which would seem to increase the 

likelihood of an early IPR challenge and to lower the cost 

of an IPR for any individual defendant if the defendants 

file jointly. That risk to the patentee further diminishes 

the likelihood of the abuse scenario. So does the risk that 

the patentee would face sanctions—in the initial litigation 

or later litigation—for acting as posited in the scenario. 

See Chambers v. NASCO, Inc., 501 U.S. 32, 46–47 (1991)

(explaining that inherent power “extends to a full range of 

litigation abuses”); Roadway Express, Inc. v. Piper, 447 

U.S. 752, 766 (1980) (discussing power to sanction the 

“willful[] abuse [of] judicial processes”); Willy v. Coastal 

Corp., 503 U.S. 131, 136–37 (1992) (discussing sanction 

power even where court lacked jurisdiction); Cooter & Gell 

v. Hartmarx Corp., 496 U.S. 384, 395–96 (1990) (postdismissal sanction power); Winslow v. Hunter (In re 

Winslow), 17 F.3d 314, 315 (10th Cir. 1994) (per curiam)

(discussing sanctions for “a pattern of litigation activity 

which is manifestly abusive”) (quoting Johnson v. Cowley, 

872 F.2d 342, 344 (10th Cir. 1989)). 

Finally, and in any event, the hypothetical abuse scenario cannot support adoption of the particular judicial 

modification of § 315(b)’s plain terms proposed by the 

Director—which is a gross mismatch for the abuse scenario. The suggested exception to § 315(b) would go far 

beyond dismissals under Rule 41(a)(1)(A)(i), which are the 

only ones the plaintiff can effectuate unilaterally. The 

suggested exception would also cover voluntary, withoutprejudice dismissals under Rule 41(a)(1)(A)(ii)—which are 

within the control of the defendant (later petitioner)—and 

under Rule 41(a)(2)—which are within the control of the 

court. Unilateral manipulation is not possible under 

those provisions: for all of those dismissals, the defendant 

and the court have power to protect against the posited 

abuse. (The present case involved a non-unilateral dismissal.) There is no basis for inferring, or adopting, a 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17

nontextual exception that extends far beyond a very 

limited scenario of merely hypothetical potential abuse.

* * *

In sum, I think that the statutory issue in this case 

falls within the principle that “where the language of an 

enactment is clear, and construction according to its 

terms does not lead to absurd or impracticable consequences, the words employed are to be taken as the final 

expression of the meaning intended.” United States v. 

Mo. Pac. R.R. Co., 278 U.S. 269, 278 (1929). If there turns 

out to be a problem in the statute’s application according 

to its plain meaning, it is up to Congress to address the 

problem.
United States Court of Appeals 

for the Federal Circuit ______________________ 

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2015-1242

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________ 

DYK, Circuit Judge, joined by LOURIE, Circuit Judge, 

dissenting. 

The en banc issue in this case is whether the time bar 

of 35 U.S.C. § 315(b) applies when a petitioner is served 

with a complaint more than one year before the petition 

for inter partes review (“IPR”), but the complaint is dismissed without prejudice. En banc consideration was 

occasioned by the fact that two different panels reached 
2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

opposite conclusions on this issue in this case and in 

Luminara Worldwide, LLC, v. Matal, No. 17-1629 (Fed. 

Cir. filed Feb. 13, 2018). The en banc court now agrees 

with the Click-to-Call panel and holds that section 315(b) 

applies, even when the earlier complaint was dismissed 

without prejudice.1 In our view, the use of traditional 

tools of statutory construction leads to a conclusion opposite to the en banc court. 

Section 315(b) provides that “inter partes review may 

not be instituted if the petition requesting the proceeding 

is filed more than 1 year after the date on which the 

petitioner . . . is served with a complaint alleging infringement of the patent.” In our view, the Board’s interpretation of the statute was correct, and section 315(b)’s

time-bar should not apply when the underlying suit has 

been voluntarily dismissed without prejudice. We reach 

this conclusion for three reasons. 

First, the panel opinion relies on the language of section 315(b) as being unambiguous, because, on its face, it 

does not exclude voluntary dismissals without prejudice. 

But, the meaning of “service of a complaint” is not on its 

face unambiguous. In closely comparable circumstances, 

the Supreme Court has held that it is necessary to look

beyond the language, to the context and purpose of the 

statute. Kasten v. Saint-Gobain Performance Plastics 

Corp., involved language in the Fair Labor and Standards 

Act (the “Act”). 563 U.S. 1, 7 (2011). The Act’s antiretaliation section prevented employers from “discharg[ing] or in any other manner discriminat[ing] 

against any employee because such employee has filed 

any complaint . . . under or related to [the Act].” 29 

 

1 Contrary to the panel opinion (Panel Op. 14), this 

issue was not addressed, much less resolved, in the en 

banc Wi-Fi opinion. See Wi-Fi One, LLC v. Broadcom 

Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc). 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

U.S.C. § 215(a)(3) (emphasis added). The issue was 

whether an oral complaint fit within the language “filed 

any complaint.” Kasten, 563 U.S. at 7. The Court concluded “the text, taken alone, cannot provide a conclusive 

answer to our interpretive question . . . . We must look 

further.” Id. at 11. The Court examined how the words 

had been used by “legislators, administrators, and judges,” id. at 8, and reviewed “contemporaneous judicial 

usage,” id. at 9. These sources helped the Court conclude 

that oral complaints should qualify, because “considering 

the provision in conjunction with the purpose and context 

[led the Court] to conclude that only one interpretation is 

permissible.” Id. at 7. 

This situation is similar. In this context, the concept 

of service and filing seem to be equivalent. Section 

315(b)’s phrase, “served with a complaint,” is almost the 

same as the phrase “filed any complaint” at issue in 

Kasten. In Kasten, the issue was whether the complaint 

could include written and oral complaints, whereas the 

issue here is whether the complaint could include a complaint later voluntarily dismissed without prejudice. Both 

are situations where “[t]he definition of words in isolation,” is not “necessarily controlling,” or even clear in 

terms of ordinary meaning. Dolan v. U.S. Postal Serv., 

546 U.S. 481, 486 (2006). Rather, “[i]nterpretation of 

[the] word or phrase depends upon reading the whole 

statutory text, considering the purpose and context of the 

statute, and consulting any precedents or authorities that 

inform the analysis.” Id.; see also FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 132 (2000) (“In 

determining whether Congress has specifically addressed 

the question at issue, a reviewing court should not confine 

itself to examining a particular statutory provision in 

isolation. The meaning—or ambiguity—of certain words 

or phrases may only become evident when placed in 

context.”). 
4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

Second, a well-established background principle supports the PTO’s reading of the statute. Courts have

typically treated voluntary dismissals without prejudice 

as restoring the parties to the situation that existed 

before the case had ever been brought. In Bonneville

Assocs. v. Barram, 165 F.3d 1360, 1362–64 (Fed. Cir. 

1999), an appeal to the General Services Administration 

Board of Contract Appeals had been voluntarily dismissed, and the question was whether the requirement of 

timely filing had been satisfied by the dismissed appeal. 

This made it necessary to “determine the effect of the 

voluntary dismissal of Bonneville’s appeal without prejudice.” Id. at 1364. Our court recognized that “[t]he rule in 

the federal courts is that ‘[t]he effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) “is to 

render the proceedings a nullity and leave the parties as 

if the action had never been brought.”’” Id. (second alteration in original) (quoting Williams v. Clarke, 82 F.3d 

270, 273 (8th Cir. 1996)). Thus, dismissal “leaves the 

situation as if the suit had never been brought.” Id. at 

1363.

Similarly, in Graves v. Principi, 294 F.3d 1350, 1355–

56 (Fed. Cir. 2002), we held that filing an appeal in Veterans Court did not toll the 120-day period for appeals 

from the decision of the Board of Veteran’s Appeals, when 

the appeal was voluntarily dismissed without prejudice. 

We held that “as a matter of law, once [the veteran’s] 

appeal was dismissed . . . it was as if the appeal had never 

been filed.” Id. We explained that the 

dismissal of his initial appeal meant that Mr. 

Graves was barred from appealing the January 

18, 1998 decision of the Board . . . . because, in 

light of the dismissal, he was in the same situation that he would have been in if he had never 

filed a notice of appeal, and by June 18, 1998, the 

date of the dismissal, the 120–day period under 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

section 7266(a) for filing a notice of appeal had 

passed.

Id. at 1356. We reiterated that “[t]he dismissal of an 

action without prejudice leaves the parties as though the 

action had never been brought.” Id. 

Other circuits have likewise treated dismissals without prejudice as restoring the parties to the exact situation as if the original complaint had never been filed. See, 

e.g., Norman v. Ark. Dep’t of Educ., 79 F.3d 748, 751 (8th 

Cir. 1996) (“[T]he ‘effect of a voluntary dismissal without 

prejudice is to render the proceedings a nullity and leave 

the parties as if the action had never been brought.’”

(quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig., 

551 F.2d 213, 219 (8th Cir. 1997))).2 The understanding 

that dismissal without prejudice renders the original 

 

2 See also Harvey Specialty & Supply, Inc. v. Anson 

Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005) 

(“The effect of [a Rule 41(a)(1)] dismissal is to put the 

plaintiff in a legal position as if he had never brought the 

first suit.” (alteration in original) (quoting LeCompte v. 

Mr. Chip, Inc., 528 F.2d 601, 603 (5th Cir. 1976))); Navellier v. Sletten, 262 F.3d 923, 938 (9th Cir. 2001) (“A 

dismissal without prejudice . . . leaves the parties where 

they would have stood had the lawsuit never been 

brought.” (citing In re Corey, 892 F.2d 829, 835 (9th 

Cir.1989))); Beck v. Caterpillar, Inc., 50 F.3d 405, 407 (7th 

Cir. 1995) (“While [plaintiff’s] first lawsuit was filed 

within the limitations period, that suit was voluntarily 

dismissed . . . and is treated as if it had never been 

filed.”); Simons v. Southwest Petro–Chem, Inc., 28 F.3d 

1029, 1030–31 (10th Cir. 1994); Humphreys v. United 

States, 272 F.2d 411, 412 (9th Cir. 1959) (“[A] suit dismissed without prejudice pursuant to Rule 41(a)(2) leaves 

the situation the same as if the suit had never been 

brought in the first place.”).
6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

filing a “nullity” and restores the parties to the situation 

that would have prevailed if the original complaint had 

never been filed is supported by the leading federal practice treatise. See 9 CHARLES ALAN WRIGHT & ARTHUR R.

MILLER, FEDERAL PRAC. AND PROC. § 2367 (3d. ed. 2018)

(“[A]s numerous federal courts have made clear, a voluntary dismissal without prejudice . . . leaves the situation 

as if the action never had been filed.”).

This rule has been applied in the closely comparable 

situation where a complaint dismissed without prejudice

is held not to toll the statute of limitations, absent some 

evidence of a contrary legislative intent. See Willard v. 

Wood, 164 U.S. 502, 523 (1896) (“The general rule in 

respect of limitations must also be borne in mind, that if a 

plaintiff mistakes his remedy, in the absence of any 

statutory provision saving his rights, or where, from any 

cause, a plaintiff becomes nonsuit, or the action abates or 

is dismissed, and, during the pendency of the action, the 

limitation runs, the remedy is barred.”); Jorge v. 

Rumsfeld, 404 F.3d 556, 563 (1st Cir. 2005) (“[A] prescriptive period is not tolled by filing a complaint that is subsequently dismissed without prejudice.”); Garfield v. J.C. 

Nichols Real Estate, 57 F.3d 662, 666 (8th Cir. 1995) (“A 

dismissal without prejudice does not toll a statute of 

limitation.”); Robinson v. Willow Glen Acad., 895 F.2d 

1168, 1169 (7th Cir. 1990) (holding that a tolling provision

triggered by the “commencement of an action” did not 

apply where a complaint was filed but was later voluntarily dismissed); Davis v. Smith’s Transfer, Inc., 841 F.2d 

139, 140 (6th Cir. 1988) (per curiam) (“The initial filing of 

plaintiff’s suit within the six-month time period is simply 

not the effective filing date of plaintiff’s suit because it 

was later dismissed by the plaintiff under Fed. R. Civ. P. 

41(a). A suit, so dismissed, does not toll nor effect in any 

way the continuous running of the applicable statutory 

time period.”); Dupree v. Jefferson, 666 F.2d 606, 611 

(D.C. Cir. 1981) (“We conclude, then, that the rule against 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

tolling . . . applies with equal force to nonprejudicial 

dismissals, be they voluntary or involuntary.”); Curtis v. 

United Transp. Union, 648 F.2d 492, 495 (8th Cir. 1981) 

(“It is our view that Rule 54(b) does not provide an exception in this case to the rule that the entry of a voluntary 

dismissal without prejudice leaves the action as if suit 

had never been brought for purposes of the statute of 

limitations.”); Bomer v. Ribicoff, 304 F.2d 427, 429 (6th 

Cir. 1962) (“In the absence of a statute to the contrary a 

party cannot deduct from the period of the statute of 

limitations the time during which the action so dismissed 

was pending.”).

The panel opinion suggests that this treatment of 

dismissals without prejudice is not a uniform rule and 

that “for many . . . purposes, the dismissed action continues to have legal effect.” Panel Op. 23. This is not correct. The panel indicates only two such claimed 

instances: (1) where a dismissal without prejudice does 

not bar an award of costs as a sanction for a frivolous 

filing, see, e.g., Cooter & Gell v. Hartmarx Corp., 496 U.S. 

384, 395–96 (1990), and (2) where the filing is relied on to 

establish a controversy between the parties for assessing 

declaratory judgment jurisdiction, see TransWeb, LLC v. 

3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 

2016). But neither of these is a situation where the issue 

is the legal effect of the earlier filing, and the question is 

whether the original filing triggers a legal obligation, such 

as the start of a time period. In that situation, the cases 

are uniform that, absent contrary intent, the earlier 

dismissed filing (or in this case service) has no legal effect. 

We ruled in Abbott Laboratories v. TorPharm, Inc., 

503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume 

Congress’s familiarity with general principles of law when 

enacting a statute.” In other words, “Congress is presumed to legislate against the backdrop of existing law.” 

Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003); 

accord Cannon v. Univ. of Chi., 441 U.S. 677, 698–99 
8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

(1979). This widespread treatment of voluntary dismissals without prejudice provided the background for the 

enactment of section 315(b), and section 315(b) must be 

read in light of that background legal principle, so that 

the one year time-bar is not triggered if the underlying 

infringement action is voluntarily dismissed without 

prejudice. 

The importance of assessing the statutory language in 

the light of background principles is confirmed by Keene 

Corp. v. United States, 508 U.S. 200 (1993). There the 

statute provided that “the Court of Federal Claims ‘shall 

not have jurisdiction’ over a claim, ‘for or in respect to 

which’ the plaintiff ‘has [a suit or process] pending’ in any 

other court.” Id. at 207 (alteration in original) (quoting 28 

U.S.C. § 1500). The question was whether dismissal 

without prejudice of the previously filed action eliminated 

the jurisdictional bar. Id. at 202–05. The Supreme Court 

held that it did not. Id. at 209, 217. The Supreme Court 

did not primarily rely on the language of the statute to 

resolve the question, but looked instead to another applicable background principle—in that case the principle 

that jurisdiction is to be determined at the time the action 

(there the Claims Court action) was filed. Id. at 205–07. 

“In applying the jurisdictional bar here by looking to the 

facts existing when Keene filed each of its complaints, the 

Court of Federal Claims followed the longstanding principle that ‘the jurisdiction of the Court depends upon the 

state of things at the time of the action brought.’” Keene, 

508 U.S. at 207 (quoting Mollan v. Torrance, 9 Wheat. 

537, 539 (1824) (Marshall, C.J.)). In light of that principle, the Court held that the pendency of the district court 

action, at the time the Claims Court action was filed, was 

a bar. Id. at 209. So here, the background principle is 

that the dismissal of an action without prejudice leaves 

the parties as though the action had never been brought. 

Third, typically where there is an intention to depart 

from the normal treatment of voluntary dismissals with-
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

out prejudice, the statute or the rule says so explicitly,

there is a clear legislative decision to depart from the 

usual rule, or, as in Keene, there is a conflicting background principle. For example, Rule 41 itself states that 

we should depart from the normal rule when “the plaintiff 

previously dismissed any federal- or state-court action 

based on or including the same claim, [in which case] a 

notice of dismissal operates as an adjudication on the 

merits.” Fed. R. Civ. P. 41(a)(1)(B). Similarly, in Flowers 

v. Secretary of the Department of Health & Human Services, 49 F.3d 1558, 1560–61 (Fed. Cir. 1995), we found 

that the Vaccine Act banned claimants from seeking 

related benefits “[i]f a plaintiff has pending a civil action 

for damages for a vaccine-related injury or death,” 42 

U.S.C. § 300aa–11(a)(5), even if that action was subsequently voluntarily dismissed without prejudice. Congress originally provided in the act that the co-pending

bar would not apply if the plaintiff “withdraw[s] the 

action.” Flowers, 49 F.3d at 1560 (quoting Pub. L. No. 99–

660, tit. III, § 2111(a)(5), 100 Stat. 3755, 3759 (codified at

42 U.S.C. § 300aa–11(a)(5) (1988))). Congress, however, 

specifically repealed the exception. We concluded that the 

usual rule concerning voluntary dismissals without 

prejudice did not apply, because Congress specifically 

manifested contrary intent by removing the provision. Id. 

at 1561. 

Likewise, in Jenkins v. Village of Maywood, 506 F.3d 

622 (7th Cir. 2007), the Seventh Circuit recognized that 

the statute of limitations for a § 1983 claim could be tolled 

by the filing of a suit, later voluntarily dismissed without 

prejudice, because the Illinois statute governing the

statute of limitations 

provides that if an action is voluntarily dismissed 

by the plaintiff, “then, whether or not the time 

limitation for bringing such action expires during 

the pendency of such action, the plaintiff . . . may 

commence a new action within one year or within 
10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

the remaining period of limitation, whichever is 

greater . . . after the action is voluntarily dismissed by the plaintiff[.]

Id. at 624 (alterations in original) (quoting 735 ILL. COMP.

STAT. ANN. 5/13–217).3 

The fact is that Congress did not include any language in section 315(b) addressing voluntary dismissals 

without prejudice and here, contrary to the panel opinion,

there is no legislative history supporting an opposing

interpretation, suggesting that Congress intended to 

follow the usual rule, that such dismissals render the 

complaint a nullity.4

Finally, the purpose of the statute, as reflected in the 

legislative history, supports reading section 315(b)’s time 

bar as being inapplicable to voluntary dismissals without 

prejudice. One purpose of the statute was to require that 

the IPR petitioner file the IPR promptly after receiving 

notice of the patentee’s claims through the filing of the 

infringement action. The panel opinion notes that Senator Kyl explained that the “315(b) deadline afford[s] 

defendants a reasonable opportunity to identify and 

understand the patent claims that are relevant to the 

 

3 Both the panel opinion and Judge Taranto’s concurring opinion rely on section 315(a)(2)(C) as supporting 

the en banc holding showing that Congress made a deliberate choice not to refer to voluntary dismissals. Panel 

Op. 15; Concurring Op. 2. Section 315(a)(2)(C) simply 

provides that when an IPR has been instituted a later 

filed court action must be stayed until the court action is 

“dismissed.” It is difficult to see how this can be read as 

congressional rejection in section 315(b) of the usual rule 

concerning the consequences of a voluntary dismissal.

4 Nor is this like Keene, discussed above, in which 

another background principle is predominant. 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

litigation.” 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) 

(statement of Sen. Kyl). 

While the panel opinion argues that the notice function supports their interpretation, in fact, the notice 

function would not be vindicated if the underlying complaint were voluntarily dismissed without prejudice. 

When an action is filed, and then later voluntarily dismissed, the accused infringer is led to think that the 

controversy has dissipated. In other words, the notice 

function of the filing is effectively eliminated by the 

dismissal without prejudice. 

As discussed earlier, in the comparable situation involving statutes of limitations, while the original filing 

provides notice to the defendant,5 that notice is nullified 

by a voluntary dismissal without prejudice, and the 

original filing does not toll the statute of limitations. See,

e.g., Willard, 164 U.S. at 523. Here, as in the limitations 

context, the underlying purpose of section 315(b) is not 

served by filing a complaint that is voluntary dismissed 

without prejudice. 

The statute was designed to give the petitioner a full 

year after receiving notice of the filing of the action to file 

the IPR, so that the potential petitioner could be fully 

aware of the claims and products at issue in the infringement litigation. The one year time-bar was intended to go 

into effect only after the defendant knows “which claims 

will be relevant and how those claims are alleged to read 

on the defendant’s products.” 157 Cong. Rec. S5429 (daily 

ed. 2011) (statement of Sen. Kyl). Despite the assertions 

to the contrary (Panel Op. 15–17), this purpose is thwart-

 

5 See Crown, Cork & Seal Co. v. Parker, 462 U.S. 

345, 352 (1983) (“Limitations periods are intended to put 

defendants on notice of adverse claims and to prevent 

plaintiffs from sleeping on their rights . . . .”).
12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 

ed by an early voluntary dismissal without prejudice. In 

that situation, the defendant is unlikely to have received 

the contemplated information, and that information will 

be of limited value, as the defendant has been led to 

believe that the underlying infringement action will no 

longer continue. 

So too, one of the purposes of section 315(b) in setting 

a one year time period was to bar the filing of an IPR 

when, typically, the district court action would have 

already consumed the time and attention of the court and 

parties. We have pointed out that in the inter partes 

review context, the “legislative history confirms . . . ‘Congress’s desire to enhance the role of the PTO and limit the 

burden of litigation on courts and parties.’” Murata 

Mach. USA, Ltd. v. Daifuku Co., 830 F.3d 1357, 1362 

(Fed. Cir. 2016) (quoting NFC Tech. LLC v. HTC Am., 

Inc., 2015 WL 1069111, at *5 (E.D. Tex. 2015)) (discussing 

AIA legislative history). However, the situations that 

result in a voluntary dismissal without prejudice do not 

implicate these concerns. This is because voluntary 

dismissals usually come early in the case, typically before 

the answer is filed or by agreement from both parties.

Finally, the purposes of section 315(b) will be defeated 

if the patentee plaintiff is allowed to manipulate the filing 

of infringement actions in order to bar a future IPR 

challenge. Indeed, if dismissals without prejudice did not 

nullify the underlying complaint, patent owners would 

have an incentive to file suits alleging infringement and 

subsequently voluntarily dismiss these suits without 

prejudice after service of a complaint. Such actions would 

effectively begin the one year clock for the accused infringer to file an IPR, even when there was no longer an 

underlying infringement action. Congress could not have 

intended to provide a mechanism for such manipulation.

Thus, we conclude that, contrary to the en banc holding, the section 315(b) time-bar should not apply when the 
CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

underlying complaint alleging infringement has been 

voluntarily dismissed without prejudice.