NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ICN ACQUISITION, LLC,
Appellant
v.
SECURENET TECHNOLOGIES, LLC,
Appellee
______________________
2018-1369
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00959.
______________________
ON MOTION
______________________
PER CURIAM.
ORDER
ICN Acquisition, LLC, (“Appellant”) appeals from a
final written decision of the Patent Trial and Appeal
Board (“Board”) holding claims 1, 2, 6–10, 14–18, and 21–
25 of U.S. Patent 7,855,635 unpatentable as obvious.
SecureNet Techs., LLC v. Icontrol Networks, Inc., No.
IPR2016-00959,
2017 WL 4867006, Paper 25 (P.T.A.B.
Oct. 27, 2017). Appellant has moved to vacate the Board’s
2 ICN ACQUISITION, LLC v. SECURENET TECHNOLOGIES, LLC
decision and remand with instructions to dismiss for lack
of jurisdiction.
Appellant asserts that it filed a civil action in district
court for infringement of the ’635 patent more than a year
before SecureNet Technologies, LLC, (“Appellee”) peti-
tioned the Board for inter partes review of the same
patent. As a result, Appellant contends that the Board
did not have subject matter jurisdiction to institute an
inter partes review under 35 U.S.C. § 315(b). See Click-to-
Call Techs., LP v. Ingenio, Inc.,
899 F.3d 1321, 1328 n.3
(Fed. Cir. 2018) (en banc) (holding that § 315(b) “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 dis-
missed without prejudice”).
Appellee has informed the court that it does not op-
pose this motion. Accordingly, we grant Appellant’s
motion to vacate the Board’s decision in No. IPR2016-
00959 and remand to the Board with instructions to
dismiss the case.
IT IS ORDERED THAT:
(1) The oral argument in this case scheduled for Feb-
ruary 8 is cancelled.
(2) The Board’s decision in No. IPR2016-00959 is va-
cated.
(3) This appeal is remanded to the Board with in-
structions to dismiss.
ICN ACQUISITION, LLC v. SECURENET TECHNOLOGIES, LLC 3
FOR THE COURT
January 16, 2019 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE: January 16, 2019
