Defendants in district court litigation are generally aware that a petition for inter partes review ("IPR") must be filed within the statutory one-year window triggered by service of a complaint for infringement. What is less well known is that not all such complaints will trigger the one-year window. Recent Board decisions conclude that the one-year window is not triggered by the service of a complaint ultimately dismissed without prejudice.
In a seemingly unambiguous manner, 35 U.S.C. § 315(b) states:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one 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 patent.
However, over the past year, the Patent Trial and Appeals Board has, on at least three occasions, found that § 315(b)'s one-year deadline does not apply where service of a complaint occurred more than a year ago in an action that was dismissed without prejudice.
In its most recent decision, the Board denied a patent owner's request for rehearing of the decision to institute IPR. Oracle Corp., et al., v. Click-to-Call Techs. LP, IPR2013-00312, Paper 40 (PTAB Dec. 18, 2013). As grounds for its rehearing request, the patent owner had argued, inter alia, that certain of the petitioners were barred under § 315(b), because they had been served with an infringement complaint back in 2001. That lawsuit was, however, dismissed without prejudice in 2003. Despite the passage of twelve years (which included an intervening ex parte reexamination of the patent at issue), the Board described how "both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a dismissal without prejudice as something that, de jure, never existed . . . leaving the parties in the same legal position as if the underlying complaint had never been served." Therefore the Board found that the petitioner was not barred under § 315(b).
The Board's interpretation of § 315(b) leaves open the possibility for patent challengers to pursue an IPR petition well more than one year after the service of a complaint, so long as service occurred in an action that was dismissed without prejudice – a situation that could occur, e.g., where a patent owner has filed serial infringement actions.
Oracle Corp., et al., v. Click-to-Call Techs. LP, IPR2013-00312, Paper 40 (PTAB Dec. 18, 2013); BAE Sys. Info & Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 15 (PTAB Jul. 3, 2013); Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper 18 (PTAB Jan. 24, 2013).
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