IPR Time-Bar Applies Even If Patent Infringement Suit Voluntarily Dismissed

https://depositphotos.com/33666627/stock-photo-too-late.htmlIn 2001, Click-To-Call Technologies’ (CTC’s) predecessor-in-interest initiated patent infringement litigation against Ingenio’s predecessor-in-interest for infringing the ’836 patent. Later, the parties voluntarily dismissed the suit. In 2013, following the Federal Circuit’s precedent at the time, the Board instituted Ingenio’s IPR petition finding that the time-bar did not apply because the original suit had been voluntarily dismissed without prejudice.

Recently, the Federal Circuit, sitting en banc, held §315(b) precludes IPR institution when the IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, even if the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.  Click-To-Call Technologies v. Ingenio, Inc., Yellowpages.com, LLC, No. 2015-1242, 2018 (Fed. Cir. Aug. 16, 2018) (Before O’Malley, Taranto, and Stark; Partial En Banc Decision before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll) (Opinion for the court, O’Malley, J.).

To support its finding, the Federal Circuit turned to the plain language of the statute, which states, without any exemptions or exceptions, 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 infringement of the patent.” Moreover, the Federal Circuit found that the legislative history manifested an intent consistent with the plain language of the statute.

Further, the Federal Circuit, sitting partially en banc, held that a reexamination of a patent does not affect the time-bar of § 315(b) because “[u]nlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.” Rather, a reexamination may result in amended or new claims to the original patent.  Because § 315(b) does not speak in terms of claims and instead, prescribes a time-bar based on an infringement complaint of the patent, the Court found no effect of a reexamination on the time-bar.  Furthermore, even though the original complaint concerned only a single party amongst the petitioners, the Court held that the time-bar affects all petitioners in the IPR because they are each a “real party in interest” as described in the statute.

Accordingly, the Federal Circuit vacated the Board’s decision and remanded with instructions to dismiss the IPR.

Judge Taranto (concurring):

Judge Taranto noted that because treating a voluntary dismissal as if it had never been brought varies depending on the context, and that the plain language § 315(b) gives no support to nullifying the time-bar as a result of a voluntary dismissal, the time-bar must apply.  Further, Taranto dismissed the dissent’s argument that a patent owner could bring suit and use a voluntary dismissal offensively to help eliminate institution of IPR proceedings as a merely hypothetical scenario.

Judge Dyk joined by Judge Lourie (dissenting):

The dissent argued that even though § 315(b) makes no mention of a voluntary dismissal nullifying the time-bar, the statute’s mention of “served with a complaint” is not unambiguous on its face, and therefore the § 315(b) leaves room for interpretation.  Furthermore, to support its conclusion that the voluntary dismissal should nullify the time-bar, the dissent pointed to the Federal Circuit’s decisions in Bonneville Assocs. v. Barram and Graves v. Principi where, under Rule 41(a) of Federal Civil Procedure, voluntary dismissals had the legal effect as if the action had never been brought.  Regarding the legislative intent to provide notice, the dissent argued that voluntary dismissals did not afford a petitioner adequate notice because the alleged infringer is unlikely to have received the contemplated information.

Take Away

Under 35 U.S.C. § 315(b), a party served with a complaint for patent infringement must file a petition for IPR within one year of the service, regardless of whether that suit is later voluntarily dismissed without prejudice.  Even if the patent is the subject of a later reexamination proceeding, the one-year period starts to run at the time of service of the complaint asserting the original patent. Additionally, the petition for IPR will be denied even if some of the named petitioners were not parties to the initial infringement action. 

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The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments. Join the discussion.

  1. Eric Berend August 30, 2018 4:42 pm

    “Busy, busy, busy as a bee —
    busy in my Fun Factory…”
    — Television commercial for Playdough[tm], 1980’s

    REALLY?!! Really? This is the same Court that played patty-cake with allowing amendments to inventors’ claims in already kangaroo-court type IPR proceedings before the PTAB, in manifest denial of the plain language of the statute?

    The same Court that refuses to observe precedence of even ITS OWN rulings, within a mere couple of years’ time frame. For a prime example, see: recent IPWatchdog.com article “Judge Taranto, Meet Judge Taranto” [1].

    ‘Busy’ is the word at the CAFC, rushing to delimit the practice of the AIA at the PTAB as a seeming new ‘trend’, in such stark contrast to the recent half-decade long tide of blatantly anti-inventor, anti-patentee decisions unleashed in the first blush of adjudications of the new law.

    Too little, too late.

    One could ‘put Humpty-Dumpty back together again’, at this stage of affairs in the U.S. patent space; but even that would not restore the confidence and good faith trust of inventors.

    Nay: it is past time for that. All that will attend this new trend, is to restore some relative measure of “fairness” to these proceedings – ironically and rather horribly, for the benefit in the main of the very same IP pirates who engendered this inventor-destroying moral panic, in the first place.

    Since inventors with any relevant understanding of the appalling situation of U.S. patent law working against their interest at every stage of process, have already abandoned the field [2], it is inevitably those which promulgated this racket, who now stand to gain the most benefit from any putative “correction” of such egregiously corrupt behavior in the judicial, executive and legislative branches of U.S. government.

    [1] – URL at “http://www.ipwatchdog.com/2018/08/24/judge-taranto-meet-judge-taranto/”
    [2] – the historical portion of U.S. patent applications filed by sole inventors has fallen from nearly one-quarter to a mere 1-in-25 (4% or so, as of 2017), with this change occurring in just the last decade

  2. Eric Berend August 30, 2018 4:55 pm

    In other words, as an explication as to the foregoing comment, there has been so much damage to the trust, confidence and respectability of inventors in the United States while the interests of the IP pirate cabal were so handsomely served by agents and representatives of all three branches of U.S. government in the AIA-PTAB horror show, that in net effect:

    now that it has served its TRUE purpose of clearing the patent field almost entirely of independent inventors and small business startups, U.S. patent due process in its jurisprudence can be restored to some degree of quasi-equitable treatment – for the IP pirates and corporation kings, only.

    Truly, a criminal racket in all but name.

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