August 22, 2018
35 U.S.C. § 315(b) precludes institution of an inter partes review (IPR) if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent at issue. On August 16, in Click-to-Call Technologies, LP v. Ingenio, Inc., the Federal Circuit, in an unusual en banc footnote, held that the voluntary dismissal of an infringement complaint without prejudice does not stop section 315(b)’s time bar.
In 2001 Ingenio’s predecessor entity was served with a complaint for patent infringement, and the suit was subsequently dismissed voluntarily without prejudice. Ingenio subsequently requested ex parte reexamination of the subject patent, which resulted in a reexamination certificate cancelling some claims, amending others, and adding nine new claims. Click-to-Call Technologies (“CTC”) subsequently acquired the patent and sued multiple parties, including Ingenio. In 2013 Ingenio, along with three other petitioners, filed an IPR petition challenging the patent. In its preliminary response, CTC argued that section 315(b) barred institution of trial. The Patent Trial and Appeal Board (PTAB) found that Ingenio was not barred because the 2001 suit was dismissed without prejudice, thereby leaving the parties in the same legal position as if the complaint had never been served. The PTAB instituted trial based on Ingenio’s petition and found numerous claims unpatentable. CTC appealed.
On appeal, CTC argued that section 315(b)’s time bar precluded institution of the IPR. The Federal Circuit reviewed the PTAB’s interpretation of section 315(b) in light of Chevron, U.S.A., Inc v. Natural Resources Defense Council, Inc. Under the first step of Chevron, the court noted that “[t]he statute [(35 U.S.C. § 315(b)] does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.” The court concluded that the language of section 315(b) was plain and unambiguous and therefore did not consider whether the PTAB’s interpretation of section 315(b) was a permissible construction of the statute under the second step of Chevron.
The court dismissed as unpersuasive the PTAB’s contrary reasoning that a dismissal without prejudice has the effect of leaving parties as though the action had never been brought, noting that “the text of § 315(b) is agnostic as to the ‘effect’ of the service.” Thus, section 315(b)’s time bar is triggered upon service of the complaint and a subsequent dismissal thereof does not alter the fact that the complaint had been served.
The court rejected Ingenio’s alternative contention that because the ’836 patent was reexamined after service of the complaint and resulted in claims of different scope, the reexamined ’836 patent should be treated as a new patent for purposes of section 315(b). The court explained that “unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent,” and therefore the original complaint alleging infringement of the ’836 patent was the same patent challenged in the IPR petition.
The court also rejected Ingenio’s argument that the time bar should not apply to the three other petitioners named in the petition because they were not a party, in privity with, or otherwise a real party in interest with respect to the earlier litigation, and they would not be barred had they filed a petition separate from Ingenio. The court explained that section 315(b) and the implementing regulation are properly read to treat a “collection of petitioners on a single petition as a unit indistinguishable from each member of that collection.” Because “[t]hese four entities declared themselves as ‘the Petitioner’ in their sole IPR petition, and certified that Ingenio . . . is a ‘real party in interest,’. . . [p]etitioners are properly treated as an undifferentiated unit that filed an untimely petition.” The court noted that the Director of the USPTO could amend the pertinent regulation to allow separate treatment of co-petitioners for purposes of section 315(b)’s time bar.
This case is of interest to parties involved in patent disputes. In particular, parties considering filing an IPR petition should be careful not to co-file a petition with another party that could be time-barred. Conversely, patent owners served with a petition should investigate whether any petitioner or related party might be time-barred early in the proceedings.
For more information on this decision, please contact Fitch Even partner Paul B. Henkelmann, co-author of this alert.
Fitch Even associate George N. Dandalides contributed to this alert.
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