October 8, 2018
Title 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 held that the voluntary dismissal of an infringement complaint without prejudice does not stop section 315(b)’s time bar. Then on September 23, finding no reason to distinguish Click-to-Call, the Federal Circuit held in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. that involuntary dismissal of an infringement complaint without prejudice also does not stop the one-year time bar. Accordingly, the court vacated the Patent Trial and Appeal Board's (PTAB’s) final written decision of invalidity and remanded for dismissal of the IPR.
As an interesting aside, the Federal Circuit considered sanctions issued by the PTAB against Atlanta Gas for its failure to notify the PTAB (through updated mandatory notices) of its parent company’s merger and name change, which occurred late in the proceedings but prior to the final written decision. Bennett raised the issue, and the merger actually raised a conflict with one of the PTAB judges, who then recused himself. The PTAB declined to terminate the IPR as a sanction, but allowed Bennett to move for costs and fees incurred subsequent to the final written decision. The PTAB had not ruled on the motion for fees at the time of the Federal Circuit’s decision. Because the PTAB had not yet quantified its sanctions award, the Federal Circuit found the award to be non-final and non-appealable. In addition, the court declined to exercise pendent jurisdiction because the sanctions award was not sufficiently intertwined with the 315(b) and patentability issues before the court. Accordingly, the court remanded for the PTAB to “quantify any sanctions.”
This case illustrates that patent owners served with a petition should investigate whether any petitioner or related party might be time-barred early in the proceedings. In addition, it is important for petitioners and patent owners to diligently apprise the PTAB of any ownership or other organizational changes to any real parties in interest throughout the entire IPR proceeding.
For more information on this decision, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.
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