Two recent decisions from the PTAB and Federal Circuit signal inter partes review (“IPR”) petitioners to be cautious of approaching too closely the one-year time bar set forth in 35 U.S.C. § 315(b). First, on August 14, 2018, the PTAB denied institution of a petition that had been filed more than one year after a related district court complaint had been mailed, but within a year from its receipt. Vizio, Inc. v. ATI Techs. ULC, IPR2018-00560, Paper 7 (PTAB Aug. 14, 2018). Then, on August 16, 2018, the Federal Circuit held that a complaint could trigger the one-year time bar even if that complaint had been dismissed without prejudice. Click-to-Call Techs., LP v. Ingenio, Inc., No. 15–1242, 2018 WL 3893119, at *4 (Fed. Cir. Aug. 16, 2018). These decisions reiterate the need for IPR petitioners served with a complaint to approach the one-year bar cautiously when deciding target IPR filing dates.
When is the one-year bar triggered?
The time-bar statute, 35 U.S.C. § 315(b), mandates that an IPR petition must be filed within 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.” The statute sets the time bar based on the date of service of the complaint. Vizio, Paper 7 at 3. In Vizio, a dispute arose because the triggering infringement complaint was served by mail. Id. The petition filing date was more than one year from the mailing date of the complaint, but less than one year from its receipt. Id. at 3, 5. Thus, the timeliness of the petition depended on which date started the one-year clock. To answer this question, the PTAB looked to the Federal Rules of Civil Procedure, which dictate that service may be achieved by following state law. Id. at 3–4; Fed. R. Civ. P. 4(e)(1). Although it did not provide a specific rationale, the PTAB appeared to look to the Federal Rules of Civil Procedure because they dictate what constitutes service in the related civil action called out in 35 U.S.C. § 315(b). The PTAB then applied the applicable Delaware long-arm statute to determine that service occurred not when the Petitioner had received the complaint, but when the Patent Owner had mailed the complaint. Vizio, Paper 7 at 4–5. Therefore, the PTAB denied institution of Vizio’s petition as time-barred because it was filed on February 1, 2018, more than one year after the complaint’s January 30, 2017, mailing date. Id. at 5.
What constitutes a triggering complaint?
The Federal Circuit has also recently opined on the time bar issue, holding en banc that a complaint can trigger the one-year bar, even when that complaint was voluntarily dismissed without prejudice. Click-to-Call, 2018 WL 3893119, at *4. Click-to-Call (“CTC”) sued Ingenio for patent infringement in 2012, and Ingenio filed a petition for inter partes review of one of CTC’s asserted patents less than a year after service of CTC’s complaint. Id. at *2. However, CTC argued that the petition was time-barred because another entity had sued Ingenio’s predecessor on the same patent back in 2001. Id. That previous complaint had been voluntary dismissed without prejudice pursuant to a merger of the litigants. Id. at *1. Ingenio’s predecessor requested ex parte reexamination of the patent, and the patent was subsequently acquired by CTC. Id. at *2.
The PTAB rejected CTC’s attempt to prevent institution of Ingenio’s IPR, finding that dismissal of the 2001 complaint’s voluntary dismissal left the parties as though the action had never been brought, citing Federal Circuit authority and a classic treatise on federal civil practice. Id. at *3. On appeal, the en banc Federal Circuit held that the one-year time bar does apply to a complaint that was voluntarily dismissed without prejudice—unfortunate in this case, because IPRs were not an option when the original complaint was filed. Id. at *4. The Court reasoned that the statutory language is unambiguous when it states “is served with a complaint” and includes no exceptions. Id. at *5–6. The court viewed legislative history as confirming its reading of the statute and distinguished the recent case law the PTAB relied upon. Id. at *6–10.
The court also held that the patent’s reexamination did not affect the time bar because, unlike reissue, reexamination does not result in a new patent—and, in any event, reexamined claims are typically narrower in scope. Id. at *10–11. Finally, the Court extended the effect of its holding to Ingenio’s co-petitioners, because the petition identified Ingenio as a real party in interest to its co-petitioners, and § 315(b) bars institution of a petition if a “petitioner [or] real party in interest” is served more than one year prior to the petition’s filing. Id. at *11–14.
Judges Dyk and Lourie dissented, arguing that “service of a complaint” was ambiguous, and a dismissal would lead the parties to believe the controversy was over, rendering the notice function of service meaningless. Id. at *21–24 (Dyk, J., dissent). However, the majority pointed out that dismissal without prejudice does not always nullify the original action for all purposes—dismissed cases can have substantive effects (for example, on costs or willful infringement). Id. at *9; see also id. at *16–19 (Taranto, J., concurring). Moreover, Judge Taranto noted that a case dismissed without prejudice does not, in fact, remove all expectation that the plaintiff may re-file the suit in the future because the without-prejudice dismissal preserves the plaintiff’s right to initiate a later action. Id. at *19 (Taranto, J., concurring).
In short, recent decisions from the PTAB and Federal Circuit highlight the importance of monitoring the one-year period within which an IPR petition must be filed. Failure to recognize key events relevant to the § 315(b) time bar can result in unanticipated denial of a petition.