IPR Time Bar May Be Invoked by Complaint Served, Then Voluntarily Dismissed Without Prejudice
Click-to-Call Technologies, LP v. Ingenio, Inc., __ F.3d __, 2018 WL 3893119 (Fed. Cir. Aug. 16, 2018) (O’MALLEY, Taranto, Stark) (joined as to Footnote 3 by the en banc Fed Cir) (PTAB) (4 of 5 stars)
Fed Cir vacates IPR written decision and remands for dismissal due to time-bar. The Board erred in holding that § 316(b)’s time bar was not triggered by a complaint that had been voluntarily dismissed without prejudice shortly after service. Applying the two-step test of Chevron, 467 U.S. 837 (1984), the opinion reasons that § 315’s language is unambiguous on this point in both its text and its legislative history, and thus declines to accord deference to the Board’s contrary interpretation. It rejects the Board’s argument that cases such as Graves, 294 F.3d 1350 (Fed. Cir. 2002), and Bonneville, 165 F.3d 1360 (Fed. Cir. 1999), interpreted the effect of such dismissals as returning the parties to the complete status quo ante; those cases addressed entirely different contexts and are distinguishable.
Per footnote 3 on page 10, the en banc Fed Cir joins the opinion’s holding that § 316(b)’s time bar may be triggered by a complaint dismissed without prejudice (footnote joined by Judges Prost, Newman, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, Stoll). Op. at 2, 10 n.3.
The opinion also rejects the petitioners’ proposed alternate grounds of affirmance. The interposition of an ex parte reexamination that materially changed the patent claims between the date of service and the date of the IPR petition did not alter application of § 315(b). Per Aspex Eyewear, 672 F.3d 1335 (Fed. Cir. 2012), reexamination modifies an existing patent, it does not result in a new one, and § 315(b) “does not speak in terms of claims” but of the patent. Op. at 25–26. It also rejects one petitioner’s attempt to distinguish itself from other time-barred petitioners. The opinion describes how this petitioner was identified as a “real party in interest for the others, and the four petitioners treated themselves as a sole entity for purposes of the IPR. “In these circumstances, under current law, Petitioners are properly treated as an undifferentiated unit that filed an untimely petition.” Op. at 27.
Concurrence: Judge Taranto describes why the rationales offered by the dissent are unpersuasive as to the interpretation of § 315(b).
Dissent from footnote 3: Judge Dyk (joined by Judge Lourie) dissents from the en banc Fed Cir’s joining of footnote 3. He would have found § 315(b) ambiguous as to the meaning of “service of the complaint,” and generally supports the PTO’s reasoning that voluntarily dismissals “restor[e] the parties to the situation that existed before the case had ever been brought.” Dissent at 4. He also expresses concern that a patent holder’s voluntary dismissal of a complaint would thwart the statutory design, and would lead to circumstances where the defendant does not get the full benefit of the one year to know which claims would be relevant, and how those claims are alleged to read on its products. Id. at 11.
KEYWORDS: INTER PARTES REVIEW; EN BANC; TIME BAR