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Federal Circuit Changes Law on IPR Statutory Bar
Yesterday, the en banc Federal Circuit changed the law concerning the one-year statutory bar applicable to petitions for inter partes review (IPR). See Click-to-Call Techs., LP v. Ingenio, Inc., Appeal No. 2015-1242 (Fed. Cir. 2018). The Federal Circuit found that the statutory bar precludes an IPR petition filed more than a year after a patentee served a complaint that was voluntarily dismissed without prejudice.
Section 315(b) provides that an IPR “may not be instituted if the petition requesting the proceeding is filed more than 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.” 35 U.S.C. § 315(b). Previously, the Patent Trial and Appeal Board (PTAB) held in numerous opinions that a complaint voluntarily dismissed without prejudice did not trigger the section 315(b) time bar. See, e.g., Macauto U.S.A. v. BOS GmbH Co. KG, Case IPR2012-00004, slip op. at 14-16 (PTAB Jan. 24, 2013) (Paper 18) (finding no bar based on voluntary dismissal without prejudice). The PTAB—following Federal Circuit and common law precedent—consistently held that “the effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) ‘is to render the proceedings a nullity and leave the parties as if the action had never been brought.’” Id.
Ten members of the en banc Federal Circuit reversed the PTAB in a single footnote, explaining that “the 315(b) time bar applies” where “the district court action in which the petitioner was . . . served was voluntarily dismissed without prejudice.” Click-to-Call, slip. op. at 10 n.3. The footnote did not provide additional legal analysis or explanation in support of the en banc holding.
Judges Dyk and Lourie dissented, noting that “well-established background principle supports the PTO’s reading of the statute.” Dissenting op. at 4. Judges Dyk and Lourie reasoned that numerous “[c]ourts have typically treated voluntarily dismissals without prejudice as restoring the parties to the situation that existed before the case had . . . been brought.” Id. Judges Dyk and Lourie concluded that there was no indication that Congress intended to depart from that settled precedent in formulating the one-year bar.
Going forward, petitioners will need to rely on the earliest date of service of the complaint—regardless of whether it was dismissed without prejudice—in assessing the effect of a potential statutory bar. Petitioners should also review the timeliness of any pending petitions to determine if they are affected by this change in the law.