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Karin Hessler Discusses Federal Circuit’s Time-Bar Decision on IPR Filings

August 24, 2018

Karin A. Hessler, a partner in Wiley Rein’s Intellectual Property and Litigation practices, was quoted in an August 22 article in Law360 regarding how patent challenge cases will be affected by the U.S. Court of Appeals for the Federal Circuit’s recent decision that an inter partes review (IPR) filing is subject to a time limitation even if a previous patent infringement claim has been voluntarily dismissed.

In Click-To-Call Technologies LP v. Ingenio Inc. et al., the Federal Circuit decided that a time-bar window begins once a lawsuit is filed, even if the lawsuit is later dismissed without prejudice. This decision rejected the Patent Trial and Appeal Board’s (PTAB) interpretation of the statute.   The PTAB had previously held that any patent suit dismissed without prejudice would not trigger the time-bar on the America Invents Act’s one-year time limit for the accused infringer to challenge the patent.

As a result of the decision, accused infringers may be more reluctant to accept offers from patentees to dismiss an infringement suit without prejudice, Ms. Hessler said.

“Accused infringers should try to obtain a dismissal with prejudice if possible, and should start preparation for any IPRs early,” she said.

Ms. Hessler added that since the Federal Circuit's holding departed significantly from how the PTAB interpreted the time-bar in the past, the decision is also likely to spur further litigation about how broadly it should be read.  “I expect we will see lot of disputes going forward about how this decision is applied to petitions that were already in existence,” Ms. Hessler said.

The article can be found here (subscription required).