Dismissal of a Complaint Without Prejudice Does Not Stop the IPR Time-Bar Clock

The Federal Circuit rules that the IPR time-bar provision of 35 U.S.C. § 315(b) applies even when a complaint served in a civil action is subsequently dismissed without prejudice.

Under 35 U.S.C. §315(b), an inter partes review may not be instituted if the petitioner, or its privy or real party in interest, was served a complaint alleging infringement of a patent more than one year before the filing of the IPR petition. In applying the one-year bar of § 315(b), however, the PTAB has held that dismissal of the complaint without prejudice negated the service of the complaint. In other words, the PTAB has treated a complaint dismissed without prejudice as having never been served for the purposes of § 315(b). However, in Click-to-Call Techs., LP v. Ingenio, Inc., the Federal Circuit has now held en banc that the PTAB’s interpretation of § 315(b) is erroneous and that a complaint is considered served even if it was later dismissed without prejudice.

In Click-to Call, Ingenio petitioned for IPR of Click-to-Call’s ‘836 patent. In its preliminary response, Click-to-Call argued that Ingenio was time-barred from filing the petition because Ingenio had been served with a complaint for infringement of the ’836 patent more than one year before it filed the IPR petition. Although the PTAB acknowledged that the complaint had been served more than one year before the filing of the IPR petition, the PTAB concluded that § 315(b) did not bar the petition because the complaint had been dismissed voluntarily without prejudice. Click-to-Call appealed.

In considering the language of § 315(b), the Federal Circuit found that § 315(b) does not contain any exceptions or exemptions for complaints served in civil actions subsequently dismissed without prejudice. “Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”

Now, a party served with a complaint for infringement must be cognizant that the IPR time-bar clock does not stop ticking if the complaint is dismissed without prejudice. Moreover, patent owners should be aware of this powerful defense when opposing an IPR petition.