CAFC Reverses PTAB on §315(b) Petition Time Bar Interpretation

By Reza Mollaaghababa
Section 315(b) of the America Invents Act (AIA) provides that an inter partes review (IPR) proceeding “may not be instituted if the petition requesting the proceeding is filed more than 1 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.”

Recently, in Click-to-Call Technologies, LP v. Ingenio, Inc., Yellowpages.com, LLC, the CAFC reversed the Board’s interpretation of §315(b) in an IPR filed against U.S. Patent No. 5,818,836 that the voluntary dismissal of a civil action related to this patent, which has been served on the defendants more than one year prior to the filing of the IPR, negated the one-year bar instituted by §315(b) because such a voluntary dismissal nullified the effect of the service.  In reaching this conclusion, the Board emphasized that “the Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”

The CAFC did not agree and held that “the statute does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.  Nor does it contain any indication that the application of § 315(b) is subject to any subsequent act or ruling.  Instead, the provision unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement.  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.”

The CAFC noted that this reading of §315(b) is confirmed by its en banc decision in Wi-Fi One, in which the CAFC had held that the provision sets forth a “condition precedent to the Director’s authority to act,” based on “timely filing of a petition.”

In the present case, the Petitioners also argued that a reexamination of the patent at issue, which was conducted after the date of the service and before the filing of the IPR, had resulted in the issuance of significantly different claims relative to the original claims of the ‘836 patent, and hence had resulted in a different patent for the purposes of §315(b).  The CAFC was not, however, persuaded by this argument. The CAFC emphasized that “Unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.”

Finally, Petitioners argued that certain of the petitioners were not subject to the time bar of §315(b) because they were not in privity with the patent owner at the time of service of the civil action.  The CAFC rejected this argument and emphasized that §315(b) applies “petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection.”

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