Dismissed infringement suits still subject to IPR time bar: Fed Circuit
The US Court of Appeals for the Federal Circuit yesterday ruled that an inter partes review (IPR) filing is still subject to a time limitation even if a previous patent infringement claim has been dismissed.
In doing so, the Federal Circuit sided with Click-to-Call Technologies (CTC) and overturned a previous decision by the Patent Trial and Appeal Board (PTAB).
According to section 315(b) of 35 USC, an IPR petition cannot be instituted if it is filed more than one year after the petitioner was served with a patent infringement complaint.
The Federal Circuit said that the PTAB “committed legal error” in its determination of section 315(b).
“Because the subject petition was time-barred, the board lacked jurisdiction to institute the IPR proceedings,” said the Federal Circuit.
In 2001, ‘general hobby’ store Inforocket.com sued an AT&T subsidiary called Ingenio, then known as Keen, for allegedly infringing US patent number 5,818,836.
Keen responded by bringing its own patent infringement action against Inforocket based on US patent number 6,223,165. The US District Court for the Southern District of New York entered judgment in favour of Inforocket. Keen then filed a notice of appeal in 2002.
While the appeal was pending, Keen acquired Inforocket as its wholly-owned subsidiary. As a result, the district court granted a dismissal of both suits without prejudice.
AT&T sold its interest in Ingenio—which had been rebranded from Keen in 2003—and YellowPages.com in April 2012.
CTC subsequently acquired the ‘836 patent from Inforocket and enforced it against several companies in May 2012, including AT&T. Ingenio was named as a defendant in the same claim.
In 2013, Ingenio, YellowPages.com and Oracle—which was also sued by CTC for allegedly infringing the patent in a different complaint—filed a single IPR petition challenging the claims of the ‘836 patent on grounds of anticipation and obviousness.
CTC responded by contending that section 315(b) statutorily barred institution of the IPR proceedings. The company also said that Ingenio lacked standing based on the fact it had already been served with a patent infringement claim on the same patent by Inforocket.
The PTAB said that Ingenio was able to file an IPR review as the earlier complaint filed against the company was voluntarily dismissed without prejudice. The PTAB added that a voluntary dismissal without prejudice “leaves the situation as if the action never had been filed”.
CTC filed an appeal against the PTAB’s decision in 2014.
The Federal Circuit said yesterday that a defendant served with a complaint that is voluntarily dismissed without prejudice “remains served with the complaint”.
“This remains true even if that action becomes a ‘nullity’ for other purposes and even if such service becomes legally irrelevant in a subsequent court action,” said the Federal Court.
In its decision, the Federal Circuit said that, under the unitary-entity interpretation of section 315(b), the petition was untimely. The court said the petitioners filed the single petition more than one year after Ingenio (which was itself rebranded to YP Interactive) was served with a complaint alleging infringement of the ‘836 patent and was therefore barred from taking part in the petition.
The Federal Circuit vacated and remanded the PTAB’s decision.
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