In August, the Federal Circuit addressed the 35 U.S.C. § 315(b) one-year time bar to IPR institution in Click-to-Call Technologies, LP v. Ingenio, Inc. In an en banc footnote, the court held that an IPR cannot be instituted when the IPR petitioner has been served with a patent infringement complaint more than one year before filing its IPR petition, even if the underlying district court action has been voluntarily dismissed without prejudice.^[1] In so holding, the Federal Circuit rejected the USPTO’s construction of § 315(b), i.e., voluntary dismissal of a civil action leaves the parties as though the action had never been brought.^[2] Consequently, Click-to-Call allows patentees to manipulate infringement filings to bar future IPR proceedings, incentivizing accused infringers to file more IPR petitions, notwithstanding voluntary dismissal of the underlying infringement actions.

The 315(b) Time Bar

The statutory language of 35 U.S.C. § 315(b) places a one-year time bar on institution of IPR proceedings after service of a complaint alleging patent infringement.

An inter partes review 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.^[3]

At issue in Click-to-Call was proper interpretation of the statutory language “served with a complaint alleging infringement of the patent.”  In instituting Ingenio’s IPR, the Board relied upon previous Federal Circuit rulings that voluntary dismissals “leav[e] the parties as though the action has never been brought.”^[4] Click-to-Call (“CTC”), the IPR respondent, argued that the statutory language unambiguously bars institution, notwithstanding voluntary dismissal, because the statute does not mention actions subsequent to service of the complaint. Therefore, according to CTC, once the complaint is served, the time bar applies regardless of subsequent dismissal, whether voluntary or involuntary.

The Underlying Patent Dispute

The facts and procedural posture of Click-to-Call span more than a decade, over which both of the real parties in interest changed names and ownership. Here are the key procedural developments^[5]:

• June 8, 2001: Inforocket.Com, Inc. (“Inforocket”), the exclusive licensee of U.S. Patent No. 5,818,836, filed a complaint in the United States District Court for the Southern District of New York, asserting that defendant Keen, Inc. (“Keen”) had infringed the ‘836 patent.

• Sept. 14, 2001: Inforocket served its complaint on Keen.

• March 21, 2003: Inforocket and Keen stipulated to voluntary dismissal of the action, without prejudice, after Keen acquired Inforocket.

• May 29, 2012: After acquiring the ‘836 patent, CTC asserted patent infringement claims against Ingenio (formerly Keen) and other defendants in the United States District Court for the Western District of Texas.

• May 28, 2013: Ingenio and its co-defendants filed a single IPR petition challenging claims of the ‘836 patent on anticipation and obviousness grounds.

• Aug. 30, 2013: CTC filed its Preliminary Response, arguing that § 315(b) barred institution of IPR proceedings.

• Oct. 30, 2013: The Board sided with Ingenio and greenlighted IPR proceedings. The Board relied primarily on the 2003 voluntary dismissal without prejudice and reasoned that “[t]he Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”^[6]

• Oct. 28, 2014: The Board canceled thirteen claims of the ‘836 patent.^[7]

• Nov. 25, 2014: CTC filed its notice of appeal to the Federal Circuit.

The Federal Circuit Decision

The principal question on appeal was whether the Board erred in interpreting the statutory phrase “served with a complaint alleging infringement of the patent” in § 315(b) to mean that voluntary dismissal without prejudice does not trigger the one-year time bar.  Although Judge O’Malley authored the panel opinion in Click-To-Call, the 315(b) issue itself was decided in an en banc footnote, without its own detailed legal reasoning.^[8]  The court construed the plain language of 315(b) as follows:

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.^[10]

Concluding that this analysis satisfied the Chevron Step One inquiry, the court further explained:

Here, the text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint. Because “the statutory language is unambiguous and ‘the statutory scheme is coherent and consistent,’” our inquiry ceases and we need not proceed to Chevron’s second step.^[11]

Judge Taranto authored a concurring opinion, agreeing with the panel’s conclusion. “[T]he statutory issue in this case falls within the principle that ‘where the language of an enactment is clear, and construction . . . does not lead to absurd or impracticable consequences, the words employed are to be taken as the final expression of the meaning intended.’”^[12] Concerning the Board’s reliance on a background principle of procedure that would nullify a complaint and service of process after voluntary dismissal, Judge Taranto added that “[T]he task of making any advisable adjustments [should be] left to Congress.”^[13]

Click-to-Call’s Immediate Fallout

Click-to-Call has impacted the outcome of at least one subsequent Federal Circuit case. On the same day Click-to-Call was announced, the Federal Circuit relied on it to dismiss another IPR proceeding in Luminara Worldwide, LLC v. Iancu.^[14]

In Luminara, Candella, LLC (Luminara’s predecessor) filed a complaint against Shenzen Liown Electronics Co., Ltd. (“Liown”) in the District of Minnesota, alleging infringement of U.S. Patent No. 8,070,319. Service was acknowledged on December 3, 2012. After the District of Minnesota voluntarily dismissed the complaint without prejudice on December 16, 2013, Luminara commenced a second action against Liown on August 5, 2014, again alleging infringement of the ‘319 patent as to the same products involved in the earlier complaint. On July 31, 2015, within one year of service in the second suit, Liown petitioned for IPR of the ‘319 patent. The Board instituted the IPR and canceled claims 1–5 of the ‘319 patent on the merits.^[15]

Relying on Click-to-Call, the Federal Circuit sided with Luminara on appeal, holding that the Board erred in its institution decision. Reasoning that the 315(b) time bar applied notwithstanding the 2016 voluntary dismissal, the court vacated the Board’s final written IPR decision and remanded to the Board for dismissal.

Luminara highlights a concern voiced by Judge Dyk in his Click-to-Call dissent: patentee plaintiffs may be allowed to manipulate the filing of infringement actions to bar future IPR challenges.  Arguing that voluntary dismissals should not trigger 315(b)’s one-year clock, Judge Dyk wrote:

[I]f dismissals without prejudice did not nullify the underlying complaint, patent owners would have an incentive to file suits alleging infringement and subsequently voluntarily dismiss these suits without prejudice after service of a complaint. Such actions would effectively begin the one-year clock for the accused infringer to file an IPR, even when there was no longer an underlying infringement action. Congress could not have intended to provide a mechanism for such manipulation.^[16]

These cases may complicate the analysis for an accused infringer about whether or not to pursue an IPR when weighing the possibility of voluntary dismissal of a district court infringement action.

Mike Jespersen wrote this article.

_{[1] Click-to-Call Tech., LP v. Ingenio, Inc., No. 2015-1242, 2018 WL 3893119, at *4 n.3 (Fed. Cir. Aug. 16, 2018).}

_{[2] Id. at *7.}

_{[3] 35 U.S.C. § 315(b) (2016) (emphasis added).}

_{[4] See Graves v. Principi, 294 F.3d 1350, 1355–56 (Fed. Cir. 2002) (citing See Bonneville Assocs. Ltd. P’ship v. Barram, 165 F.3d 1360, 1364 (Fed.Cir.1999)).}

_{[5] For a more complete discussion of the factual and procedural history, see Click-to-Call, 2018 WL 3893119, at *1–4.}

_{[6] Oracle Corp. v. Click-to-Call Tech. Corp., No. IPR2013-00312, 2013 WL 11311788, at *7 (P.T.A.B. Oct. 30, 2013).}

_{[7] See Oracle Corp. v. Click-to-Call Tech. Corp., No. IPR2013-00312, 2014 WL 5490583 (P.T.A.B. Oct. 28, 2014).}

_{[8] See Click-to-Call, 2018 WL 3893119, at *4 n.3. Footnote 3 was joined by Chief Judge Prost and Judges Newman, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll.}

_{[9] See Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 842–43 (1984) (“When a court reviews an agency’s construction of the statute which it administers, it is confronted with two questions. First, always, is the question whether Congress has directly spoken to the precise question at issue. If the intent of Congress is clear, that is the end of the matter; for the court, as well as the agency, must give effect to the unambiguously expressed intent of Congress.”).}

_{[10] Click-to-Call, 2018 WL 3893119, at *5 (emphasis added).}

_{[11] Id. at *7 (citing Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450 (2002)).}

_{[12] Id. at *21 (Taranto, J., concurring) (quoting United States v. Missouri Pac. R. Co., 278 U.S. 269, 278 (1929)).}

_{[13] Id. at *15.}

_{[14] Luminara Worldwide, LLC v. Iancu, Nos. 2017-1629, 2017-1631 & 2017-1633, 2018 WL 3892991 (Fed. Cir. Aug. 16, 2018).}

_{[15] See Shenzen Liown Elecs. Co., Ltd. v. Disney Enters., Inc., No. IPR2015-01656, 2017 WL 500153 (P.T.A.B. Feb. 6, 2017).}

_{[16] Click-to-Call, 2018 WL 3893119, at *25 (Dyk, J., dissenting).}