315(b)

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Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a)

Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.”  To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint.  These provisions are designed to control PTAB filings concurrent with civil complaints.

In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.”
Continue Reading Declaratory Judgement Loophole at PTAB?

“Without Prejudice” Dismissal of Earlier Complaint Does not Restart 315(b) Clock

As I predicted it would back in May, the Federal Circuit has now reversed the long-standing practice of the Patent Trial & Appeal Board (PTAB) to accept certain IPR petitions outside of the 1-year window of 35 U.S.C. § 315(b).  While 315(b) precludes petitions filed more than one year after service of a complaint of infringement for a subject patent, the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the one-year window would essentially reset.  In other words the PTAB adopted the legal principal that a voluntary dismissal of a complaint renders the earlier proceeding a nullity and leave the parties as if the action had never been brought.

In its en banc ruling today in Click-to-Call v. Ingenio (here), the Court reversed the Board’s longstanding practice.
Continue Reading CAFC Reverses Long Standing PTAB Precedent on 1-Year Window

Can Dismissal Of A Complaint Without Prejudice Unring the 315(b) Bell?

Because there hasn’t been enough change to the PTAB over the last week with SAS Institute, get ready for more…but this one will aid Patent Owners.

Yesterday the Federal Circuit heard argument (again) in relation to the 2013 IPR filing in Oracle Corp. v. Click-to-Call Techs. LP.  As a reminder the PTAB’s decision in this dispute was designated precedential. (Section (III.A)). The precedential portion explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b). This was a critical determination to this petition as it appeared that one of the identified petition filers had been served with a complaint outside of the one-year IPR window. The Federal Circuit was able to reach this timing issue for the first time on appeal after WiFi One.

During yesterday’s oral argument, it appeared that this PTAB precedent will fall.
Continue Reading IPR Time Bar Exception to End?