by Dennis Crouch
In an unusual en banc footnote, the Federal Circuit has ruled that the litigation time-bar found in 35 U.S.C. § 315(b) applies even in cases where the plaintiff-patentee voluntarily dismisses the lawsuit without prejudice. Click-to-Call Tech., LP v. Ingenio, Inc. and Iancu (Fed. Cir. 2018).
The statute provides:
An inter partes review (IPR) 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.
In this case, the Board acknowledged that a qualifying prior infringement lawsuit had been filed and served upon the prior-interest holder of the petitioner. However, the Board allowed the IPR to move forward because of the voluntary dismissal — noting 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.” Here, the en banc court has reversed that judgment — holding that the IPR must be dismissed.
The short en banc footnote was signed by ten members of the court. That footnote did not explain the reasons for its legal conclusions. Judge O’Malley filed the panel opinion in the case — offering a justification for the interpretation as did Judge Taranto in a concurring opinion. The two dissenters — Judges Dyk and Lourie — argue that the statute should be interpreted in light of tradition: “Courts have typically treated voluntary dismissals without prejudice as restoring the parties to the situation that existed before the case had ever been brought.”
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The actual facts here are a bit convoluted. The challenged patent (U.S. Patent No. 5,818,836) was originally owned by its inventor Stephen DuVal and exclusively licensed to InfoRocket. Back in 2001, InfoRocket sued Keen for infringement. Keen then purchased InfoRocket and the case was voluntarily dismissed. Keen then changed its name to Ingenio. Although Ingenio then had rights to the patent — it apparently wanted to escape from paying royalties and so filed for reexamination. Meanwhile DuVal had gone through a bankruptcy but emerged still as the patent owner. That prior dispute resulted in an interesting 5th Circuit licensing decision. DuVal Wiedmann, LLC v. InfoRocket.com, Inc., 620 F.3d 496, 498 (5th Cir. 2010) (licensee did not accrue obligations to pay after date of filing reexam request). The IPR at issue here is a continuation of that longstanding battle.
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