Summary: 35 U.S.C. § 315(b), which prohibits the Board from instituting an IPR based on a petition filed more than one year after the date on which the petitioner is served with a complaint, is fully applicable to complaints that are involuntarily dismissed by the court.
In 2012, Bennett served Atlanta Gas with a complaint alleging infringement of a patent. Atlanta Gas successfully moved to dismiss the complaint. Nearly three years later, in 2015, Atlanta Gas filed an IPR to challenge the validity of the Bennett patent. Bennett objected, arguing that § 315(b) prohibits institution if a petition is filed more than one year after the petitioner is served with a complaint. The Board concluded that the district court’s dismissal of the complaint without prejudice nullified service, and proceeded to institute review of all claims. The Board later held that all claims of the patent were unpatentable. The Board also granted sanctions against Atlanta Gas for failing to disclose the change of corporate parentage.
The Federal Circuit vacated the Board’s final written decision and remanded with instructions to dismiss the IPR. The Federal Circuit first noted that serving a complaint alleging infringement unambiguously implicates the § 315(b) time bar. The time bar is unchanged by the subsequent success or failure of the complaint. The Federal Circuit further explained that the statue does not create an exception for involuntarily dismissed complaints, and therefore the Board exceeded its authority when it instituted an IPR more than one year after service of the complaint. With regard to the appeal of sanctions, the Federal Circuit determined the sanctions were non-final, and declined to exercise pendent jurisdiction.
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