Summary: The section 315(b) time-bar for IPRs applies even when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice.
In 2012, Candella, LLC, a predecessor in interest of Luminara, filed a complaint against Liown for infringement of the ’319 patent. The case was voluntarily dismissed without prejudice. Thereafter, in 2014, Luminara commenced a patent infringement action against Liown, asserting the ‘319 once again, as well as two other patents. Liown requested, and the Board instituted, IPR on all three patents, and ultimately held all relevant claims to be unpatentable as obvious. In instituting review of the ’319 patent, the Board first addressed whether the IPR was time-barred under 35 U.S.C. § 315(b), since the petition was filed more than a year after Liown was served with a complaint alleging infringement. The Board held that the time-bar did not apply because there was no “language in 35 U.S.C. § 315(b) or any such indication of legislative intent that the § 315(b) bar was designed to apply to circumstances in which prior complaints were voluntarily dismissed without prejudice.” The Board also relied on the precedential Board decision, Oracle Corp. v. Click-to-Call Technologies, No. IPR2013-00312, 2013 WL 11311788, *6–7 (P.T.A.B. Oct. 30, 2013), which held that the one year time-bar of section 315(b) did not apply if the district court complaint was voluntarily dismissed without prejudice. Luminara appealed the Board’s decision and the PTAB intervened after Liown declined to participate.
In Click-To-Call Technologies, LP v. Ingenio, Inc., No. 15-1242 (Fed. Cir. Aug. 16, 2018), the en banc court held that section 315(b)’s time-bar applies to bar institution when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice. Accordingly, the Federal Circuit vacated the Board’s final written decision and remanded for dismissal of the ’319 patent IPR. The Federal Circuit affirmed the Board’s obviousness findings with respect to Luminara’s other two patents.
