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CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC., YELLOWPAGES.COM, LLC

| Andrea Cheek

Federal Circut Summary

Before O’Malley, Taranto, and Stark; Partial En Banc Decision before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: 35 U.S.C. § 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.

Click-To-Call Technologies (CTC) sued Ingenio and other appellees for infringing the ’836 patent. The Board instituted the appellees’ petition for inter partes review (IPR) of the patent, concluding that the petitioners were not time barred from filing the IPR petition even though a complaint for infringement had been served to Ingenio’s predecessor-in-interest more than one year before the filing of the IPR petition, because that complaint had been dismissed without prejudice.

The en banc court held that § 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 the IPR petition, but the district court action was dismissed without prejudice.  The court reasoned that “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” and “does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.”  The court also rejected the appellees’ argument that the ’836 patent should be treated as a new patent for purposes of § 315(b) because a reexamination of the ’836 patent subsequent to the original complaint substantively changed the claims of the ’836 patent.  The court reasoned that reexamination, unlike reissue, does not result in the surrender of the original patent and issuance of a new patent.  Because § 315(b) refers to “the patent” rather than “the claims,” the timeliness analysis is made with reference to “the patent.”  The court further held that an IPR petition is treated as if there is a single petitioner for purposes of the time bar, finding irrelevant the appellees’ argument that not all of the joint petitioners were connected with the original complaint.  Because the IPR petition was time barred, the court concluded the Board lacked jurisdiction to institute the IPR proceeding, vacated the Board’s final written decision, and remanded with instructions to dismiss the IPR proceeding.

Judges Dyk and Lourie dissented from the en banc decision, agreeing with the Board’s reasoning that the dismissal of a complaint without prejudice renders the complaint a nullity.

This case is: CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC., YELLOWPAGES.COM, LLC

Editor: Paul Stewart