{"id":2175,"date":"2018-08-16T20:56:34","date_gmt":"2018-08-17T00:56:34","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2175"},"modified":"2018-09-03T07:02:22","modified_gmt":"2018-09-03T11:02:22","slug":"what-has-been-served-cannot-be-unserved-%c2%a7315b-time-bar-applies-even-if-the-suit-is-subsequently-withdrawn","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2175","title":{"rendered":"What has been Served Cannot Be Unserved: \u00a7315(b) Time Bar Applies Even if the Suit is Subsequently Withdrawn"},"content":{"rendered":"

In Click-to-Call Technologies, LP v. Ingenio, Inc.<\/a>, [2015-1242] (August 16, 2018), the Federal Circuit concluded that the Board committed legal error in\u00a0rendering its \u00a7 315(b) determination, and vacated the Board\u2019s Final Written Decision and remanded with instructions to dismiss\u00a0IPR2013-00312.<\/p>\n

With respect to the \u00a7 315(b) issue, the Board\u00a0acknowledged that Ingenio was served with a complaint\u00a0alleging infringement of the \u2019836 patent on June 8, 2001.\u00a0 The Board nonetheless concluded that Ingenio had not been served more than a year before the\u00a0May 28, 2013, filing of the Petition because the Federal Circuit consistently has interpreted\u00a0the effect of such dismissals as leaving the parties\u00a0as though the action had never been brought.\u00a0 The issue before the Federal Circuit\u00a0was whether the Board
\nerred in interpreting the phrase \u201cserved with a complaint\u00a0alleging infringement of [a] patent\u201d recited in \u00a7 315(b)\u00a0such that the voluntary dismissal without prejudice of the
\ncivil action in which the complaint was served \u201cdoes not\u00a0trigger\u201d the bar.<\/p>\n

The Federal Circuit’s analysis began with the language of\u00a0\u00a7315(b), noting that the plain and unambiguous language stated an IPR \u201cmay not be instituted if the petition
\nrequesting the proceeding is filed more than 1 year after\u00a0the date on which the petitioner, real party in interest, or\u00a0privy of the petitioner is served with a complaint alleging\u00a0infringement of the patent.\u00a0 The Federal Circuit observed that the\u00a0statute does not contain any exceptions or\u00a0exemptions for complaints served in civil actions that are
\nsubsequently dismissed, with or without prejudice. Further the statute\u00a0does it contain any indication that the application\u00a0of\u00a0\u00a7 315(b) is subject to any subsequent act or ruling. Instead,\u00a0the provision unambiguously precludes the Director\u00a0from instituting an IPR if the petition seeking\u00a0institution is filed more than one year after the petitioner,\u00a0real party in interest, or privy of the petitioner \u201cis served\u00a0with a complaint\u201d alleging patent infringement.\u00a0 The Federal Circuit concluded: “Simply\u00a0put, \u00a7 315(b)\u2019s time bar is implicated once a party receives\u00a0notice through official delivery of a complaint in a civil
\naction, irrespective of subsequent events.”<\/p>\n

The Federal Circuit said that courts must avoid adding conditions to\u00a0the applicability of a statute that do not appear in the\u00a0provision\u2019s text. The Federal Circuit noted that Congress specifically addressed the\u00a0effect of a dismissal of an IPR petitioner\u2019s district court\u00a0action in \u00a7 315(a)(2), but did not include any similar\u00a0language in \u00a7 315(b). Congress also demonstrated that it\u00a0knew how to provide an exception to the time bar by
\nincluding a second sentence in the provision: \u201cThe time\u00a0limitation set forth in the preceding sentence shall not\u00a0apply to a request for joinder under subsection (c).\u201d 35
\nU.S.C. \u00a7 315(b). Similarly, Congress could have chosen to\u00a0include a variation of the phrase \u201cunless the action in\u00a0which the complaint was served was later dismissed
\nwithout prejudice,\u201d but it did not do so. The Federal Circuit rejected the\u00a0Board\u2019s effort to graft this additional language into\u00a0\u00a7 315(b).<\/p>\n

The Federal Circuit further said that the legislative history of \u00a7 315(b) further supports the\u00a0understanding that its time bar concerns only the date on\u00a0which the complaint was formally served.<\/p>\n

Considering Chevron<\/em> deference, the Federal Circuit found that\u00a0the text of the statute answers the question —\u00a0\u00a7 315(b) clearly and unmistakably considers only the date
\non which the petitioner, its privy, or a real party in interest\u00a0was properly served with a complaint — there is no need to \u00a0proceed to Chevron\u2019s second step.<\/p>\n

The Federal Circuit rejected the Board’s interpretation of the text of \u00a7 315(b) for failing to recognize the statute was\u00a0agnostic as to the \u201ceffect\u201d of the service\u2014i.e., what events
\ntranspired after the defendant was served.<\/p>\n

The Federal Circuit also rejected the Petitioner’s arguments that,\u00a0because the claims of
\nthe \u2019836 patent were materially changed during a subsequent\u00a0ex parte reexamination, neither they nor any other\u00a0entity was served with a complaint alleging infringement
\nof this<\/em> patent more than one year before the IPR petition\u00a0was filed.\u00a0 The Federal Circuit pointing out\u00a0that unlike reissue, reexamination\u00a0does not result in the surrender of the original\u00a0patent and the issuance of a new patent.<\/p>\n

The Federal Circuit also rejected the Petitioner’s argument that some of the petitioners were not barred, noting four entities declared themselves as\u00a0\u201cthe Petitioner\u201d in their sole IPR petition, and certified\u00a0that each was a \u201creal party in\u00a0interest.\u201d The Federal Circuit said that under these circumstances, under current\u00a0law, Petitioners are properly treated as an undifferentiated\u00a0unit that filed an untimely petition.\u201d<\/p>\n","protected":false},"excerpt":{"rendered":"

In Click-to-Call Technologies, LP v. Ingenio, Inc., [2015-1242] (August 16, 2018), the Federal Circuit concluded that the Board committed legal error in\u00a0rendering its \u00a7 315(b) determination, and vacated the Board\u2019s Final Written Decision and remanded with instructions to dismiss\u00a0IPR2013-00312. With … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2175","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2175","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2175"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2175\/revisions"}],"predecessor-version":[{"id":2176,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2175\/revisions\/2176"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2175"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2175"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2175"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}