PTAB’s Developing Statutory Construction of the IPR One-Year Litigation Bar

Early last year the Board published two decisions construing 35 U.S.C § 315(b), the one-year plaintiff-side bar for inter partes review (IPR). In Macauto v. BOS GmbH & KG, IPR2012-00004, Paper 18 (PTAB Jan 24, 2013), the PTAB held that § 315(b) did not bar the IPR petition because parties in the lawsuit jointly stipulated to voluntarily dismiss without prejudice. The Board reasoned that although the patent owner filed the complaint more than one year before the filing of the IPR petition, dismissal of the suit without prejudice nullified the effect of the service. And in Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 21 (PTAB Jan. 30, 2013), the Board accepted Motorola’s petition because, while the patent owner had filed a complaint against Motorola more than one year before the filing of the IPR petition, the patent owner had failed to provide any summons to Motorola.

The PTAB, treating the decisions in Macauto and Motorola as precedential, has referenced the two decisions in multiple subsequent § 315(b) rulings. In BAE Sys. v. Cheetah Omni, LLC, IPR2013-00175, Paper 15 (PTAB July 3, 2013), for example, the Board instituted a trial  because the patent owner had “voluntarily dismissed . . . before any of the named defendants were required to answer.” In Scotts Comp. v. Encap, LLC, IPR2013-00110, Paper 12 (PTAB July 3, 2013), the Board held that “mere notification of a complaint does not trigger the one-year statutory bar,” but that if the “Petitioner waives service of a summons,” the filing of the waiver triggers the start of the one-year period.

In Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2013-00168, Paper 9 (PTAB Aug. 26, 2013), the Board did not institute because a second complaint served against the petitioner did not nullify the effect of the first served complaint ten years earlier, where the earlier court dismissed the infringement suit with prejudice, distinguishing it from Macauto. And relatedly, in InVue Sec. Prods., Inc. v. Merchandising Techs., Inc., IPR2013-00122, Paper 17  (PTAB June 27, 2013) the Board applied Macauto by analogy to § 315(a), finding that a declaratory judgment action dismissed for lack of subject matter jurisdiction “without prejudice” thus did not invoke § 315(a)’s bar.

Thus, § 315(b) requires:

1. The patent owner served or the petitioner waived service of the complaint; but
2. Even with proper service, voluntary dismissal without prejudice nullifies it.

We await the PTAB’s determination in a case where the defendant had the opportunity to answer the complaint despite a subsequent dismissal without prejudice.