Illuminating the Section 315(b) Time-Bar on IPR Petitions

In Luminara Worldwide, LLC v. Iancu, Nos. 17-1629, 17-1631, 17-1633 (Fed. Cir. Aug. 16, 2018), the Federal Circuit vacated the Board’s determination that IPR petitioner Liown Electronics Co., Ltd. was not time-barred under 35 U.S.C. § 315(b) and affirmed the Board’s determination that certain claims of Luminara’s patents covering flameless candles were unpatentable for obviousness.

As the Court held in Click-to-Call, a party is time-barred from filing an IPR petition more than one year after being served with a complaint for patent infringement, even if the complaint was dismissed voluntarily and without prejudice. Liown was served with a complaint alleging patent infringement of one of the challenged patents more than a year before filing its IPR petition, although the complaint was later voluntarily dismissed without prejudice. Accordingly, the Court held that the time-bar precluded Liown’s IPR petition and vacated the Board’s determination on this patent.

The Court also found that substantial evidence supported the Board’s obviousness determinations on the remaining patents, and rejected Luminara’s argument that it was not afforded proper notice of the Board’s theory of obviousness.