Voluntary Dismissal Cannot Un-ring the Bell of § 315(b)’s Time Bar

In Click-to-Call Technologies, LP v. Ingenio, Inc. the en banc Federal Circuit addressed for the first time whether a petition was time barred under 35 U.S.C. § 315(b) where a previously-filed complaint was voluntarily dismissed.  The Court, in overturning the Board’s decision below, decided that “§ 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”  The Court relied on the statutory language of § 315(b) which “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.”  The Court also noted that “[t]he statute does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice,” nor “any indication that the application of § 315(b) is subject to any subsequent act or ruling.”

Judges Dyk and Lourie, dissenting from the decision, agreed with the Board’s reasoning that the effect of a voluntary dismissal of a complaint without prejudice “is to render the proceedings a nullity and leave the parties as if the action had never been brought.”