Histologics, LLC v. CDx Diagnostics, Inc.
Addressing the issue of when a defendant’s one-year window to petition for inter partes review (IPR) expires after being served with a patent infringement complaint, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) found that a defendant’s petition for IPR was barred as untimely under 35 U.S.C. §315(b) because, even though the case had been stayed and ultimately dismissed, the defendant had been served with a complaint alleging infringement of the petitioned patent more than one year before petitioner filed its petition. Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779 (PTAB, Sept. 12, 2014) (Kamholtz, APJ).
Although the service was in a case that had been stayed for nine months and was ultimately dismissed, the allegations of the original complaint were never nullified—thus preventing the defendant from returning to the same position it held before the complaint’s filing. Therefore, the one-year clock continued to tick.
The patent owner, Shared Medical Resources (SMR), filed a complaint for patent infringement against defendant, Histologics (the first action). In response to Histologic’s motion for dismissal for lack of standing, the court stayed the case because a patent co-owner, CDx Diagnostics, had not been joined and could not be joined until it completed bankruptcy proceedings. Later, SMR and CDx filed a new complaint against Histologics for infringement of the same patent in another district court (the second action). The two actions were later consolidated. After consolidation, the first action was dismissed, leaving the second action pending and inclusive of the original allegations from the first case.
Subsequently, the petitioner petitioned for IPR, and the patent owners argued that the one-year limitation under 35 U.S.C. § 315(b) had already expired. The PTAB agreed, explaining that the first action had only been stayed, not dismissed, and that, although the first action was eventually dismissed, it was combined with the second action, keeping the original allegations above. Therefore, the petitioner remained continuously engaged in litigation based on the original filing since the complaint had been filed. Because the dismissal had not placed the defendant back to the legal position from before the original filing had been served, the original complaint had never been nullified and the one-year time limit had run out.