The Patent Trial and Appeal Board (PTAB) denied petition for inter partes review (IPR) as time barred under 35 USC § 315(b) when a first-filed district court complaint was dismissed without prejudice because there was continuity of infringement litigation due to a second complaint filed before the dismissal of the first complaint. Fujifilm Corp. v. Sony Corp., Case No. IPR2018-00060 (PTAB, Apr. 20, 2018) (Paper 8) (Boucher, APJ).

Sony owns a patent directed to a tape cassette that has a magnetic tape and a solid-state memory. Sony filed a patent infringement complaint against Fujifilm in the Southern District of New York. Fujifilm accepted service of the complaint on August 22, 2016. On May 8, 2017, Sony withdrew the patent from the New York action and on the same day filed a new complaint alleging infringement of the patent in the Southern District of Florida. The claims for infringement of the patent were dismissed in the New York action without prejudice on May 9, 2017.

Fujifilm filed a petition for IPR on October 11, 2017. Sony filed a preliminary response arguing that the petition was time barred because it was filed more than one year after service of the complaint in New York. In response, Fujifilm argued that the relevant date for determining time bar under § 315(b) was the date of service of the complaint in the Florida action. The PTAB disagreed, finding that because the parties remained engaged in a dispute first raised in the New York action and continued in the Florida action without interruption, the service of the complaint in New York was the relevant date for determining whether the petition was time barred under § 315(b). Because the New York complaint was served more than a year before the IPR petition was filed, the PTAB denied institution.

Practice Note: Patent owners should file a new complaint well before withdrawing a first one to ensure continuity of litigation.