Can Dismissal Of A Complaint Without Prejudice Unring the 315(b) Bell?
Because there hasn’t been enough change to the PTAB over the last week with SAS Institute, get ready for more…but this one will aid Patent Owners.
Yesterday the Federal Circuit heard argument (again) in relation to the 2013 IPR filing in Oracle Corp. v. Click-to-Call Techs. LP. As a reminder the PTAB’s decision in this dispute was designated precedential. (Section (III.A)). The precedential portion explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b). This was a critical determination to this petition as it appeared that one of the identified petition filers had been served with a complaint outside of the one-year IPR window. The Federal Circuit was able to reach this timing issue for the first time on appeal after WiFi One.
During yesterday’s oral argument, it appeared that this PTAB precedent will fall.
The PTAB’s precedent here rests on the fundamental background principal that a voluntary dismissal of a complaint leaves the action as if it has never been brought. That is, such a dismissal renders the proceedings a nullity and leave the parties as if the action had never been brought. For its part, CTC argued that the statute is clearly written, and an exception to the time bar is already provided for in the case of joider.
At oral argument the Court struggled with the seeming attempt to rewrite 315(b) to provide for unwritten exceptions.
(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
The Court noted that while a dismissal without prejudice is treated as a legal nullity for some collateral litigation issues, it is not treated as such for all (referencing the recent case in which sanctions were awarded after dismissal). The Court asked the parties for an example of a case in which the triggering of a statutory time limit (as in 315(b)) was nullified as opposed to the tolling of a statute of limitations. In other words the Court sought a case in which “notice” (such as codified in 315(b)) was nullified. Neither the Solicitor or Appellee were able to cite a case on point. Along these same lines the Court pointed out certain damage scenarios where seemingly similar concepts of notice were not nullified by dismissals without prejudice.
It seems likely that the Federal Circuit will reverse this PTAB precedent.
As to the question of whether reversal or remand was the appropriate action, the Court questioned the parties as to whether or not questions of RPI/privity must be analyzed relative to the collection of filers (i.e., whether the deficient party controlled), or whether the petition was simply barred if one filer is outside the 315(b) window. In this regard the Court seemed to acknowledge that 315(b) and 37 C.F.R. § 42.101(b) are focused on the timeliness of the petition itself and not the parties.
Seems to me that the Final Written Decision will be vacated (to avoid estoppel) and the case reversed.
This could impact a fair number of similarly situated cases that were instituted in reliance on the PTAB’s Click-to-Call precedent.