In a recent Inter Partes Review (IPR) proceeding, patent owner Click-To-Call Technologies LP failed in its attempt to prevent the institution of an IPR of U.S. Patent No. 5,818,836 sought by petitioner YP Interactive LLC. 35 U.S.C. § 315(b) bars a petitioner from pursuing an IPR of a certain patent if that petitioner was served with a complaint alleging infringement of that certain patent more than one year before the petition was filed.  Here, the PTAB instituted the IPR even though YP Interactive’s predecessor was previously sued in 2001 for allegedly infringing the ‘836 Patent. (Pp. 12-13).

To appreciate why the PTAB instituted the IPR, an understanding of the facts leading up to the IPR petition is important. In 2001, the inventor of the ‘836 Patent granted an exclusive license of the ‘836 Patent to Inforocket.com, who subsequently served a complaint alleging infringement of the ‘836 Patent on Keen, Inc — a predecessor of YP Interactive LLC. In 2003, Keen acquired Inforocket.com and the parties voluntarily dismissed the suit “without prejudice.” (Paper 26 at 15). Keen then changed its name to Ingenio, Inc., which in turn changed its name to YP Interactive LLC. Therefore, there was no dispute that YP Interactive, through its predecessor Keen, was actually served with a complaint alleging infringement of the ‘836 patent more than one year before the IPR petition was filed.

Based on these facts, the patent owner argued that YP Interactive was statutorily barred from pursuing IPR under 35 U.S.C. § 315(b), which provides:

An Inter Partes review may not be instituted if the petition requesting the proceeding is filed more than one 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.

According to the patent owner, both the plain meaning of 35 U.S.C. § 315(b) and its legislative history require the PTAB to deny the IPR petition. Namely, YP Interactive was served with a complaint alleging infringement of the ‘836 patent more than one year before the IPR petition was filed, and the language of § 315(b) is unambiguous and no legislative history contradicts its plain meaning.  (PO Resp. 53-56).

The PTAB differentiated between de facto and de jure service of a complaint. Even though Keen, YP Interactive ‘s predecessor, was de facto served with a complaint alleging infringement in 2001, by virtue of that suit being dismissed without prejudice Keen is treated as never having been served in the eyes of the law. The PTAB reasoned that Federal Circuit precedent interprets the dismissal of the 2001 suit without prejudice as leaving the parties in the same legal position as if the underlying complaint had never been served. In other words, both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a dismissal without prejudice as something that, de jure, never existed. As a consequence, the PTAB found that YP Interactive is not barred from pursuing an IPR of the ‘836 patent under § 315(b). (Pp. 12-13).

This IPR proceeding provides IPR practitioners with guidance about 35 U.S.C. § 315(b) and, in particular, its use of the term “served.” In particular, IPR practitioners should counsel patent owners that when a patent infringement suit is dismissed without prejudice, the protection of the 35 U.S.C. § 315(b) bar may be removed as well, which can open the door for a subsequent attack on the patent owner’s patent via IPR. IPR practitioners should similarly counsel alleged infringers that the dismissal of an infringement suit without prejudice may open the door to attack the patent owner’s patent via IPR.