315(b) applies when a complaint has been served more than one-year earlier—even if some claims were dismissed without prejudice
In the precedential decision of LG Electronics v. Mondis Tech. (IPR2015-00937), the Board held that even though there was a second complaint served less than a year ago, an earlier-served complaint triggered the one-year bar of Section 315(b). The first complaint–filed in 2008–was dismissed without prejudice to certain products and dismissed with prejudice as to other products. Because some claims were resolved with the dismissal of the first complaint, the Board found that the rationale of Oracle v. Click-to-Call (IPR2013-00312) does not apply. In Oracle, the one-year bar was not triggered by an earlier complaint because all claims were dismissed without prejudice, leaving the parties in the same legal position as though the complaint had never been served. That was not the case here.
Strategy Tip: It will be the rare case where a second complaint restarts the one-year time period of Section 315(b). Defendants should understand that a partial settlement/dismissal of claims will likely remove IPR as a defensive tool in future litigation as to the unresolved issues.
Posted on 09/17/2015 by Deakin T. Lauer