PTAB / Federal Circuit / PTAB Procedures and Rules / Statutory Bars

A dismissal of a complaint does not toll the one-year time bar triggered by service

By Deakin T. Lauer Published October 4, 2018

In what situations will the dismissal of a complaint not start the clock on the one-year time bar for IPRs? As long as the complaint was served, the Federal Circuit’s answer–based on two recent cases–may be “none.”

In August, the Federal Circuit decided Click-to-Call Techs., LP v. Ingenio, Inc., which held that a voluntary dismissal without prejudice of a civil action in which the complaint was served triggers the Section 315(b) one-year time bar. In Click-to-Call, the Federal Circuit relied on the “plain and unambiguous language” of Section 315(b) which requires the clock to start when the complaint is served:

[An IPR] 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.

In Bennett Regulator Guards v. Atlanta Gas Light, decided on September 28, 2018, the Federal Circuit expanded the Click-to-Call reasoning to include civil actions that were involuntarily dismissed. The Federal Circuit again relied on the plain language of the statute:

This case differs from Click-to-Call only in that Bennett’s complaint was involuntarily dismissed without prejudice. We identify no reason to distinguish Click-to-Call on that basis. The statutory language clearly expresses that service of a complaint starts § 315(b)’s clock. … Just as the statute includes no exception for a voluntarily dismissed complaint, it includes no exception for an involuntarily dismissed complaint.

In both Click-to-Call and Bennett, the result was an order vacating the final written decision and remanding the matter to the Board to dismiss the IPR proceeding.