One-year time bar does not apply to suits filed by parties that do not own the patent

By Deakin T. Lauer Published February 11, 2019

Last year, the Federal Circuit decided two cases that held that a dismissed complaint will not toll the Section 315(b) one-year bar. In particular, neither a voluntary dismissal (Click-to-Call Techs., LP v. Ingenio, Inc.) nor an involuntary dismissal (Bennett Regulator Guards v. Atlanta Gas Light) will toll the application of the one-year time bar because the “statute endorses no exceptions for dismissed complaints.” The PTAB, however, has found that at least one exception may apply:  when the complaint was filed by someone other than the owner of the patent.

In Sling TV v. Realtime Adaptive Streaming, LLC (IPR2018-01331, Paper 9), a complaint was filed, served on Sling TV, and later voluntarily dismissed without prejudice. More than a year after that dismissal, Sling TV filed an IPR. The patent owner, Realtime Adaptive Streaming argued that the petition was time barred because of the earlier-filed complaint. However, that complaint was filed by an entity –Realtime Data–that did not own the patent at the time the complaint was filed and served. As a result, the PTAB found that the complaint did not trigger the time bar because, according to the title of Section 315(b), only a patent owner’s action triggers the time bar.

Finding no time bar, the PTAB instituted trial on the petition filed by Sling TV.