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