By Doug Pearson – 

As reported in a prior post, DexMedia, Inc. previously filed an Application for Extension of Time to File a Petition for a Writ of Certiorari requesting an extension of 30 days in which to file a cert petition challenging the Federal Circuit’s divided 10-2 en banc decision, which had found that a voluntary dismissal without prejudice of a district court litigation does not reset the one-year time bar under 35 U.S.C. § 315(b) for filing an IPR petition on the asserted patent.  The Supreme Court previously granted DexMedia’s Application, setting a due date of December 14, 2018 for DexMedia’s cert petition.  However, DexMedia recently filed a Second Application for Extension of Time to File a Petition for a Writ of Certiorari, citing complexity of the legal issues and time-sensitive filings in other cases, and the Supreme Court granted the extension on November 20, 2018.  So DexMedia’s cert petition will now be due on January 11, 2019, instead of December 14, 2018. 

35 U.S.C. § 315(b) provides that IPR “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.”  The PTAB had previously ruled that a voluntary dismissal without prejudice left the parties as though the action had never been brought, such that the associated previously served complaint did not trigger the clock for the one-year time bar.  See Click-To-CallTech. v. Ingenio, Inc., 2015-1242 (Fed. Cir.Aug. 16, 2018) (en banc) for the underlying Federal Circuit decision.

Look to the beginning of 2019 to see how others will weigh in on DexMedia’s cert petition. In the meantime, petitioners and patent owners may want to consider how the anticipated cert petition might impact the stance of their matters, should the cert petition be granted.

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Doug Pearson advises clients across a host of intellectual property (IP) and technology issues, particularly in the development, management, and enforcement of worldwide patent portfolios. He holds a Ph.D. in applied physics and leverages broad technical experience in electronics, signal processing, materials, optics, computational methods, and information technology in working with expert witnesses on what are often case-dispositive issues.