By Amanda Leckman and Carl Kukkonen
On November 21, 2017, Petitioner Infiltrator Water Technologies, LLC, filed a Petition for inter partes review (IPR) of claims 8–12 of U.S. Patent No. 8,815,094 B2. In its Preliminary Response, filed on March 7, 2018, Patent Owner Presby Patent Trust asserted that the Petition should be denied as untimely under 35 U.S.C. § 315(b) because it was filed more than one year after Petitioner was served with a complaint asserting infringement of the ’094 patent. The complaint had been involuntarily dismissed without prejudice for lack of personal jurisdiction.
The PTAB panel in Infiltrator Water Technologies, LLC v. Presby Patent Trust, Case IPR2018-00224 (PTAB October 1, 2018) (Paper 18), applied the Federal Circuit’s holding in Click-to-Call, 899 F.3d at 1321 that 35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement,” and that § 315(b) “does not contain any exceptions or exemptions for complaints . . . that are subsequently dismissed, with or without prejudice.” Click-to-Call, 899 F.3d at 1330. Based on the Federal Circuit’s decision in Click to Call, Patent Owner filed a motion to dismiss the IPR. In response to the motion, Petitioner argued that “service on a defendant is not effective when the district court that issued the summons lacks personal jurisdiction,” and that “Petitioner was, therefore, never effectively served” with the complaint that provides the basis for Patent Owner’s § 315(b) argument.”
Though the PTAB agreed with Petitioner that Click-to-Call specifically addressed the question of whether a voluntary dismissal without prejudice triggered the § 315(b) time bar, it affirmed that the distinction was not meaningful based on the Federal Circuit’s decision in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Nos. 2017-1555, 2017-1626 (Fed. Cir. Sept. 28, 2018). The Federal Circuit determined that there was “no reason to distinguish Click-to-Call on the basis that Click-to-Call involved a voluntary, rather than an involuntary, dismissal. Thus, the PTAB concluded that service was not nullified by a subsequent determination that the district court lacked personal jurisdiction over the defendant in the complaint and dismissed the Petition based on the § 315(b) time bar.