The Patent and Trademark Office has designated as precedential its decision to stop a patent validity review last year because a water technology company missed the deadline for filing a challenge after being sued.
The Patent Trial and Appeal Board had held that a federal lawsuit dismissed without prejudice for lack of personal jurisdiction still triggers the one-year time bar for Infiltrator Water Technologies LLC to challenge Presby Patent Trust’s patent for a fluid conduit. The board vacated its decision to institute trial in October 2018 and terminated the administrative proceeding.
The decision, one of two the agency designated as precedential Sept. 9, marks the latest precedent to address questions of what triggers the timeline to petition the board. Under 35 U.S.C. §315(b), the board can’t institute an inter partes review if the petition is filed more than a year after a petitioner is served with an infringement complaint.
“The question was, well, if it’s an involuntary dismissal, does it still count? Now we know the answer is yes,” Doug Robinson, principal at Harness, Dickey & Pierce, P.L.C., said. “This is one of those cases where it gives people certainty, and that’s why they made it precedential.”
Infiltrator challenged claims in Presby’s U.S. Patent No. 8,815,094 more than one year after it was served with a complaint for infringement. The PTAB instituted trial in May 2018, finding that the time bar wasn’t triggered by an action dismissed without prejudice.
But an August 2018 decision by the U.S. Court of Appeals for the Federal Circuit would change that. The court held in Click-to-Call Techs., LP v. Ingenio, Inc. that §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.”
The Federal Circuit said §315(b) doesn’t contain exceptions or exemptions for complaints “that are subsequently dismissed, with or without prejudice.”
Presby moved to dismiss the validity challenge in light of Click -to-Call. Infiltrator pushed back, arguing that “service on a defendant is not effective when the district court that issued the summons lacks personal jurisdiction.”
The PTAB said it could not allow the challenge to proceed following the Click-to-Call ruling. It cited another Federal Circuit decision from 2018, in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., in which the court held that federal law “includes no exception for an involuntarily dismissed complaint.”
Raghav Bajaj, a patent attorney at Haynes and Boone LLP, said he believes patent office officials are focusing on time bar-based decisions because “they want to reduce unpredictably and reduce somewhat the gamesmanship that can occur when we’re talking about that § 315(b) one year date. They want to make sure this one-year date is a predictable thing to measure.”
The PTAB also designated as precedential its July 6, 2017, decision in General Electric Co. v. United Techs. Corp., denying institution of an inter partes review because the patent owner relinquished legal rights to the patent’s claims.
“If there’s no claims to find unpatentable because they don’t exist anymore, then the board is not going to proceed with an IPR, which seems rational,” Robinson said.