PTAB Designates Precedential Two Opinions Regarding IPR Time Bar And Pre-Institution Disclaimer
On September 9, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated two decisions as precedential. Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR Case No. IPR2018-000224, Paper 18 (PTAB Oct. 1, 2018) (designated: Sept. 9, 2019); General Electric Company v. United Technologies Corporation, IPR Case No. IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated: Sept. 9, 2019). In Infiltrator Water, the PTAB held that a dismissal of a complaint without prejudice for lack of personal jurisdiction does not reset the one-year time bar for a petitioner to file a petition for inter partes review. In General Electric, the PTAB denied institution where the patent owner disclaimed the challenged claims.
Infiltrator Water: Dismissals without Prejudice
The America Invents Act, which created inter partes review, provides that such review “may not be instituted if the petition requesting the proceeding is filed more than 1 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.” 35 U.S.C. § 315(b).
In Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in relevant part), the Federal Circuit held that 35 U.S.C. § 315(b) both (i) “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 (ii) “does not contain any exceptions or exemptions for complaints . . . that are subsequently dismissed, with or without prejudice.” Id. at 1330.
In Infiltrator Water, the petitioner argued that Click-to-Call’s “holding is limited to whether a voluntary dismissal under Federal Rule of Civil Procedure 41(a) subsequently nullifies service,” whereas “[t]he complaint at issue . . . was dismissed for lack of personal jurisdiction.” According to the petitioner, pursuant to Federal Rule of Civil Procedure 4(k), “service on a defendant is not effective when the district court that issued the summons lacks personal jurisdiction,” and that it “was, therefore, never effectively served” with the complaint that triggers Section 315(b)’s one-year window.
The PTAB disagreed, primarily relying on the Federal Circuit’s subsequent decision in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1331 (Fed. Cir. 2018) (involuntary dismissal without prejudice for lack of personal jurisdiction does not reset the Section 315(b) clock).
As to the petitioner’s Rule 4(k) argument, the PTAB noted that the petitioner conceded in its original petition for inter partes review that it “was served with a complaint asserting infringement” and, regardless, petitioner’s argument is relevant to whether service established personal jurisdiction, but “does not persuasively establish that service did not occur, or that service was not carried out ‘in a manner prescribed by law.’”
General Electric: Disclaimed Claims
In General Electric, the PTAB issued a short opinion denying institution because the patent owner disclaimed the challenged claims.
Thirty-seven C.F.R. § 42.107(e) provides that a patent owner “may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and, that, when this happens, “[n]o inter partes review will be instituted based on disclaimed claims.”
Here, the patent owner properly filed a statutory disclaimer for all challenged claims, and thus no inter partes review was instituted.
As we have previously remarked, these decisions continue the PTAB’s recent trend of designating as precedential prior PTAB decisions with the goal of providing guidance to parties as they shape their arguments and strategies in IPR proceedings.