Oracle Corp. v. Click-To-Call Tech. LP.

Paper26, October 30, 2013

IPR2013-00312 (Patent 5,818,836)

[§ 315(b) does not bar an IPR if a suit for infringement of the patent at issue had been dismissed without prejudice]

FACTS

This decision is designated as precedential only as to the discussion of § 315(b) time bar (Section III.A. of the decision). Other issues are omitted from this summary.

Patent Owner, Click-to-Call Tech. LP, sued Petitioners, including Ingenio, LLC, for patent infringement in May 2012. Petitioners filed this Petition for an IPR of the allegedly infringed patent within a year of being served with Patent Owner’s complaint. Patent Owner asserted that because one of the Petitioners, Ingenio, had been sued in 2001 for infringement of the same patent by Inforocket (a company that was the exclusive licensee of the patent at that time), Petitioners were now barred from pursuing an IPR of this patent by 35 U.S.C. § 315(b).

HOLDING

The Board held that 35 U.S.C. § 315(b) did not bar Petitioners from pursuing this IPR. 35 U.S.C. § 315(b) states that an IPR may not be instituted if the petition requesting the proceedings was filed more than a year after the petitioner, real party in interest, or privy of the petitioner is served with an infringement complaint.

In this case, Inforocket served Ingenio (known as Keen at the time) with a complaint alleging infringement of the patent at issue more than a year before Ingenio and others filed this IPR petition. However, after that suit was filed, Ingenio acquired Inforocket as a wholly owned subsidiary and the suit was dismissed without prejudice pursuant to a joint stipulation of the parties. The Board noted that the Federal Circuit consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought. Accordingly, the Board reasoned, the dismissal of that suit nullified the effect of service the complaint, and did not bar Ingenio and other Petitioners from pursuing this IPR.

Notably, because the Board determined that this petition was not bared by § 315(b), it did not reach the question of whether this statutory bar is applied on “petitioner-by-petitioner” basis.

TAKEAWAY

Dismissal of an infringement suit without prejudice nullifies the effect of service of the complaint, therefore, 35 U.S.C. § 315(b) does not bar an IPR of the patent at issue in the dismissed suit.

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