An inter partes review may not be instituted if, before the date on which the petition is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the challenged patent. See 35 U.S.C. § 315(a). Likewise, an inter parties 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 is served with a complaint alleging infringement of the challenged patent. See 35 U.S.C. § 315(b). Three decisions recently designated as precedential by the PTAB provide further guidance on such bars to institution.

In Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019), the Petitioner had filed a civil action challenging the validity of a claim of the challenged patent before the date on which the Petition was filed. Id. at 2. The Petitioner argued that § 315(a)(1) did not bar institution of an inter partes review when it was the Petitioner itself that voluntarily dismissed its civil action without prejudice. Id. at 5. The Board held that § 315(a)(1) does not hold an exception for a civil action that was dismissed without prejudice. Id. at 6. Following the reasoning of Click-to-Call, the PTAB explained that Congress knew how to provide exceptions to statutory bars when it included exceptions for joinder requests, but did not do so with § 315(a)(1). Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321, 1331 (Fed. Cir. 2018). Id. The PTAB was also not persuaded by Petitioner’s argument that “civil action” in § 315(a)(1) requires substantive litigation. Id.

In Infiltrator Water Techs., LLC v. Presby Patent Trust, IPR2018-00224, Paper 25 (PTAB Oct. 1, 2018), a complaint asserting infringement of the challenged patent was dismissed without prejudice for lack of personal jurisdiction. Id. at 2. More than a year after that complaint was filed, Petitioner filed its inter partes review petition. Id. Following the reasoning of Bennett Regulator Guards, the PTAB determined that it lacked jurisdiction to institute the inter partes review proceeding because the filing of the complaint nonetheless triggered the § 315(a) time bar. Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Nos. 2017-1555, 2017-1626 (Fed. Cir. Sept. 28, 2018). Id. at 4-5. The PTAB further distinguished the Infiltrator case from Click-to-Call in that the present case involved an involuntary, rather than voluntary dismissal. Id. at 5.

The PTAB came to a similar conclusion in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019), previously discussed here. In GoPro, the Precedential Opinion Panel (POP) held that the § 315(b) time bar applies even if the serving party lacks standing to sue or where the pleading is deficient. Id. at 6. Again, following the reasoning of Click-to-Call, the POP held that the phrase “served with a complaint alleging infringement” is plain and unambiguous. Id. at 8. Further, the POP held that § 315(b) does not include an exception for situations such as those described above. Accordingly, the POP reversed the initial PTAB panel’s determination that the time-bar of § 315(b) did not apply because the patent owner lacked standing to sue when the complaint was served.

The above cases demonstrate the PTAB’s unwillingness to allow for exceptions to § 315 that are not provided by statute.