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PTAB Further Clarifies DJ Action Time Bar and Statutory Disclaimers

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Sterne, Kessler, Goldstein & Fox P.L.L.C

The PTAB designated at least three more decisions as precedential. Of note, two of the cases rely on the Federal Circuit’s en banc decision in Click to Call, which is scheduled for argument at the Supreme Court on December 9, 2019, to decide: Whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and Appeal Board’s decision to institute an inter partes review upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

  • Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11) – This Board, following Click-to-Call that addressed dismissal without prejudice of a civil action with respect to 35 U.S.C. §315(b), addresses whether a petitioner’s (accused infringers) dismissal without prejudice of a previously-filed civil action (declaratory judgment action) triggers the time bar on institution of an inter partes review under 35 U.S.C. § 315(a)(1).  
Section 315(a)(1) bars institution of an inter partes review where the petitioner (accused infringer) filed a civil action (declaratory judgment action) challenging the validity of a claim of the patent before the filing date of the petition. Click-to-Call found that § 315(a)(1) applies even when a civil action was later dismissed without prejudice.    

Petitioner asserted four substantive arguments that the Board ultimately found unpersuasive.

First, petitioner asserted that the use of the term “civil action” under § 315(a)(1) requires substantive litigation, i.e., “the pendency of a litigation where the petitioner actually had a bite at the apple.” However, the Board found that when taken in totality, the phrase “filed a civil action” of § 315(a)(1) only requires commencement of noncriminal litigation, not substantive litigation. So subsequent acts after commencement cannot remove the bar.

♦ Second, petitioner asserted that the legislative history shows that the “clear purpose” of § 315(a)(1) is coordination of IPR and litigation so that a challenger does not get two opportunities to invalidate a patent. But the Board noted that the Petitioner’s cited legislative history indicates a petitioner must only seek a declaratory judgment, not substantively litigate the civil action.

 Third, petitioner asserted that § 315(a)(1) requires the “filing” of a civil action and that voluntary dismissal of a complaint without prejudice nullifies the act of filing. Here, the Board relied on Click-to-Call’s finding that a voluntary dismissal without prejudice continues to have legal effect since the statue does not take into account subsequent activity once the civil action begins. On this basis, the Board stated that since the petitioner’s relied upon background legal principle is “anything but equivocal,” it does not “transform[] the ordinary meaning of the phrase [‘filed a civil action’] into something else.”

♦ Lastly, petitioner asserted that the purpose of dismissing without prejudice is not to eliminate the ability to litigate but to preserve this right. Petitioner asserted that although Click-To-Call held that the anti-preclusion principle does not apply to § 315(b), it is certainly applicable to § 315(a)(1) – a preclusion statute. The Board stated that the petitioner did not explain why the characterization of § 315(a )(1) as “a preclusion statute” warrants departure from the ordinary meaning of its statutory language. The Board then points out that their decision does not hold that § 315(a)(1) bars petitioner from filing another civil action. 
  • Infiltrator Water Techs., LLC, v. Presby Patent Trust, Case IPR2018-00224 (PTAB Oct. 1, 2018) (Paper 25) – This decision follows Click-to-Call and concerns whether a compliant for which service was waived and that was subsequently involuntarily dismissed for lack of personal jurisdiction triggers the § 315(b) time bar.

Click-to-Call held that the Director may not, under any circumstance, institute an inter partes review where the petition is filed more than one year after the petitioner is served with a complaint alleging patent infringement. Click-to-Call also held § 315(b) does not contain exceptions or exceptions for complaints subsequently dismissed without prejudice.

Here, petitioner acknowledged being served with the complaint more than one year prior to the filing of the petition. But the complaint was dismissed without prejudice for lack of personal jurisdiction. As such, petitioner argued that Click-to-Call is limited to whether a voluntary dismissal under Federal Rule Civil Procedure (Rule) 41(a) nullifies service. On this basis, petitioner argued that the complaint at issue was dismissed for lack of personal jurisdiction and that they were never effectively served with the complaint under Rule 4(k).

The Board noted that Bennett Regulator Guards issued after Click-to-Call addressed the very same issue as the present case. The Board then noted that Bennett Regulator Guards refused to distinguish Click-to-Call on the basis that it involved a voluntary, rather than an involuntary, dismissal.

Nonetheless, the Board addressed arguments that the petitioner could have raised concerning service that were not discussed in Bennett Regulator Guards. Specifically, the Board noted that there is no meaningful dispute that petitioner received “notice of the pendency of a legal action, in a manner and at a time that affords the defendant a fair opportunity to answer the complaint and present defenses and objections.”

The Board then found that Petitioner improperly focused on Rule 4(k), since it concerns whether serving a summons or filing a waiver of service establishes personal jurisdiction. The Board then noted that Rule 4(d) addresses waiver of service explicitly.

  •  General Electric Co. v. United Techs. Corp., Case IPR2017-00491 (PTAB July 6, 2017) (Paper 9) – This decision concerns the denial of an inter partes review pursuant to 37 C.F.R. § 42.107(e) when all contested claims were statutorily disclaimed.

    Under § 42.107(e), “[t]he 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. No inter partes review will be instituted based on disclaimed claims.” Accordingly, since patent owner statutorily disclaimed all claims challenged by the petitioner, the Board refused to institute an inter partes review on any of the claims.

The designation of these decisions as precedential underscores the Board’s emphasis that the § 315 time bars apply broadly once triggered. Litigants, as well as petitioners, are well-advised to closely observe the calendar as the § 315 time bars relate to the interplay between the PTAB and the district courts.


This article appeared in the September 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.