Harness IP attorney and PTAB litigator Doug Robinson spoke to Ian Lopez at Bloomberg Law about a decision that was recently designated as precedential.

In May 2018, the PTAB instituted an IPR challenge by Infiltrator Water Technologies LLC against patent owner Presby Patent Trust over claims in U.S. Patent No. 8,815,094 directed to septic tank technology.

Unfortunately for Infiltrator, they waited longer than one year from when they were served a patent infringement complaint to challenge Presby. In August 2018, the Federal Circuit ruled 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.”

In what could have been good news for Infiltrator, the federal lawsuit against them was eventually dismissed without prejudice, but the Federal Circuit ruling went on to state that there were no exemptions for complaints that are subsequently dismissed, “with or without prejudice.” The board subsequently terminated the proceeding.

“The question was, well, if it’s an involuntary dismissal, does it still count? Now we know the answer is yes,” says Robinson. “This is one of those cases where it gives people certainty, and that’s why they made it precedential.”

In another decision that was deemed precedential on the same day, General Electric Co. v. United Techs. Corp., the PTAB said it would deny the institution of an IPR if the patent owner relinquishes its legal rights to the patent claims being challenged.

“If there are no claims to find unpatentable because they no longer exist, then the board is not going to proceed with an IPR, which seems rational,” Robinson said.

TAKEAWAY

Businesses should keep in mind that, under 35 U.S.C. §315(b), the board cannot institute an Inter Partes Review if the petition is filed more than one year after the challenger is served with an infringement complaint. Further, challengers should not challenge claims which have been legally relinquished by the patent owner.

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