October 12, 2018Newsletter

This Week at the Board - October 12, 2018

PTAB Institutes IPR Despite Sixth Challenge To Same Patent

In IPR2018-00706, the patent owner asserted that the Board should deny institution under 35 U.S.C. §314(a), since the same patent had already been subject to five other IPRs.  The Board denied the request, noting that none of the previous challenges involved the same petitioner or the same primary reference.  Additionally, the Board noted that the patent owner’s complaint about multiple petitions was not persuasive, particularly when the number of challenges appeared to be a direct result of the patent owner’s own litigation activity.     

A link to the decision is found here.


PTAB Terminates IPR After Finding That Petitioner Waited Too Long To File Petition

In IPR2018-00224, the patent owner moved to dismiss an IPR, asserting that the petitioner waited too long to file its petition.  In the preliminary response, the patent owner had argued that the petition should be dismissed as untimely.  In the Institution Decision the Board explained that the time bar was not triggered by an action that was dismissed without prejudice.  However, shortly thereafter the Federal Circuit held in Click-to-Call that even an action dismissed without prejudice still triggers the one year bar.  The petitioner argued that the Federal Circuit’s decision was limited to whether a voluntary dismissal under the Federal Rule of Civil Procedure 41(a) subsequently nullified service, whereas in the present case the complaint at issue was dismissed for lack of personal jurisdiction.  The Board, however, noted that the Federal Circuit recently issued another decision in Bennett Regulator Guards, wherein the Federal circuit held that there is no reason to distinguish Click-to-Call on the basis that Click-to-Call involved a voluntary, rather than involuntary, dismissal.  Additionally, the Board noted that the petitioner never argued that it was not actually served.  The Board found that the petitioner was served, and that the petitioner had not persuasively argued that the service was nullified in any way by a subsequent determination that the district court lacked personal jurisdiction.  For this reason, the Board terminated the IPR.          

A link to the decision is found here.

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