Oracle v. Click-to-Call (IPR2013-00312): § 315(b) and a Complaint Dismissed Without Prejudice

Section 315(b) bars inter partes review if the petition is filed more than one year after the petitioner, a real party in interest or a privy “is served with a complaint alleging infringement of the patent.” Oracle Corp. v. Click-to-Call Technologies, LP, IPR2013-00312 (Paper 26, October 30, 2013), was an early Board ruling on whether a complaint that was later voluntarily dismissed without prejudice counts. The Board designated the decision precedential only as to its Section III.A, the § 315(b) discussion. That reading has since been rejected, so this note treats the case mainly as history. Designations can change; check the USPTO’s current list of precedential and informative decisions.

Background

Oracle and several related companies, including Ingenio, LLC, petitioned for review of Click-to-Call’s U.S. Patent No. 5,818,836. The patent owner argued that Ingenio was time-barred. The undisputed timeline was that in 2001 an exclusive licensee of the patent sued a company called Keen for infringement. In 2003 Keen acquired the licensee, the suit was voluntarily dismissed without prejudice by joint stipulation under Federal Rule of Civil Procedure 41(a), and Keen later changed its name, eventually becoming Ingenio, LLC. Click-to-Call sued Ingenio and others on the patent in 2012, and the petition was filed in May 2013.

The question was whether service of the 2001 complaint started a one-year clock that had long expired.

What the Board decided

The Board treated § 315(b) as a threshold issue and held that the patent owner had not shown a bar. It relied on Federal Circuit decisions describing a voluntary dismissal without prejudice as leaving the parties as though the action had never been brought. On that view, the dismissal nullified the effect of service of the 2001 complaint, so neither Ingenio nor any other petitioner was barred.

Because no petitioner was barred, the Board did not reach other issues the parties briefed, such as whether the bar should be applied petitioner by petitioner and whether the earlier suit involved the same patent. On the merits, it instituted review of thirteen claims on anticipation and obviousness grounds based on a reference called Dezonno, and declined review of four others.

Why it matters

For several years the decision supported an argument that a defendant whose earlier case was dismissed without prejudice had a fresh opportunity to petition. The Board itself limited it, distinguishing it where a dismissal was partly with prejudice or tied to a settlement; see LG Electronics v. Mondis.

Later developments

The Board’s reading did not survive appeal. In Click-to-Call Technologies, LP v. Ingenio, Inc. (Fed. Cir. 2018), the Federal Circuit, sitting en banc on this issue, held that service of a complaint alleging infringement triggers the § 315(b) bar even if the action is later voluntarily dismissed without prejudice. The statute looks to the fact of service, not to what happens to the case afterward.

The Supreme Court then held in Thryv, Inc. v. Click-to-Call Technologies, LP (2020) that the Board’s § 315(b) time-bar rulings are tied to the institution decision and are not appealable. That decision resolved the case on reviewability grounds.

The practical result is that the Board’s 2013 reading of dismissed complaints is no longer good law on that point, and Board decisions on the time bar are generally not open to appeal. Anyone assessing a time bar should check current Board precedent and USPTO guidance; see also discovery and the one-year time period. For another way a petition can miss the deadline, see Luv N’ Care v. McGinley.

Key takeaways

• In 2013 the Board held that a complaint voluntarily dismissed without prejudice did not trigger § 315(b), and instituted review.
• The decision was designated precedential only as to its § 315(b) section.
• The Federal Circuit, en banc on that issue, later held that service triggers the bar regardless of a later voluntary dismissal without prejudice.
• Thryv (2020) held that § 315(b) rulings are not appealable, which makes getting the time bar right at the Board critical.