U.S. CAFC’s Solidified Decision of the Interpretation of Inter Partes Review (IPR) Time Bar under 35 U.S.C. § 315(b)

By: Yen-Kai (Eldwin) Hseu

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) recently decided the case Luminara Worldwide, LLC v. Iancu, No. 17-1629 (Fed. Cir. 2018).  The Luminara Worldwide decision provides important insight into the Federal Circuit’s interpretation for the Inter Partes Review (IPR) time bar under 35 U.S.C. § 315(b).

The IPR time bar provision of the America Invents Act, 35 U.S.C. § 315(b), requires that “[a]n inter partes 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 of the petitioner is served with a complaint alleging infringement of the patent.”

In Luminara Worldwide, Shenzhen Liown Electronics Co., Ltd. filed three petitions for IPR requesting review of three of Luminara’s patents, namely (for the sake of convenience), the 166 Patent, the 319 Patent, and the 869 Patent.  The IPR petitions by Liown were filed within one year of Luminara serving a complaint alleging infringement of the ’319 patent on Liown.

However, more than a year before Liown’s IPR petition, Candella, LLC, a predecessor in interest of Luminara, had sued Liown in the U.S. District Court for the District of Minnesota for the infringement of the 319 patent.  Service of the earlier complaint was acknowledged by the Minnesota Secretary of State, but the action was dismissed a few days later after the two parties reached an agreement calling for Candella to file a notice of voluntary dismissal without prejudice.

In view of the previous complaint served by Candella more than one year before Liown’s petition for IPR, Luminara argued that Liown was barred from requesting an IPR of the 319 patent in view of the IPR time bar of 35 U.S.C. § 315(b).  The Patent Trial and Appeal Board (“PTAB”) rejected Luminara’s argument, explaining its view that the complaint served by Candella should not be considered in the calculation of the IPR time bar because that lawsuit was voluntarily dismissed without prejudice, and thus had no legal effect.  The PTAB also found that all three of Luminara’s 166, 319, and 869 Patents were unpatentable as being obvious in view of previously unconsidered prior art raised by Liown.

On appeal by Luminara, the Federal Circuit reversed the PTAB’s Final Written Decision regarding the 319 patent by relying on another Federal Circuit opinion that was decided on the same day, Click-To-Call Technologies, LP, v. Ingenio, Inc, No. 15-1242 (Fed. Cir. Aug. 16, 2018) (en banc).  In Click-To-Call, the Federal Circuit held that the one-year IPR time bar applies to actions that have been voluntarily dismissed without prejudice.  (For a fuller discussion of that case, see Osha Liang’s August newsletter at https://oshaliang.com/newsletter/simple-laws-sometimes-have-simple-meanings/.)   The PTAB’s decision of unpatentability for obviousness with respect to the 166 and 869 patents, however, was affirmed.

In view of the Luminara decision, patent practitioners should keep in mind that any complaint alleging infringement of a patent will be applied to the one-year IPR time bar, including complaints that have been voluntarily dismissed without prejudice.