Docket No. 2017-1555, -1626 (IPR2015-00826)
LOURIE, CLEVENGER, STOLL
September 28, 2018
Brief summary: Board IPR FWD vacated and remaned because the one-year time bar under § 315(b) barred institution (The difference here from Click-to-Call is “that Bennett’s complaint was involuntarily dismissed without prejudice”, but the FC panel found “no reason to distinguish” this case from Click-to-Call on that basis; “no exceptions for dismissed complaints”.)
Summary: Bennett appealed Board IPR decision holding Bennett’s US 5,810,029 unpatentable, arguing that the one-year time bar under “§ 315(b) barred institution, that its claims should have survived, and that the Board should have imposed greater sanctions” on Atlanta Gas (which AG appealed). Bennett served AG with an infringement complaint on July 18, 2012, and in 2013 the DC subsequently granted AG’s motion to dismiss without prejudice. AG filed the IPR on Feb. 27, 2015. Bennett argued § 315(b) “prohibits institution ‘if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner…is served with a complaint alleging infringement of the patent” but the Board disagreed because the DC’s “without-prejudice dismissal of [the] complaint nullified service” (which it confirmed in its Final Written Decision (FWD)). After the FWD was issued, the Board sanctioned AG because it did not notify the Board of a merger and name change, and authorized Bennett “to move for the ‘costs and fees’ it had incurred between the date of the [FWD] and the Board’s grant of sanctions.” The FC panel first explained that “[t]hough statute immunizes the Board’s preliminary decision to institute IPR from review” (§ 314(d)), the FC has “authority to review its compliance with § 315(b)” (Wi-Fi One, FC 2018). The FC panel reviewed the Board’s legal conclusions de novo, its fact findings for substantial evidence (PPC Broadband, FC 2016), and its award of sanctions for abuse of discretion (Midwestern Pet Foods, FC 2012). Under the FC’s 2018 Click-to-Call decision (on which according to FN1 the Board relied), the FC panel explained, “serving a complaint alleging infringement-an act unchanged by the complaint’s subsequent success or failure-unambiguously implicates § 315(b)’s time bar”, with “no exceptions for dismissed complaints”. The difference here from Click-to-Call is “that Bennett’s complaint was involuntarily dismissed without prejudice”, but the FC panel found “no reason to distinguish” this case from Click-to-Call on that basis. Given the 2012 date the complaint was served and the 2015 IPR filing date, the FC panel concluded “[t]he Board lacked authority to institute review” and vacated its FWD and remanded it for dismissal. On the sanctions issue, the FC panel explained that it could not yet review it “[b]ecause…the award remains nonfinal and unappealable” (Special Devices, FC 2001; “We extend pendent jurisdiction only reluctantly, and only to issues ‘inextricably intertwined’ with or necessary to resolution of issues before the court.” (Swint, US 1995)). Accordingly, the Board’s decision was vacated and remanded.