Background
Click-to-Call Technologies (CTC) owns a patent on a telephone-internet interface system. In 2001, CTC’s predecessor filed a patent infringement suit against Ingenio, Inc. in the Northern District of California and served Ingenio with the complaint. The district court action was subsequently voluntarily dismissed without prejudice in 2002. Years later, CTC reasserted the same patent. In 2013, Ingenio filed an IPR petition at the PTAB challenging the patent’s validity.
CTC argued that the IPR petition was time-barred under 35 U.S.C. § 315(b), which prohibits institution of an IPR more than one year after the petitioner “was served with a complaint alleging infringement of the patent.” The 2001 service occurred more than one year before Ingenio’s 2013 petition. The PTAB, however, held that the voluntary dismissal without prejudice reset the clock—leaving the parties as if the action had never been brought—and therefore the 2001 service was irrelevant. The PTAB instituted the IPR and ultimately cancelled CTC’s claims.
The Court’s Holding
The Federal Circuit reversed en banc. The court held that a voluntary dismissal without prejudice does not nullify the fact of service for purposes of the § 315(b) time bar. The statutory language is clear: the bar is triggered when a petitioner “was served with a complaint.” Service is an act that occurs at a specific point in time. Once service occurs, the one-year clock starts. A subsequent voluntary dismissal does not undo service; it merely terminates the particular district court proceeding, leaving the patent owner free to refile—but it cannot retroactively erase the legal fact that the petitioner was served.
The court rejected the PTAB’s reliance on the common law principle that a voluntary dismissal without prejudice leaves the parties as if the action had never been filed. That principle governs the legal effect of the dismissal on the underlying action, not on the factual question of whether service occurred. For § 315(b) purposes, what matters is the historical fact of service, not the legal status of the dismissed case.
Because Ingenio was served in 2001 and filed its IPR petition more than one year later in 2013, the petition was time-barred. The PTAB lacked jurisdiction to institute the IPR, and the Federal Circuit vacated the Board’s decision and remanded with instructions to dismiss.
Key Takeaways
- The IPR one-year time bar under 35 U.S.C. § 315(b) is triggered on the date a party is served with an infringement complaint, even if that complaint is subsequently dismissed without prejudice.
- A voluntary dismissal without prejudice does not reset the § 315(b) clock—the historical fact of service controls, not the legal outcome of the dismissed case.
- Defendants who are served with an infringement complaint, even in a case that settles or is voluntarily dismissed early, must file any IPR petition within one year of that service or risk permanent time-bar.
- Patent owners can use early-filed and quickly-dismissed complaints as a strategic tool to start the IPR clock and preemptively foreclose later validity challenges.
Why It Matters
This en banc decision significantly affected IPR strategy for both patent owners and accused infringers. Before Click-to-Call, some practitioners believed that a voluntary dismissal reset the one-year IPR window, giving defendants additional time to prepare their IPR campaigns. The Federal Circuit’s ruling eliminated that assumption: service is service, regardless of what happens to the case afterward.
The decision also highlighted a strategic opportunity for patent owners: filing and voluntarily dismissing a complaint can serve to lock in the one-year clock, limiting a defendant’s future options for IPR challenges. For accused infringers, the ruling underscores the urgency of evaluating IPR options immediately upon service—even when the lawsuit appears likely to settle or be dismissed—because the window may be closing faster than anticipated.