A “hybrid” dismissal of a claim of infringement of a patent (dismissal with prejudice for some aspects and without prejudice for other aspects) does not reset the clock for the § 315(b) one-year time bar
Summary (Precedential) :
Petitioner LG Electronics, Inc. (“LG”) was served with complaints alleging infringement of the ’088 Patent on two separate occasions – the first complaint was served more than one year before LG filed an IPR petition challenging the ’088 Patent and the second was served less than one year before it filed the petition. LG argued that although the first complaint was served more than one year before it filed the IPR petition, the § 315(b) clock reset when the first complaint was dismissed based on a settlement agreement and thus the § 315(b) one-year time bar should be calculated from the service of the second complaint.
The Board denied LG’s argument and held that § 315(b) bars LG’s petition based on the service date of the first complaint. The Board observed that the dismissal based on the settlement was a “hybrid” dismissal – the court had dismissed the patentee’s claims against some accused products with prejudice while dismissing patentee’s claims against other products without prejudice. The Board concluded that because a dismissal with prejudice constitutes a change in position as between the parties, a hybrid dismissal does not leave the parties as though the action had never been brought in the first place, and thus does not reset the § 315(b) clock. The Board cited a similar holding in Microsoft Corp. v. Virnetx Inc., Case IPR2014-00401 (Board July 23, 2014) (Paper 10). The Board differentiated Oracle Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312 (Board Dec. 18, 2013) (Paper 40)), where the Board held that dismissing an entire complaint without prejudice did reset the § 315(b) clock, because a complete dismissal without prejudice leaves the parties as though the action had never been brought in the first place. The Board noted that its holding is equitable in part because the § 315(b) bar does not foreclose LG from challenging the ’088 Patent through ex parte reexamination or in litigation.