USPTO Board Holds That Complaint Dismissed Without Prejudice Does Not Bar Inter Partes Review

In a decision granting (in part) a Request for Inter Partes Review, the USPTO Patent Trial and Appeal Board (PTAB) held that an infringement complaint that was dismissed without prejudice did not bar the Request for Inter Partes Review.

The Statute at Issue

The Inter Partes Review statute includes a limitations period measured from service of an infringement complaint against the petitioner. In particular, 35 USC § 315(b) provides:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one 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.

The Procedural Background

In the case at issue, the Patent Owner (BOS GmbH & KG) had filed a complaint against the Taiwanese parent (Macauto Industrial Co., Ltd.) of the Petitioner (Macauto U.S.A.) in April of 2011, which was more than one year before the Request for Inter Partes Review was filed. According to the PTAB decision, the Taiwanese parent moved to dismiss for lack of personal jurisdiction, and the action eventually was dismissed without prejudice pursuant to a stipulation.

(BOS filed another infringement action against the Petitioner and a related Chinese entity (Kunshan Macauto) on May 30, 2012, which was less than one year before the Request for Inter Partes Review was filed.)

The PTAB Analysis

The PTAB interpreted 35 USC § 315(b) as requiring that “the service date of the complaint be more than a year before the petition was filed,” and turned to the Federal Rules of Civil Procedure to interpret and apply the service requirement.

[T]he infringement suit against Macauto Taiwan was voluntarily dismissed without prejudice under Fed.R.Civ.P. 41(a), pursuant to a joint stipulation…The Federal Circuit has consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought…Accordingly, the dismissal of the earlier action against Macauto Taiwan nullifies the effect of the alleged service of the complaint on Petitioner.

The PTAB therefore concluded that there was no effective service date of the prior complaint on Petitioner, and so 35 USC § 315(b) did not bar the Request for Inter Partes Review.  (Because there was no effective service date, the PTAB did not decide whether service on the Taiwanese parent would have barred the Request by the U.S. Petitioner.)