The PTAB designated its termination decision in Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR2018-00224 (Paper 18)(entered October 1, 2018) as precedential on September 9, 2019, and its decision denying institution in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511 (Paper 11)(entered January 31, 2019) as precedential on August 29, 2019.  These cases illustrate application of the Federal Circuit’s decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), which held that 35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement,” and that § 315(b) “does not contain any exceptions or exemptions for complaints . . . that are subsequently dismissed, with or without prejudice.”  Click-to-Call, 899 F.3d at 1330.

In Infiltrator, the PTAB vacated its institution decision and terminated IPR2018-00224 following the Federal Circuit’s Click-to-Call decision.  There was no dispute that Petitioner had received a complaint for which service was waived and that was subsequently involuntarily dismissed for lack of personal jurisdiction.  The PTAB determined that, under Click-to-Call, it is “constrained to conclude that the Petition was untimely, and that the ‘Board lacked jurisdiction to institute the IPR proceeding,’ notwithstanding the fact that the complaint was ultimately dismissed without prejudice for lack of personal jurisdiction.”  Infiltrator, Paper 18 at 7 (citations omitted).

In Cisco, the PTAB declined to institute an IPR proceeding where the Petitioner filed a civil action challenging the validity of a claim of the involved patent and later voluntarily dismissed that civil action without prejudice.  Finding that 35 U.S.C. § 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice, Cisco, Paper 11 at 5-6, the PTAB found that the same rationale supporting the Federal Circuit’s Click-to-Call decision applies to the time bar under 35 U.S.C. § 315(a)(1). Cisco, Paper 11 at 8.  This is directly contrary to a prior non-precedential PTAB decision finding that such a voluntary dismissal does not violate 35 U.S.C. § 315(a)(1).  Emerson Elec. Co. v. SIPCO, LLC, IPR2015-01579 (Paper 7, at 2−3) (entered January 14, 2016).

The identification of these two past decisions as precedential reinforces the point that patent challengers need to strategically assess the venue where to pursue invalidation, PTAB versus district court, and take heed of the bars under 35 U.S.C. § 315.