February 6, 2023

Volume XIII, Number 37

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February 03, 2023

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US: Estoppel Attaches Even if Dismissed without Prejudice

On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick.  See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018).  The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice.  The panel found that the § 315(b) time bar applies.  The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).

The Patent Trial and Appeal Board (PTAB) previously held that “because [the filed complaint] was dismissed without prejudice, Federal Circuit precedent interprets such a dismissal as leaving the parties in the same legal position as if the underlying complaint had never been served.”  The Federal Circuit panel reasoned that the “Board misunderstood that the text of § 315(b) is agnostic as to the ‘effect’ of the service—i.e., what events transpired after the defendant was served.”

When a complaint has been served, a defendant should be cognizant that its one year bar begins to run regardless of the disposition of the complaint.

Copyright 2023 K & L GatesNational Law Review, Volume VIII, Number 229

About this Author

Jason A. Engel, Registered Patent Attorney, KL Gates, Law Firm

Jason A. Engel is a registered patent attorney with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim...

Benjamin E. Weed, Registered Patent Attorney, KL Gates, Chicago Law Firm

Mr. Weed is a registered patent attorney with a background in computer science. He concentrates his practice in patent litigation, post grant practice at the Patent Trial and Appeal Board, prosecution, counseling, due diligence, and opinion work. Prior to his career as a lawyer, Mr. Weed worked as a software developer at Motorola, Inc.’s Chicago-area corporate headquarters.

As a PTO-registered lawyer, Mr. Weed has experience handling standard patent prosecution matters as well as matters before the Board of Patent Appeals and Interferences. Mr....

Katy Hoffee, IP lawyer, KLGates

Katherine Hoffee is an intellectual property lawyer focusing on patent litigation and patent office litigation.  She has an undergraduate degree in chemical engineering and is registered to practice before the U.S. Patent and Trademark Office. 

As a PTO-registered lawyer, Ms. Hoffee has experience in post-grant proceedings before the Patent Trial and Appeals Board.  She has experience with preparing petitions for inter partes review, working with experts to prepare supporting declarations, defending and taking expert depositions, drafting Petitioner replies, and preparing...

Erik J. Halverson, PTO Registered Patent Attorney, KL Gates, Law Firm

Erik Halverson is an associate in the Chicago office, a PTO-registered patent attorney, and a member of the IP Procurement and Portfolio Management practice group.

Mr. Halverson focuses on patent related matters such as drafting, prosecuting, and analyzing U.S. and international patent applications involving a variety of technologies. He also provides strategic counseling, due diligence research and analysis for portfolio acquisitions, and opinion work such as patentability, validity, non-infringement, and freedom-to-operate opinions.