Bar To File IPR Triggered By Declaratory Judgment Action, Even If Complaint Was Dismissed Without Prejudice

Author:Ms Caitlin Olwell, Matthew G. Hartman and Rubén H. Muñoz
Profession:Akin Gump Strauss Hauer & Feld LLP

In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an action challenging the validity of patent claims, which had been dismissed without prejudice.

Petitioner Ruiz Food Products, Inc. identified FourKites, Inc. ("FourKites") as a real party-in-interest in two inter partes review (IPR) petitions and disclosed that FourKites had previously filed an action for declaratory judgment of invalidity against the patents-at-issue. Despite the previously filed declaratory judgment action, Petitioner argued that 35 U.S.C. § 315(a)(1) did not bar institution of the IPR proceedings because FourKites' declaratory judgment complaint had been dismissed without prejudice. In support of this argument, Petitioner relied on prior Federal Circuit and PTAB precedent for the proposition that dismissal without prejudice of a declaratory judgment action nullified the effect of service of that complaint and, therefore, could not act as a time bar under § 315(a)(1). See Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Oracle Corp. et al. v. Click-to-Call Tech. LP, Case IPR2013-00312, slip op. at 17 (PTAB Oct. 30, 2013) (Paper 26) (precedential).

After the IPR proceedings were instituted, the Federal Circuit issued an opinion distinguishing Graves and vacating the PTAB's final written decision in Oracle Corp. Specifically, in Click-to-Call Techs., LP v. Ingenio, Inc., the Federal Circuit held that service of a complaint in a patent infringement action can trigger the time-bar provision of 35 U.S.C. § 315(b) even if the complaint was later dismissed without prejudice. 899 F.3d 1321, 1325, 1334-35 (Fed. Cir. 2018) (en banc in relevant part). In light of the Federal Circuit's decision in Click-to-Call with respect to § 315(b), Patent Owner MacroPoint LLC moved to dismiss the IPR proceedings and averred that the holding of Click-to-Call applied equally to § 315(a)(1) and, therefore, the IPR proceedings were time-barred. Petitioner, in response, argued that the Federal Circuit's decision in Click-to-Call was cabined to § 315(b) and that a dismissal without prejudice still renders an action as if it had never been filed for purposes of § 315(a)(1).

Section 315 contains two provisions addressing time bars based on civil actions. The first provision, set forth as § 315(a)(1), governs actions brought by...

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