Inter Partes Review: Dismissal Without Prejudice Bars Application of the IPR Statute of Limitations

January 29, 2013

In IPR2012-0004, on January 24, 2013, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Blankenship, Giannetti and McNamara) issued its Decision on Petitioner MacAuto USA's ("Petitioner") IPR petition for review of BOS GmbH & KG ("Patent Owner") U.S. Patent No. 6,422,291. The '291 patent relates to a roll-up blind especially suited for mounting on the rear window of an automobile.

In its Preliminary Response, the Patent Owner asserted that the Petition should be denied based on, among other things, the fact that a complaint was served on the Petitioner's parent company more than a year before the filing of the petition. Under 35 U.S.C. section 315(b), 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. In granting the petition over the Patent Owner's argument, the Board relied on the fact that the prior lawsuit was voluntarily dismissed without prejudice and, as such, under Federal Circuit law, the effect of such a dismissal "leaves the parties as though the action had never been brought."

As to the requirement of service, the Board notes that the infringement suit against Macauto Taiwan was voluntarily dismissed without prejudice under Fed.R.Civ.P. 41(a), pursuant to a joint stipulation. EX 2016. The Federal Circuit has consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought. Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002) ("The dismissal of an action without prejudice leaves the parties as though the action had never been brought"); Bonneville Associates, Ltd. Partnership v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999) ("The rule in the federal courts is that '[t]he effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) is to render the proceedings a nullity and leave the parties as if the action had never been brought.'") (Citations and internal quotes omitted.). Accord, Wright, Miller, Kane, and Marcus, 9 Federal Prac. & Proc. Civ. ยง 2367 (3d. ed.) ("[A]s numerous federal courts have made clear, a voluntary dismissal without prejudice under Rule 41(a) leaves the situation as if the action never had been filed.") (footnote omitted). Accordingly, the dismissal of the earlier action against Macauto Taiwan nullifies the effect of the alleged service of the complaint on Petitioner.

The Board separately relied on the fact that the Patent Owner never filed a proof of service of the Petitioner's waiver of service in the litigation. Under Rule 4(d), the failure to file the proof of service means that the Patent Owner never established a service date for its complaint:

Under subdivision (d)(4) of that Rule, to establish a service date the waiver or proof of service must be filed. There is no evidence in the record or otherwise that Patent Owner has done so. As explained in the Advisory Committee Note to Rule 4(d), "Paragraph (4) clarifies the effective date of service when service is waived; the provision is needed to resolve an issue arising when applicable law requires service to toll the statute of limitations." Advisory Committee Note to 1993 Amendment to Rule 4(d) (citations omitted).

Because the service date of the Patent Owner's complaint was not established, the one year time limitation under Section 315(b) had not yet begun to run and thus the petition was not time barred.

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This decision illustrates the impact prior litigation proceedings can have on whether the application of Section 315(b) will bar an IPR proceeding based on the prior litigation. For plaintiffs in litigation with foreign defendants, this decision also illustrates the importance of filing the proof of service of the defendant's waiver as soon as possible to start the clock running on Section 315(b)'s one year statute of limitations.

MacAuto U.S.A. v. BOS GMBH & KG, IPR2012-00004, Paper No. 18 (January 24, 2013) (J. Giannetti).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.