Infiltrator Water Techs., LLC, v. Presby Patent Trust

When a petitioner was served, including by waiver of service, with a complaint alleging infringement of the patent more than one year before the petition was filed, the Board cannot maintain an inter partes review under 35 U.S.C. § 315(b), even though the complaint was later involuntarily dismissed without prejudice for lack of personal jurisdiction. Because the Board lacked jurisdiction to institute, it must vacate the institution decision and terminate the proceeding rather than stay it. The decision applies Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in relevant part) to an involuntary dismissal for lack of personal jurisdiction. The Board's own Institution Decision had relied on Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (PTAB Oct. 30, 2013) (precedential), for the view that a complaint dismissed without prejudice does not trigger the bar. For petitioners, a complaint served more than a year before filing is fatal, and an instituted review can be vacated and terminated after institution. Arguments that service was ineffective under Fed. R. Civ. P. 4(k) will not avoid the bar, and a stay pending certiorari is not available. Patent owners may raise the bar by motion to dismiss after institution and obtain termination. The Board relied on Click-to-Call and on Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Nos. 2017-1555, 2017-1626 (Fed. Cir. Sept. 28, 2018), which found no reason to distinguish Click-to-Call for involuntary dismissals. LEGAL TEST OR STANDARD: Section 315(b) bars institution "if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." Under Click-to-Call and Bennett Regulator Guards, there is no exception for a complaint later dismissed, voluntarily or involuntarily. The text is "agnostic as to the 'effect' of the service." The question is whether the petitioner received notice through official delivery of the complaint, not whether service established personal jurisdiction. TRIGGERING FACTS: Petitioner conceded in its petition that it was served with an infringement complaint on the '094 patent more than one year before the petition. The complaint was dated Dec. 4, 2014, and a waiver of service was signed Dec. 22, 2014 and filed Dec. 30, 2014. The petition was filed Nov. 21, 2017. The complaint was dismissed without prejudice for lack of personal jurisdiction. Petitioner did not specifically assert that it was not served. Rule 4(k) concerns whether service establishes personal jurisdiction, not whether service occurred. KEY QUOTE: "Because “the Board lacked jurisdiction to institute the IPR proceeding[],” see Click-to-Call, 899 F.3d at 1325, and because we are not persuaded that a stay is appropriate under these circumstances, we vacate our Institution Decision (Paper 6) and terminate the proceeding." (Paper 18, p. 8) PRIOR PRECEDENT AFFECTED: Follows Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), and Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Nos. 2017-1555, 2017-1626 (Fed. Cir. Sept. 28, 2018). The Board's Institution Decision had relied on Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 at 15-18 (PTAB Oct. 30, 2013) (precedential), which this decision no longer follows on these facts. It distinguishes Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132 (Paper 60), on the stay issue. It cites GTNX, Inc. v. INTTRA, Inc., CBM2014-00072 (Paper 20) (PTAB Dec. 10, 2014), as an example of vacating institution and terminating after a post-institution bar determination. PRACTICE TIP: Petitioners should check the service date of every infringement complaint on the patent, including dismissed ones and ones served by waiver, before filing. They should not rely on Rule 4(k) or personal jurisdiction arguments to avoid the one-year bar. Patent owners should raise the bar in the preliminary response and renew it by motion if institution is granted.