Federal Circuit: Estoppel Applies Even If Infringement Complaint Is Dismissed Without Prejudice

August 22, 2018

The US Court of Appeals for the Federal Circuit recently held en banc that the one-year time bar under 35 USC § 315(b) applies even when a properly served infringement complaint is dismissed without prejudice, thus barring the defendant from filing an inter partes review petition after the one-year period elapses.

The US Court of Appeals for the Federal Circuit issued its Click-to-Call panel decision on August 16, with an en banc footnote addressing whether the one-year estoppel clock under 35 USC § 315(b) applies when a properly served infringement complaint is dismissed without prejudice.[1] Before Click-to-Call, the US Patent Trial and Appeal Board (PTAB) had interpreted Section 315(b) to mean that “the dismissal of the infringement suit [by plaintiff] nullifies the effect of the service of the complaint and, as a consequence, does not bar [the defendant] from pursuing an inter partes review of [the asserted patent].”[2]

The en banc court rejected the PTAB’s interpretation of Section 315(b), holding that Section 315(b)’s time bar applies when “an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.”[3] Relying heavily on Section 315(b)’s language “served with a complaint,” the Click-to-Call panel reasoned that “[Section] 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.”[4]

Judges Dyk and Lourie dissented.[5] Relying on Section 315(b)’s language, background, and purpose, the dissent concluded that the Section 315(b) time bar “should not apply when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice.”[6] The dissent also cautioned that the court’s contrary holding could permit patent owners to “manipulate the filing of infringement actions” by filing an infringement complaint, serving it, dismissing the suit, and then refiling the complaint once the one-year estoppel clock has elapsed.[7]

Practice Pointer

When served with an infringement complaint, a defendant should be cognizant that its one-year bar to file an inter partes review petition has begun, regardless of the disposition of the complaint.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the author, Dion M. Bregman in our Silicon Valley office, or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:

Joshua M. Dalton

Century City
Andrew V. Devkar

Jason C. White

C. Erik Hawes
Rick L. Rambo

Louis W. Beardell, Jr.

San Francisco
Brent A. Hawkins

Silicon Valley
Andrew J. Gray IV
Michael J. Lyons

Washington, DC
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.


[1] Click-to-Call Tech., LP v. Ingenio, Inc., Case No. 2015-1242 slip op. (Fed. Cir. Aug. 16, 2018) (en banc note 3).

[2] Id. at 7.

[3] Id. at 10 n.3 (en banc).

[4] Id. at 13 (emphasis added).

[5] Id. (Dyk, J., dissenting).

[6] Id. at 12-13.

[7] Id. at 12.