35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted 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.” The Federal Circuit, in Click-to-Call Technologies v. Ingenio, Inc. (decision available here), ruled that the 1-year bar date is triggered by the service of a complaint, even where the plaintiff voluntarily dismisses the complaint without prejudice.
The Court found that the statute does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice. “Simply put, § 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.”
This decision will likely lead to more petitions for IPRs being filed, as defendants served with complaints that are voluntarily dismissed must now file their IPR petitions within 1 year (i.e., the Federal Circuit reversed relatively longstanding PTAB authority on this point).