Voluntary Dismissal, Real Party in Interest, and Privity—A Trap for the Unwary -

An inter partes review is time barred, and may not be instituted, if a petitioner was served with a complaint alleging infringement of the patent more than one year before the filing of the petition. The Patent Trial and Appeal Board (PTAB) had interpreted that requirement as not applying to a complaint that had been voluntarily dismissed, reasoning that dismissal leaves the parties as if the action had never been brought. The U.S. Court of Appeals for the Federal Circuit rejected that reasoning in Click-to-Call Technologies. In an en banc footnote, the Federal Circuit held that the time bar applies if a petitioner had been served with a complaint for infringement more than one year before the filing date of the petition even if the complaint was later voluntarily dismissed. Thus, under Click-to-Call Technologies, voluntarily dismissal of a complaint no longer provides an exception to the one-year bar and the PTAB lacks jurisdiction to institute such a proceeding.