The Patent Trial and Appeal Board (PTAB) denied petition for
inter partes review (IPR) as time barred under 35 USC
§ 315(b) when a first-filed district court complaint was
dismissed without prejudice because there was continuity of
infringement litigation due to a second complaint filed before the
dismissal of the first complaint. Fujifilm Corp. v. Sony
Corp., Case No. IPR2018-00060 (PTAB, Apr. 20, 2018) (Paper 8)
(Boucher, APJ).
Sony owns a patent directed to a tape cassette that has a
magnetic tape and a solid-state memory. Sony filed a patent
infringement complaint against Fujifilm in the Southern District of
New York. Fujifilm accepted service of the complaint on August 22,
2016. On May 8, 2017, Sony withdrew the patent from the New York
action and on the same day filed a new complaint alleging
infringement of the patent in the Southern District of Florida. The
claims for infringement of the patent were dismissed in the New
York action without prejudice on May 9,
