PTAB’s Developing Statutory Construction Of The IPR One-Year Litigation Bar

Early last year the Board published two decisions construing 35 U.S.C § 315(b), the one-year plaintiff-side bar for inter partes review (IPR). In Macauto v. BOS GmbH & KG, IPR2012-00004, Paper 18 (PTAB Jan 24, 2013), the PTAB held that § 315(b) did not bar the IPR petition because parties in the lawsuit jointly stipulated to voluntarily dismiss without prejudice. The Board reasoned that although the patent owner filed the complaint more than one year before the filing of the IPR petition, dismissal of the suit without prejudice nullified the effect of the service. And in Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 21 (PTAB Jan. 30, 2013), the Board accepted Motorola's petition because, while the patent owner had filed a complaint against Motorola more than one year before the filing of the IPR petition, the patent owner had failed to provide any summons to Motorola.