Maier & Maier

Click-To-Call Decision Distinguished by PTAB as it Faces Appeal to Supreme Court

Earlier this month, Dex Media (the remaining appellee) filed a Petition for Writ of Certiorari over the Federal Circuit’s application of the one-year time-bar in Oracle Corp. v. Click-to-Call Technologies LP. According to the Federal Circuit, the one-year limit to file an IPR after being served with a complaint under 315(b) of the America Invents Act still applies even if the complaint has been voluntarily dismissed without prejudice.

While the Supreme Court mulls over a potential appeal, the decision is facing additional attacks from below. Despite the Federal Circuit’s explanation that “[s]imply 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,” the PTAB has interpreted the holding in a much more limited manner.[1] In IPR2018-01331, a challenge to Realtime Adaptive Streaming, LLC’s patent by Sling TV L.L.C. and Dish Network L.L.C., the PTAB granted institution despite the patent having been asserted against the petitioner over 12 months before the petition’s filing date.

In March 2017, Realtime Data LLC assigned the subject patent to Realtime Adaptive Streaming, LLC. Then, on June 6, 2017, Realtime Data LLC filed a complaint asserting the subject patent against Petitioner. Because Realtime Data was not the current patent owner, they opted to voluntarily dismiss the complaint. The patent was then asserted by Realtime Adaptive Streaming, LLC against Petitioner in October of 2017.

According to the PTAB, the complaint served to Petitioner in June 2017 is insufficient notice to trigger the § 315(b) time-bar because the complaint was filed without standing. Per the decision “Section 315(b) specifies that the time bar is triggered when ‘the petitioner is served with a complaint alleging infringement of the patent.’ Although the statute’s text is not explicit as to who must file and serve the complaint, § 315(b) is titled ‘Patent Owner’s Action,’ thus suggesting that only service of a patent owner’s complaint triggers the one-year time bar.”[2]

[1] Oracle Corp. v. Click-to-Call Technologies LP, Slip Op at 13 (CAFC Aug. 16, 2018).

[2] Sling TV, L.L.C. et al v. Realtime Adaptive Streaming, LLC, IPR2018-01331 Paper 9 at 7 (PTAB January 31, 2019).

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