News & Events

June 25, 2019

Supreme Court Grants Certiorari in Dex Media v. Click-to-Call Technologies

The Supreme Court announced Monday that it will decide whether the Federal Circuit may review Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in cases where it finds that 35 U.S.C. § 315(b)’s one-year time bar does not apply.

35 U.S.C. § 315(b) states: “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, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Here, Dex Media filed a petition for IPR more than one year after it was served with a complaint for patent infringement. Nonetheless, the PTAB held that the petition was timely filed because the patent infringement suit was dismissed without prejudice. Click-to-Call appealed to the Federal Circuit, which reversed the PTAB, holding that the one-year time bar is triggered upon service of the complaint regardless of whether the complaint is dismissed without prejudice. Dex media then filed a petition for a writ of certiorari, arguing that the plain text of the America Invents Act (AIA) prohibits the Federal Circuit from reviewing PTAB decisions on institution, including time-bar decisions.

Read more at Law360.


The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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