315(b) Bars Lurk in Unlikely Places

315(b) bars are rare, but when applicable they kill petitions dead.  Many 315(b) denials involve a straightforward application of the statute, i.e., the Petitioner had been served with a complaint alleging infringement of the challenged patent more than one year before the petition date.  E.g. Accord Healthcare Inc. v. Eli Lily & Co., IPR2013-00356, Paper 13 (Kamholz, APJ).  But I also wrote decisions denying petitions because 315(b) had been triggered in a more nuanced or unexpected way.  Bars under 315(b) lurk sometimes in unlikely places, such as:

• Permissive counterclaims for patent infringement. E.g., St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258, 2013 WL 5947710 (expanded panel decision denying institution under 35 U.S.C. § 315(b)) (appeal dismissed, St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014)).
• Intervening reexaminations resulting in claim amendments.  E.g., BioDelivery Sciences Int’l, Inc. v. MonoSol Rx, LLC, IPR2013-00315, Paper 33 (Nov. 13, 2013).
• Cases dismissed without prejudice.  E.g., Histologics, LLC v. CDX Diagnositics, Inc. and Shared Medical Resources, LLC, IPR2014-00779, Paper 6 (Sep. 12, 2014); rehearing denied, Paper 9 (Oct. 16, 2014).

The last of these may be especially unexpected, because one of the seeming touchstones emerging in 315(b) denials (and 315(a), too) is whether the prior action had been dismissed with or without prejudice. There is a perception that the Board has been holding that a dismissal with prejudice of an action predating the petition by more than a year will bar the petition, whereas a dismissal without prejudice will not. That’s not quite the right distinction. The issue is whether the subsequent history of the case nullified service of the complaint.

In Histologics, an earlier action was dismissed without prejudice for failure to join a necessary party, but that dismissal was stayed pending a bankruptcy proceeding. By the time the bankruptcy proceeding ended, another civil action already had been filed, and the earlier action was consolidated with the new action. Because the petitioner had remained answerable for the infringement allegations made in the original action, service of the original complaint had not been nullified. Consequently, the original action created a time bar.

The Histologics case is a good reminder to research and consider all circumstances carefully. And to read the statute. You never know what you will find.