Infiltrator Water Techs., LLC, v. Presby Patent Trust

Trials@uspto.gov 	Paper No. 18
571.272.7822 	Entered: October 1, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
INFILTRATOR WATER TECHNOLOGIES, LLC,
Petitioner,
v.
PRESBY PATENT TRUST,
Patent Owner.
_______________
Case IPR2018-00224
Patent 8,815,094 B2
_______________
Before KRISTINA M. KALAN, MICHAEL L. WOODS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
TERMINATION
35 U.S.C. § 315(b); 37 C.F.R. § 42.72

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I. 	INTRODUCTION
Patent Owner moves to dismiss this proceeding in view of the time
bar of 35 U.S.C. § 315(b) and the Federal Circuit’s decision in Click-to-Call
Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in
relevant part). Paper 14. Petitioner opposes the motion. Paper 16. For
reasons stated below, we vacate our Institution Decision (Paper 6) and
terminate the proceeding.1
II. 	BACKGROUND
On November 21, 2017, Petitioner Infiltrator Water Technologies,
LLC, filed a Petition for inter partes review of claims 8–12 of U.S. Patent
No. 8,815,094 B2 (Ex. 1001). Paper 1 (“Pet.”). On March 7, 2018, Patent
Owner Presby Patent Trust filed a Preliminary Response. Paper 5 (“Prelim.
Resp.”).
In its Preliminary Response, Patent Owner argued that the Petition
should be denied as untimely under 35 U.S.C. § 315(b) because it was filed
more than one year after Petitioner was served with a complaint asserting
infringement of the ’094 patent. See Prelim. Resp. 10. The complaint that
provided the basis for Patent Owner’s § 315(b) argument was dismissed
without prejudice, and, in our Institution Decision, we explained that the
Board has held that the § 315(b) time bar is not triggered by an action that
was dismissed without prejudice. See Paper 6 at 5–6 (citing Oracle Corp. v.
1 See, e.g., GTNX, Inc. v. INTTRA, Inc., CBM2014-00072, 2014 WL
7723800 (PTAB Dec. 10, 2014) (Paper 20) (vacating institution decision and
terminating review where proceeding was, post-institution, determined to be
barred by 35 U.S.C. § 325(a)(1)).

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Click-to-Call Techs. LP, IPR2013-00312, Paper 26 at 15–18 (PTAB Oct. 30,
2013) (precedential)). We instituted trial on May 25, 2018. Paper 6.
On August 16, 2018, the Federal Circuit issued a decision in Click-to-
Call, 899 F.3d at 1321. The Federal Circuit held that 35 U.S.C. § 315(b)
“unambiguously precludes the Director from instituting an IPR if the
petition seeking institution is filed more than one year after the petitioner,
real party in interest, or privy of the petitioner ‘is served with a complaint’
alleging patent infringement,” and that § 315(b) “does not contain any
exceptions or exemptions for complaints . . . that are subsequently
dismissed, with or without prejudice.” Click-to-Call, 899 F.3d at 1330.
On August 30, 2018, we held a conference call with counsel for the
parties to discuss the impact of Click-to-Call on this proceeding. See
Ex. 2008 (transcript of conference call). Subsequently, Patent Owner filed a
motion to dismiss. See Paper 14. Petitioner opposed the motion. See
Paper 16.
In the motion, Patent Owner asserts that there is no dispute that
Petitioner was served with a complaint asserting infringement of U.S. Patent
No. 8,815,094 more than one year prior to the filing of the Petition and,
consequently, that Click-to-Call requires dismissal of the proceeding. See
generally Paper 14.
Petitioner disagrees and argues that Click-to-Call’s “holding is limited
to whether a voluntary dismissal under Federal Rule of Civil Procedure
41(a) subsequently nullifies service,” whereas “[t]he complaint at issue in
this matter was dismissed for lack of personal jurisdiction.” Paper 16 at 1.
More specifically, Petitioner cites Federal Rule of Civil Procedure 4(k) and
argues that “service on a defendant is not effective when the district court

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that issued the summons lacks personal jurisdiction,” and that “Petitioner
was, therefore, never effectively served” with the complaint that provides
the basis for Patent Owner’s § 315(b) argument. Id. at 1–2 (“[T]he
complaint at issue was not delivered in a manner prescribed by law since the
filed waiver of service was not legally effective under Rule 4(k).”).
Petitioner further argues that, “[t]o the extent the Board believes this IPR is
untimely in light of the Click-to-Call holding,” the Board should stay the
proceeding “pending the resolution of any petitions for writ of certiorari or
until the certiorari petition deadline passes on November 14, 2018.” Id. at
2–3.
III. 	DISCUSSION
We determine, in view of Click-to-Call and the Federal Circuit’s more
recent decision in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,
Nos. 2017-1555, 2017-1626 (Fed. Cir. Sept. 28, 2018), that we “lacked
jurisdiction to institute the IPR proceeding[],” see Click-to-Call, 899 F.3d at
1325, and that we must vacate our institution decision and terminate the
proceeding.
Petitioner was served with a complaint asserting infringement of
the ’094 patent more than one year prior to the filing of the Petition in this
proceeding. See Presby Patent Trust v. Infiltrator Systems, Inc., No. 1:14-
cv-00542 (D.N.H.), Dkt. No. 1 (complaint dated Dec. 4, 2014), Dkt. No. 3
(summons dated Dec. 8, 2014), Dkt. No. 5 (waiver of service signed
Dec. 22, 2014 and filed Dec. 30, 2014); see also Ex. 2001. In the Petition,
Petitioner conceded that Petitioner “was served with a complaint asserting
infringement of the ’094 patent” more than one year prior to the filing of the
Petition in this proceeding. See Pet. 2 n.1. As Petitioner observes, Paper 16

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at 1, the complaint was ultimately dismissed without prejudice for lack of
personal jurisdiction, see Presby Patent Trust, No. 1:14-cv-00542,
Dkt. No. 17; Ex. 2002. The question before us is whether the complaint at
issue here, i.e., a complaint for which service was waived and that was
subsequently involuntarily dismissed for lack of personal jurisdiction,
triggers the time bar of § 315(b). Section 315(b) states that an IPR may not
be instituted “if the petition requesting the proceeding is filed more than
1 year after the date on which the petitioner . . . is served with a complaint
alleging infringement of the patent.”
We agree with Petitioner that Click-to-Call specifically addressed the
question of whether a “voluntary dismissal without prejudice of the civil
action in which the complaint was served ‘does not trigger’ the [§ 315(b)]
bar.” See Click-to-Call, 899 F.3d at 1328 (emphasis added). However, in
Bennett Regulator Guards, the Federal Circuit addressed the issue that is
before us and stated: “We identify no reason to distinguish Click-to-Call” on
the basis that Click-to-Call involved a voluntary, rather than involuntary,
dismissal.2 See Bennett Regulator Guards, slip op. at 5–6 (“Just as the
statute includes no exception for a voluntarily dismissed complaint, it
includes no exception for an involuntarily dismissed complaint.”).
Because Petitioner in this case may have raised arguments concerning
service that were not addressed in Bennett Regulator Guards, we provide the
following discussion of those arguments.
2 The dismissal at issue in Bennett Regulator Guards was an involuntarily
dismissal without prejudice for lack of personal jurisdiction. See Bennett
Regulator Guards, Inc. v. MRC Glob. Inc., No. 4:12-cv-1040, 2013 WL
3365193, at *5 (N.D. Ohio July 3, 2013); see also Bennett Regulator
Guards, slip op. at 2 (citing the district court’s dismissal order).

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In the Petition, Petitioner conceded that it “was served with a
complaint asserting infringement of the ’094 patent” more than one year
prior to the filing of the Petition in this proceeding. See Pet. 2 n.1. Even in
its opposition to Patent Owner’s motion to dismiss, Petitioner does not
specifically assert that it was not “served.” See generally Paper 16. There is
no meaningful dispute that Petitioner received “notice of the pendency of a
legal action, in a manner and at a time that affords the defendant a fair
opportunity to answer the complaint and present defenses and objections.”
Click-to-Call, 899 F.3d at 1332 (quoting Henderson, 517 U.S. at 672).
Indeed, having received that notice, Petitioner presented defenses and the
case was dismissed without prejudice for lack of personal jurisdiction.
In support of its position that § 315(b) does not apply, Petitioner cites
Federal Rule of Civil Procedure 4(k) and argues that Petitioner was not
“effectively served,” or that it was not served “in a manner prescribed by
law since the filed waiver of service was not legally effective under Rule
4(k).” Paper 16 at 1–2.
Rule 4(k) is titled “Territorial Limits of Effective Service.” However,
the text of Rule 4(k) does not purport to establish legal means for
accomplishing service; rather, the text of Rule 4(k) concerns when
“[s]erving a summons or filing a waiver of service establishes personal
jurisdiction over a defendant.” See Fed. R. Civ. P. 4(k) (emphasis added).
By contrast, Rule 4(c) is titled “Service” and establishes certain rules for
service, including, e.g., that “[a]ny person who is at least 18 years old and
not a party may serve a summons and complaint.” Rule 4(d) discusses
waiver of service, which occurred here, see Presby Patent Trust, No. 1:14-
cv-00542, Dkt. No. 5; Ex. 2001 at 7, and specifically explains that, “[w]hen

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the plaintiff files a waiver, proof of service is not required and these rules
apply as if a summons and complaint had been served at the time of the
filing the waiver,” Rule 4(d)(4). Rules 4(e) through (j) specifically describe
acceptable methods of service under a variety of circumstances.
Petitioner’s focus on Rule 4(k) does not persuasively establish that
service did not occur, or that service was not carried out “in a manner
prescribed by law.” See Paper 16 at 2. Petitioner’s argument is relevant to
whether that service established personal jurisdiction over the defendant.
Id.; see also Fed. R. Civ. P. 4(k). Petitioner has not meaningfully or
persuasively argued that the service itself—which, in this case, was waived
and is conceded, see Pet. 2 n.1; Ex. 2001 at 7—was nullified by a
subsequent determination that the district court lacked personal jurisdiction
over the defendant. See generally Paper 16; see also Click-to-Call, 899 F.3d
at 1332 (“[T]he text of § 315(b) is agnostic as to the ‘effect’ of the service—
i.e., what events transpired after the defendant was served.”); Bennett
Regulator Guards, slip op. at 5–6.
Petitioner in this case received notice through official delivery of a
complaint more than one year prior to the filing of the Petition.
Accordingly, we are constrained to conclude that the Petition was untimely,
and that “the Board lacked jurisdiction to institute the IPR proceeding[],”
Click-to-Call, 899 F.3d at 1325; Bennett Regulator Guards, slip op. at 5–6,
notwithstanding the fact that the complaint was ultimately dismissed without
prejudice for lack of personal jurisdiction.
Having concluded that we lacked jurisdiction to institute the
proceeding, we are not persuaded by Petitioner’s argument that we should
stay the proceeding rather than terminate it. See Paper 16 at 2–3. Citing

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Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-
00132 (Paper 60), Petitioner argues that the Board has authority under 37
C.F.R. § 42.5(a) to stay a proceeding. Paper 16 at 2. However, in Shaw, the
Board’s decision ordering “no further action . . . pending [a Supreme Court
decision]” was entered after a remand from the Federal Circuit. See Shaw,
IPR2013-00132, Paper 60 at 2–3. As expressly noted by the Board in Shaw,
staying that case did not have the potential to “violate the statutory period
for inter partes reviews under 35 U.S.C. § 316(a)(11) because our Final
Written Decision was issued within one year of institution.” Id. at 3. Here,
indefinitely staying the case would have the potential to violate statutory
deadlines. Moreover, Petitioner does not allege that the Board’s jurisdiction
over the case was at issue in Shaw, and Petitioner has cited no authority for
the apparent assertion that the Board may stay a case over which it lacks
jurisdiction. Although Petitioner cites a district court case for the
proposition that “[s]tays pending resolution of a petition for writ of certiorari
‘are entered quite routinely,’” Petitioner again fails to allege that jurisdiction
was at issue in the cited case. Paper 16 at 2–3; cf. Evedon v. USAA Cas. Ins.
Co., No. 15-22139-CIV, 2016 WL 4083013, at *2 (S.D. Fla. Jan. 19, 2016)
(“It is widely-accepted that courts lack authority to stay matters over which
they lack subject matter jurisdiction.”) (collecting cases).
Because “the Board lacked jurisdiction to institute the IPR
proceeding[],” see Click-to-Call, 899 F.3d at 1325, and because we are not
persuaded that a stay is appropriate under these circumstances, we vacate
our Institution Decision (Paper 6) and terminate the proceeding.

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III. 	CONCLUSION
In consideration of the foregoing, it is hereby:
ORDERED that the Institution Decision (Paper 6) in IPR2018-00224
is vacated;
FURTHER ORDERED that IPR2018-00224 is terminated.

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PETITIONER:
Edward C. Donovan, P.C.
Eugene Goryunov
KIRKLAND & ELLIS LLP
edward.donovan@kirkland.com
egoryunov@kirkland.com
PATENT OWNER:
Stephen R. Finch
Ross K. Krutsinger
Allison B. Dianis
FINCH & MALONEY PLLC
sfinch@finchmaloney.com
rkrutsinger@finchmaloney.com
adianis@finchmaloney.com