CAFC creates an "en banc footnote" in Click-to-Call; 315(b) time bar applies even if infringement action dismissed without prejudice

The need for en banc consideration appears in the dissent (Dyk, Lourie):


En banc consideration was
occasioned by the fact that two different panels reached
opposite conclusions on this issue in this case and in
Luminara Worldwide, LLC, v. Matal, No. 17-1629 (Fed.
Cir. filed Feb. 13, 2018). The en banc court now agrees
with the Click-to-Call panel and holds that section 315(b)
applies, even when the earlier complaint was dismissed
without prejudice.


Footnote 3, but not the rest of the opinion, is en banc. Footnote 3 recites:


The en banc court formed of PROST, Chief Judge,
NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA,
WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit
Judges, considered whether 35 U.S.C. § 315(b)’s time bar
applies to bar institution when an IPR petitioner was
served with a complaint for patent infringement more
than one year before filing its petition, but the district
court action in which the petitioner was so served was
voluntarily dismissed without prejudice. The en banc
court holds that § 315(b)’s time bar applies in such a
scenario



The beginning of the case notes:


This long-marooned case returns to us after a voyage
alongside two others interpreting the scope of 35 U.S.C.
§ 314(d)’s “No Appeal” provision and its applicability to
time-bar determinations under 35 U.S.C. § 315(b): Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
and Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364
(Fed. Cir. 2018) (en banc). Because we have held en banc
“that the time-bar determinations under § 315(b) are
appealable,” Wi-Fi One, 878 F.3d at 1367, we address for
the first time the merits of Appellant Click-to-Call Technologies,
LP’s (“CTC”) contention that the Patent Trial
and Appeal Board (“Board”) erred in determining that an
inter partes review (“IPR”) petition challenging claims of
CTC’s patent was not time-barred under § 315(b).

We conclude that the Board committed legal error in
rendering its § 315(b) determination, and reject the
proposed, alternative grounds for affirmance. Because
the subject petition was time-barred, the Board lacked
jurisdiction to institute the IPR proceedings. Accordingly,
we vacate the Board’s Final Written Decision in Oracle
Corp. v. Click-to-Call Technologies LP, No. IPR2013-
00312 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Written
Decision), and remand with instructions to dismiss
IPR2013-00312.



The dissent noted:


Other circuits have likewise treated dismissals without
prejudice as restoring the parties to the exact situation
as if the original complaint had never been filed. See,
e.g., Norman v. Ark. Dep’t of Educ., 79 F.3d 748, 751 (8th
Cir. 1996) (“[T]he ‘effect of a voluntary dismissal without
prejudice is to render the proceedings a nullity and leave
the parties as if the action had never been brought.’”
(quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig.,
551 F.2d 213, 219 (8th Cir. 1997))).

(...)

We ruled in Abbott Laboratories v. TorPharm, Inc.,
503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume
Congress’s familiarity with general principles of law when
enacting a statute.” In other words, “Congress is presumed
to legislate against the backdrop of existing law.”
Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003);
accord Cannon v. Univ. of Chi., 441 U.S. 677, 698–99
(1979). This widespread treatment of voluntary dismissals
without prejudice provided the background for the
enactment of section 315(b), and section 315(b) must be
read in light of that background legal principle, so that
the one year time-bar is not triggered if the underlying
infringement action is voluntarily dismissed without
prejudice.



**Note also the Luminara decision of 16 Aug 18:



Luminara Worldwide, LLC, (“Luminara”) appeals
from three inter partes review (“IPR”) decisions, in which
the Patent Trial and Appeal Board (“the Board”) held
unpatentable a total of 31 claims across Luminara’s three
patents. On appeal, Luminara challenges the Board’s
decisions as to one claim from each patent and asserts
that the Board’s application of the 35 U.S.C. § 315(b)
time-bar was improper as to the ’319 patent. We vacate
the decision as to the ’319 patent and remand for dismissal
of that IPR, holding that the section 315(b) time-bar
applies, and affirm the other IPRs.