Civil Action Dismissed Without Prejudice Does Not Trigger § 315(a)(1) IPR Bar

The Board denied the patent owner's motion to reconsider an earlier decision instituting inter partes review and rejected the argument that the petition was untimely under § 315(a)(1). "[The patent owner] contends . . . that the cases cited in the Decision to guide our interpretation of the term 'filed' do not construe that term and are not relevant to § 315(a)(1). We disagree. The cited cases are instructive to show that federal courts, including the Federal Circuit, treat dismissals without prejudice as if the actions were never filed. We interpreted the use of the term 'filed' in § 315(a) against the backdrop of this well-settled law. [The patent owner] has not shown an abuse of discretion in the Decision in this regard. . . . Accordingly, it is ordered that [the patent owner's] Request for Rehearing of the Decision to institute inter partes review is denied."

Petition for Inter Partes Review by CLIO USA, Inc., IPR2013-00438 (PTAB February 4, 2014, Order) (Kamholz, APJ)