September 4, 2018

Federal Circuit Vacates Another IPR as Time-Barred

By Bryan K. Wheelock, Principal

In Luminara Worldwide, LLC v. Iancu, [2017-1629, 2017-1631, 2017-1633] (August 16, 2018), the Federal Circuit affirmed the PTAB’s invalidation of claims of two of Luminara’s patents. In regard to a third patent, the Federal Circuit vacated the Final Written Decision, remanded for dismissal of that IPR, and held that the section §315(b) time-bar applied.

In instituting the IPR, the Board rejected the argument was untimely under §315(b) because the first action had been voluntarily dismissed without prejudice. Because the section 315(b) time-bar applies when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice, the Federal Circuit said the Board erred in instituting the IPR challenging the ’319 patent, vacating the Board’s final written decision as to the ’319 IPR and remand for dismissal of that IPR.

As to the obviousness in the other two IPRs, the Federal Circuit found that these were supported by substantial evidence.