UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`___________
`Case No. IPR2019-00033
`Patent No. 8,902,760
`___________
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`___________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`___________
`Case No. IPR2019-00033
`Patent No. 8,902,760
`___________
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`I.
`
`Introduction
`
`Pursuant to the Board’s e-mail message dated January 23, 2019, Petitioner
`
`Hewlett Packard Enterprise Company (“HPE”) submits this reply to Patent Owner
`
`ChriMar Systems, Inc. (“ChriMar”)’s preliminary response. ChriMar argues that 35
`
`U.S.C. § 315(a)(1) bars HPE’s petition because “the Petitioner filed a civil action
`
`challenging the validity of a claim of the ’760 Patent in 2014.”1 POPR at 1. But that
`
`action was voluntarily dismissed without prejudice under Federal Rule of Civil
`
`Procedure 41(a) before any substantive activity occurred and before HPE filed its
`
`IPR petition in this proceeding. Thus, neither § 315(a)(1) nor the Federal Circuit’s
`
`decisions addressing § 315(b) bar HPE’s petition.
`
`II. Background
`
`On March 5, 2015, Hewlett-Packard Company (“HPCo.”) brought a
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`declaratory judgment action against ChriMar in the Eastern District of Michigan.
`
`Hewlett-Packard Co. v. ChriMar Sys., Case No. 2:15-cv-10814, Dkt. No. 1 (E.D.
`
`Mich.). On July 20, 2015, HPCo. and Aruba Networks, Inc. (“Aruba”) brought a
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`declaratory judgment action against ChriMar in the same District. Hewlett-Packard
`
`1
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`ChriMar’s assertion, that “Petitioner filed a civil action challenging the
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`validity of a claim of the ’760 patent,” is incorrect. HPE has not filed a civil action
`
`challenging the validity of any claim of any of ChriMar’s patents.
`
`1
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`
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`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Co., et al. v. ChriMar Sys., Inc., Case No. 2:15-cv-12569, Dkt. No. 1 (E.D. Mich.).
`
`Each declaratory judgment complaint included a count of invalidity of the ’760
`
`patent’s claims. Before ChriMar filed a response or any substantive action occurred,
`
`the district court administratively closed the cases pending resolution of separate
`
`patent litigation in the Northern District of California. See Case No. 2:15-cv-10814
`
`at Dkt. No. 13; Case No. 2:15-cv-12569 at Dkt. No. 13. The cases never re-opened.
`
`On February 17, 2018, both cases were voluntarily dismissed without prejudice
`
`under Fed. R. Civ. P. 41(a)(1)(A)(i). See Case No. 2:15-cv-10814 at Dkt. No. 15;
`
`Case No. 2:15-cv-12569 at Dkt. No. 15. On October 4, 2018, HPE filed its petition.
`
`III. Section 315(a)(1) does not bar HPE’s petition.
`
`By its plain language, § 315(a)(1) does not bar HPE’s petition because the
`
`prior declaratory judgment actions were voluntarily dismissed without prejudice
`
`under Rule 41(a). See Section III.A, infra. The Click-To-Call and Bennett Regulator
`
`decisions do not apply to § 315(a); they apply only to § 315(b). See Section III.B,
`
`infra.
`
`A.
`
`Section 315(a)(1) does not apply because the declaratory judgment
`actions were voluntarily dismissed under Rule 41(a).
`
`Section 315(a) bars inter partes review where (1) the petitioner or real party
`
`in interest, (2) filed a civil action, (3) challenging the validity of a claim of the patent,
`
`(4) before the date on which the petition for review is filed. 35 U.S.C. § 315(a)(1).
`
`Section 315(a)’s requirements are not satisfied where the action is later
`2
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`voluntarily dismissed without prejudice because federal courts deem a civil action
`
`dismissed without prejudice as “something that de jure never existed.” Holloway v.
`
`U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x 313 (Fed. Cir. 2005); see Beck
`
`v. Caterpillar, Inc., 50 F.3d 405, 407 (7th Cir. 1995) (“[Plaintiff’s] suit was dismissed
`
`voluntarily pursuant to [Rule] 41(a), and is treated as if it had never been filed.”). In
`
`effect, a dismissal without prejudice nullifies the action and returns the parties to the
`
`same legal position as if the civil action was never filed. See, e.g., Graves v. Principi,
`
`294 F.3d 1350, 1356 (Fed. Cir. 2002) (“The dismissal of an action without prejudice
`
`leaves the parties as though the action had never been brought.”); Wright & Miller,
`
`Federal Practice and Procedure § 2367, 559 (3d ed. 2008) (collecting cases by all
`
`nine Circuit Courts addressing issue). As a result, a dismissal without prejudice
`
`preserves a plaintiff’s ability to later sue the same defendant on the same claim. See,
`
`e.g., Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1364 (Fed. Cir. 2000)
`
`(“Dismissal without prejudice indicates that judgment is not on the merits and will
`
`have no preclusive effect.”).
`
`Here, HPCo. and Aruba brought declaratory judgment actions challenging the
`
`validity of the ’760 patent’s claims. But the voluntary dismissals under Rule
`
`41(a)(1)(A)(i), before any substantive activity occurred, nullified the actions’
`
`existence and left the parties as if the actions had never been brought. Therefore, as
`
`a matter of law, no petitioner or real party in interest files a civil action challenging
`
`3
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`the validity of the ’760 patent’s claims, and § 315(a)(1) does not apply here.
`
`Indeed, given a Rule 41(a) dismissal’s legal effect, the Board has consistently
`
`and correctly determined that § 315(a)(1) is not triggered when a declaratory
`
`judgment action is voluntarily dismissed without prejudice before the IPR petition
`
`is filed. See, e.g., Resmed Ltd. v. Fisher & Paykel Healthcare Ltd., IPR2016-01714,
`
`Paper 12 (P.T.A.B. Mar. 10, 2017); Tristar Prods., Inc. v. Choon’s Design, LLC,
`
`IPR2015-01883, Paper 6 (P.T.A.B. Mar. 9, 2016); Emerson Elec. Co. v. Sipco, LLC,
`
`IPR2015-01579, Paper 7 at 2-3 (P.T.A.B. Jan. 14, 2016) (“Federal courts treat a civil
`
`action that is dismissed without prejudice as ‘something that de jure never existed,’
`
`‘leav[ing] the parties as though the action had never been brought” and concluding
`
`a “previously filed DJ action [including a claim of invalidity] does not bar Petitioner
`
`from filing the Petition”). The Board should reach the same conclusion here.
`
`B.
`
`Click-To-Call and Bennett Regulator are inapplicable.
`
`The Federal Circuit’s decisions in Click-To-Call Techs., LP v. Ingenio, Inc.,
`
`899 F.3d 1321 (Fed. Cir. 2018), and Bennett Regulator Guards, Inc. v. Atlanta Gas
`
`Light Co., 905 F.3d 1311 (Fed. Cir. 2018), do not alter the analysis or warrant
`
`departing from this Board’s consistent approach to the issue.
`
`As ChriMar recognizes, the Federal Circuit in Click-To-Call addressed the
`
`meaning of “served with a complaint” in § 315(b); it did not address any aspect of
`
`§ 315(a) at issue here. See POPR at 2. More specifically, the Federal Circuit
`
`4
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`confirmed that “[t]he ordinary, contemporary, common meaning” of the phrase
`
`“served with a complaint” in § 315(b) is “‘presented with a complaint’ or ‘delivered
`
`a complaint’ in a manner prescribed by law.” 899 F.3d at 1330. Because the act of
`
`serving the complaint triggers § 315(b), the Federal Circuit explained that “it is
`
`wholly irrelevant…whether the civil action in which the complaint was filed is later
`
`voluntarily dismissed without prejudice.” Id. Thus, “§ 315(b)’s time bar is
`
`implicated once a party receives notice through official delivery of a complaint in a
`
`civil action, irrespective of subsequent events.” Id.
`
`The Federal Circuit in Bennett Regulator likewise limited its analysis to
`
`§ 315(b), and the facts differed from Click-To-Call “only in that Bennett’s complaint
`
`was involuntarily dismissed without prejudice.” 905 F.3d at 1315 (emphasis in
`
`original). The Federal Circuit could “identify no reason to distinguish Click-To-Call
`
`on that basis” because “[t]he statutory language clearly ex-presses that service of a
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`complaint starts § 315(b)’s clock.” Id. (emphasis in original). Just as voluntary
`
`dismissal could not undo the “service of a complaint” in Click-To-Call, involuntary
`
`dismissal could not either. See id.
`
`In contrast to Click-To-Call and Bennett Regulator, this case involves
`
`§ 315(a)(1) and a voluntary dismissal under Rule 41(a). This distinction is crucial.
`
`Section 315(a)(1) is predicated on “fil[ing] a civil action challenging the validity of
`
`a claim of the patent,” which materially differs from the operative phrase “served
`
`5
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`with a complaint” in § 315(b). In particular, although neither a voluntary nor
`
`involuntary dismissal could undo the “service of a complaint,” a voluntary dismissal
`
`under Rule 41(a) nullifies the “filing of a civil action” as a matter of law.
`
`For this same reason, ChriMar’s reliance on the Federal Circuit’s “criticism”
`
`of Graves and Bonneville in Click-To-Call is misplaced. POPR at 5. In Click-to-Call,
`
`the Federal Circuit recognized that Graves and Bonneville were “inapplicable to the
`
`issue presented on appeal,” namely the effect of serving a complaint on § 315(b)’s
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`time bar. 899 F.3d at 1335. The Federal Circuit’s “criticism” of the Board’s reliance
`
`on Graves and Bonneville addressed the application of these decisions to service,
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`rather than filing, of a complaint. Id. (“Yet the Board, without explanation, extended
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`the background principle of Graves and Bonneville to conclude that such a dismissal
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`‘nullifies the effect of the service of the complaint.’”). The Federal Circuit did not
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`criticize the undisputed effect of Rule 41(a) as discussed in Bonneville and Graves
`
`and as is applicable here.
`
`IV. Conclusion
`
`The Board should reject ChriMar’s argument and institute an IPR based on
`
`the grounds in HPE’s petition.
`
`6
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Dated: January 30, 2019
`Respectfully Submitted,
`
`/Hersh H. Mehta/
`Hersh H. Mehta
`Reg. No. 62,336
`
`MORGAN, LEWIS & BOCKIUS LLP
`77 West Wacker Drive
`Chicago, IL 60601
`Telephone: 312.324.1000
`Facsimile: 312.324.1001
`
`7
`
`
`
`IPR2019-00033
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`CERTIFICATE OF SERVICE
`
`I certify this document was filed via E2E and served on all Patent Owner’s
`
`counsel of record via electronic mail as follows:
`
`LEAD COUNSEL
`Frank A. Angileri (Reg. No. 36,733)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`fangileri@brookskushman.com
`CHRMC0123IPR1@brookskushman.com
`
`BACK-UP COUNSEL
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No.
`59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`tlewry@brookskushman.com
`mlorelli@brookskushman.com
`csmith@brookskushman.com
`
`Dated: January 30, 2019
`
`/Hersh H. Mehta/
`Hersh H. Mehta
`
`
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