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Intellectual Property Litigation Committee

Is That a Complaint? The Grey Area of 35 U.S.C. § 315(b)

By Herbert D. Hart III, Malaika D. Tyson, and Robert F. Kappers – August 4, 2014


With the creation of inter partesreview under the America Invents Act (AIA), Congress enacted a statutory bar, 35 U.S.C. § 315(b), limiting the time within which a petition for inter partesreview (IPR) may be filed.

35 U.S.C. § 315(b) states that:

[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

The plain language of the statute seems to suggest that Congress made it clear for a potential petitioner that the one-year clock starts running as soon as it is served with a complaint. However, what if the petitioner was the recipient of counterclaims? Or what if the complaint was voluntarily dismissed, service was improper, claims were amended, or the petitioner received multiple complaints?

Over the past year, the Patent Trial and Appeal Board (PTAB) has tackled this and other issues when determining whether to institute an inter partesreview. This article will highlight the notable decisions and will provide guidance on avoiding the statutory bar of 35 U.S.C. § 315(b).

Takeaway 1. The filing of a second complaint does not reset the time for filing a petition for inter partes review. Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (P.T.A.B. Oct. 1, 2013).

The Board denied Accord’s petition because it was filed more than one year after the filing date of the complaint in the first of two Abbreviated New Drug Application (ANDA) lawsuits between the parties. Accord had argued that its petition was timely because it was filed within one year of the filing of the complaint in the second of the two lawsuits. The Board held that the filing of the second complaint did not reset the time for filing a petition for inter partes review stating that “[t]he plain language of the statute does not indicate or suggest that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a nullity.”

Takeaway 2. A counterclaim alleging infringement is within the meaning of “a complaint alleging infringement” under 35 U.S.C. § 315(b). St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (P.T.A.B. Oct. 16, 2013).

Before the filing of the petition for IPR, U.S. Patent No. 7,134,994 was involved in litigation, St. Jude Med., Cardiology Div., Inc., et al. v. Volcano Corp., No. 1:10-cv-00631 (D. Del.), in which Volcano filed a counterclaim asserting infringement of the ’994 patent against St. Jude. The PTAB held that Volcano’s counterclaim is within the meaning of “a complaint alleging infringement of the patent.”

As support for its broad interpretation, the PTAB relied on the legislative history of § 315(b). The PTAB determined that the legislative history of § 315(b) indicated Congress’ intent to provide a quick and cost-effective alternative to litigation, and that:

[n]othing in the legislative history indicates that Congress intended to apply the § 315(b) time limit to some, rather than all, accused infringers. Construing “complaint” in § 315(b) restrictively, i.e., to exclude counterclaims for infringement, would have just that effect. According to the Board, such an interpretation would leave a patent open to serial attack, even after years of patent infringement litigation, whenever the accusation of infringement is only via a counterclaim.

Takeaway 3. Reexamination certificates have no effect on the 35 U.S.C. § 315(b) bar. BioDelivery Scis. Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 33 (P.T.A.B. Nov. 13, 2013).

BioDelivery Sciences International, Inc. filed its petition for inter partes review more than one year after MonoSol Rx, LLC’s served BioDelivery with a complaint asserting infringement of U.S. Patent No. 7,425,292 (MonoSol Rx, LLC v. BioDelivery Sci. Int’l, Inc. et al., 10-cv-05695 (D.N.J)), but less than one year after an ex parte reexamination proceeding terminated upon issuance of a reexamination certificate that confirmed or amended each of the original claims.

The Board found that § 315(b) barred BioDelivery’s petition even though the petition challenged claims amended by a reexamination certificate that had been issued after service of the complaint. The Board emphasized that reexamination does not result in a new patent; instead, “[a] reexamination certificate merely ‘incorporate[es] in the patent any proposed amended or new claim determined to be patentable.’ 35 U.S.C. § 307(a) (emphasis added). The reexamination certificate itself states: ‘The patent is hereby amended as indicated below.’” In the Board’s view, the reference in § 315(b), to “the date on which the petitioner . . . is served with a complaint alleging infringement of the patent, indicates that the timeliness analysis is to be made with reference to ‘the patent.’”

Takeaway 4. 35 U.S.C. § 315(b) does not apply only to concurrent litigation. Apple Inc. v. Virnetx, Inc. et. al., IPR2013-00348, Paper No. 14 (P.T.A.B. Dec. 13, 2013).

The Board denied Apple’s petition because it was filed more than one year after Apple received its first complaint of infringement related to U.S. Patent No. 6,502,135. Apple argued that the first complaint did not trigger the limitations period, because it received a new complaint two years after the first. Apple further argued that “a complaint” in the statute means “any complaint,” and therefore “a petition filed within 1 year of the date any complaint alleging infringement of the patent is served on a petitioner is timely under the plain statutory language of § 315(b).” The Board rejected this argument, holding that the passage of more than one year from service of first complaint barred the petition.

Apple further argued that “[t]he statutory design of the IPR authority envisions that IPR proceedings will be conducted concurrently with district court litigation involving the same patent.” The Board also rejected this argument, observing that, “even if Congress intended to reduce issues in district courts, this does not overcome the plain meaning involved in Congress’s carefully balanced statutory scheme that applies the time bar to ‘a complaint.’” The Board further stated that since Congress expressly created the joinder exception it “did not intend to create another implied exception to the time bar for concurrent district court litigation.”

Takeaway 5. Arbitration Does Not Trigger § 315(b). Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper No. 98 (P.T.A.B. Jan. 31, 2014).

Amkor Technology, Inc. and Tessera, Inc. entered into a licensing agreement with respect to U.S. Patent No. 6,046,076 (the ’076 patent). The license agreement included an arbitration clause that would be triggered if there was a nonpayment of royalties. In 2009, a dispute arose between the parties over the payment of royalties and Amkor initiated an arbitration proceeding against Tessera. Tessera responded to Amkor’s arbitration request with an answer and counterclaims alleging infringement of the ’076 patent.

Amkor then filed a petition for inter partes review of the Tessera patent, and a trial was instituted. Tessera moved to terminate, arguing that the counterclaim in the arbitration triggered the one-year statutory bar.

The PTAB denied Tessera's motion to terminate the IPR and held that a “complaint alleging infringement” does not include allegations of patent infringement other than those in a civil action. Looking at the plain language of the statute, the PTAB noted that § 315(b) “omits any reference to arbitral or administrative proceedings, even though such proceedings are contemplated elsewhere in the statute. In construing the meaning of a statute, it is just as important to consider what the statute does not say as it is to consider what it does say.” In reaching its decision, the PTAB stated:

We do not adopt Tessera’s interpretation that an allegation of infringement in an arbitration proceeding triggers the one-year time period of section 315(b). Within the context of section 315(b), the phrase “served with a complaint alleging infringement of the patent” means a complaint in a civil action for patent infringement. What matters is that the complaint pleads a cause of action for patent infringement and is served lawfully on the accused infringer in a civil action. Once that happens, the accused infringer is subject to the time limit set forth in section 315(b) to petition for inter partes review.

Takeaway 6. A voluntarily dismissed complaint does not trigger § 315(b). Macauto U.S.A. v. BOS Gmbh & KG, IPR2012-00004, Paper No. 18 (P.T.A.B. Jan. 24, 2013).

BOS Gmbh & KG filed suit against Macauto Industrial Co., Ltd. (Macauto Taiwan) alleging infringement of U.S. Patent No. 6,422,291 (the ’291 patent). Macauto Taiwan moved to dismiss the case for lack of personal jurisdiction and the action was voluntarily dismissed without prejudice. BOS later filed suit against Macauto Taiwan's U.S. subsidiary, Macauto USA, alleging infringement of the ’291 patent. Macauto USA then filed a petition for inter partes review. This petition was filed more than one year after the Macauto Taiwan complaint, but less than one year after the Macauto USA complaint. BOS argued that the petition was barred because it was filed more than one year after the first complaint. The PTAB disagreed, holding that a voluntarily dismissed complaint does not trigger § 315(b).

The Board concluded that Federal Circuit law “consistently interpreted the effect of [voluntary dismissals without prejudice] as leaving the parties as though the action had never been brought.” Since the Macauto Taiwan action had been dismissed, its filing did not trigger the running of the one-year statutory bar.

Takeaway 7. Without an established service date, § 315(b) cannot be triggered. Macauto U.S.A. v. BOS Gmbh & KG, IPR2012-00004, Paper No. 18 (P.T.A.B. Jan. 24, 2013).

When BOS filed suit against Macauto Taiwan (See Takeaway 6), it claimed that the complaint was delivered to Macauto Taiwan and that Macauto Taiwan signed and returned a waiver of service under Federal Rule of Civil Procedure 4(d). The waiver was, however, not filed with the district court. The PTAB held that service was improper and therefore could not establish a service date that would trigger the one-year statutory bar.

Keywords: litigation, intellectual property, inter partes review, § 315(b), statutory bar, statute of limitations, PTAB

Herbert D. Hart III is a shareholder, and Malaika D. Tyson and Robert F. Kappers are associates, at McAndrews Held & Malloy, Ltd., in Chicago, Illinois.

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