Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that patent. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.
315(b) went into effect on September 16, 2012. As written, the statute was understood to be retroactive, and immediately foreclosed IPR as an option for many late stage litigants. For this reason, there was an unprecedented surge of inter partes patent reexamination filings in the weeks leading up to September 16, 2012. Still, there were some open questions as to the flexibility of the 12 month window. How would repeated assertions of the same patent be treated by the PTAB, did the window reset? What about patents that had been reexamined and included new claims?
Over the first year of IPR, the PTAB has answered many of these questions looking at the plain language of 315(b), which is reproduced below.
An 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 first question as to the impact on repeated law suits was explored early on in MacAuto USA v. BOS gmbH & Co. KG (IPR2012-00004). In MacAuto, the PTAB made clear that an earlier complaint that was dismissed without prejudice, was treated consistent with the F.R.C.P, that is, as if it never existed. So, in the case of such a dismissal, the window would effectively reset.
A similar issue was raised in Universal Remote Control Inc. v. Universal Electronics Inc. (IPR2013-00168). In Universal, there was no dismissal without prejudice. The PTAB explained:
Petitioner submits “[t]here is nothing in the text of section 315(b) that addresses the subject of multiple lawsuits involving the same patent or that requires that the one-year grace period be applied to the filing of the first of such multiple lawsuits.” Pet. 7. We agree that the plain language of the statute does not address the subject of multiple lawsuits involving the same patent. We disagree, however, that the one-year grace period applies only to the last of a chain of multiple lawsuits or that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit to be a nullity as Petitioner argues. The plain language of the statute does not include such a restriction.
This holding was reiterated more recently in Accord Healthcare Inc. USA v. Eli Lilly & Company (IPR2013-00356)
A week back, a petitioner (IPR2014-00008) has challenged the retroactive nature of 315(b) as it applies to complaints served prior to enactment of the statute. Specifically, the petitioner argues that the language of 315(b) “is served” is an expression of prospective application only (i.e., complaints served after September 16, 2012). The argument analogizes the situation to the interpretation of the ex post facto reach of criminal statutes, citing a 2010 decision relating to sex offender registration statutes. Given that criminal statutes are interpreted to favor defendants, and to avoid ex post facto application, I would not expect this argument to be given serious consideration by the PTAB.
Finally, the statute recites the language “the patent.” At least one IPR is exploring the impact of a later suit that asserts claims that did not exist in the first complaint; that is, claims added by reexamination certificate. While the PTAB has yet to decide this issue, it is expected that the difference between patent reissue and reexamination will be noted in the same way as done by the CAFC in Aspex Eyewear. In other words, claims added in reexamination do not create a new patent.
In short, unless a first complaint was dismissed without prejudice, the petitioner clock doesn’t restart under 35 U.S.C. § 315(b).