PTAB Designates Decision as Informative on 315(b) Question
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.
Last summer, the PTAB considered 315(b) in relation to an amended complaint. That is, in cases where a party is added by amended complaint, when does the service become effective for purposes of 315(b), when the added party receives a copy of the proposed complaint, or when the proposed complaint is entered by the court? (via motion for leave to file) This question was answered in TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00293 (Paper 18) (June 27, 2014) (here)
In explaining that the proposed complaint was ineffective for triggering the start of the 12 month window of 315(b) the Board emphasized:
“We do not believe that the Congress intended to have the [one-year] time period start before a petitioner is officially a defendant in a law suit.” Motorola Mobility LLC v. Arnouse, Case IPR2013-00010, slip op. at 5 (PTAB Jan. 30, 2013) (Paper 20). Moreover, as stated by the Supreme Court as “a bedrock principle,” an “entity named as a defendant is not obliged to engage in litigation unless notified of the action, and brought under a court’s authority, by formal process.” Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347 (1999). Here, by virtue of the filing of the Motion for Leave on December 20, 2012, Petitioner was not “brought under a court’s authority, by formal process,” i.e., was not officially a defendant, in relation to the ‘689 and ‘552 patents. Id. Patent Owner’s request for the court’s leave did not obligate Petitioner to engage in litigation in relation to those two patents until granted by the court. . . . . .The attachment to the Motion for Leave was merely a proposed complaint, not an actual “complaint” within the meaning of § 315(b)
The time lapse between the filing of the motion filing and entry of the amended complaint in this case was about five days. As this timeline arises from time to time in petition disputes, the PTAB designated TRW informative yesterday.