An IPR proceeding or PGR proceeding may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner’s real party in interest, or the privy of the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b) (IPR proceedings) or 35 U.S.C. 325(b) (PGR proceedings). The one-year time bar does not apply to a request for joinder under 35 U.S.C. § 315(c) (IPR proceedings) or 35 U.S.C. § 325(c) (PGR proceedings), or to CBM proceedings.
Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB Jan. 24, 2013). The Board held that a complaint for infringement that is dismissed without prejudice does not amount to service of “a complaint alleging infringement of the patent” under 35 U.S.C. § 315(b). The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Therefore, the dismissal of an action without prejudice nullifies the effect of service of the complaint.
Motorola Mobility v. Arnouse, IPR2013-00010, Paper 20 (PTAB Jan. 30, 2013). 35 U.S.C. § 315(b) prevents institution of review if the petition is filed more than one 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 Board held that the term “served” in § 315(b) requires that the petitioner be served “with a summons” and named “officially a defendant in a law suit.”
Universal Remote Control Inc. v. Universal Elecs. Inc., IPR2013-00168, Paper No. 9 (Aug. 26, 2013). Petitioner was first served with a complaint for infringement of the challenged patent in 2001. The first complaint was dismissed with prejudice in 2002. Petitioner was served with a second complaint in 2012. The Board denied the petition as being time-barred under § 315(b) on the basis of the first complaint. The Board held that the one-year window of § 315(b) does not restart for a petitioner upon service of a subsequent complaint if the earlier complaint is dismissed with prejudice. Dismissing a claim with prejudice does not leave the parties as though the action had never been filed.
St. Jude Med., Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 29 (PTAB Oct. 16, 2013). The Board held that a counterclaim for infringement in a federal district court is “a complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b).
Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (PTAB Oct. 30, 2013) (precedential). The Board held that a complaint for infringement that was voluntarily dismissed without prejudice is not a “complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b), because the dismissal of an action without prejudice leaves the parties as though the action had never been brought. The dismissal of the complaint nullified the effect of service of the complaint, and as a consequence, petitioner was not time-barred.
Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (PTAB Jan. 31, 2014). The Board held that an allegation of infringement in an arbitration proceeding does not trigger the one-year time period of 35 U.S.C. § 315(b). Within the context of § 315(b), the phrase “served with a complaint alleging infringement of the patent” means a complaint in a civil action for patent infringement brought under 35 U.S.C. § 271 or § 281, not an arbitration proceeding. 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.
The Brinkman Corp. v. A&J Manufacturing, LLC, IPR2015-00056, Paper 10 (PTAB Mar. 23, 2015). The Board held that the one-year time bar of 35 U.S.C. § 315(b) does not begin to run when the patent owner mails a complaint. The one-year period began when the petitioner waived service of the complaint. Service of an ITC complaint does not trigger the time bar provisions of § 315(b).
Johnson Health Tech. Co. v. Icon Health & Fitness, Inc., IPR2014-01242, Paper 16 (PTAB Feb. 11, 2015). The Board indicated that the one-year statutory bar of § 315(b) “helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not sued as a tool for harassment or litigation gamesmanship” (citing H.R. Rep. No. 01242, as reprinted in 2011 U.S.C.C.A.N. at 78).
LG Electronics, Inc. v. Straight Path IP Group, Inc., IPR2015-00196, Paper 20 (PTAB May 15, 2015). The Board held that the time bar of 35 U.S.C. § 315(b) only applies to service of a complaint in a civil action brought in federal district court, and not to administrative proceedings such as an ITC investigation.
LG Electronics, Inc. v. Mondis Technology Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015) (precedential). Petitioner was served with a first complaint in 2008 and a second complaint in 2014 relating to the challenged patent. The 2008 complaint was dismissed with both prejudice and without prejudice. The Board rejected petitioner’s argument that the time bar of 35 U.S.C. § 315(b) should be measured from the second complaint. The Board held that since the 2008 complaint was dismissed with both prejudice and without prejudice, the dismissal of the earlier complaint did not leave both parties as though the action had never been brought.
ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 12 (PTAB Oct. 12, 2015). The Board held that a petition filed more than one year after service of a complaint is time-barred under § 315(b) if the motion for joinder filed with the petition is denied. The mere accompaniment of a request for joinder with a petition does not nullify the § 315(b) time bar.
Micron Tech. Inc. v. Mass. Institute of Tech., IPR2015-01087, Paper 12 (PTAB Nov. 5, 2015). The Board held that a complaint served to initiate a proceeding in a foreign country is not a “complaint alleging infringement of the patent” within the meaning of section 35 U.S.C. § 315(b). Therefore, foreign proceedings do not trigger the time bar of 35 U.S.C. § 315(b).
Arris Group, Inc. v. TQ Delta, LLC, IPR2016-00429, Paper 9 (PTAB June 30, 2016). The Board rejected patent owner’s argument that the petition was time-barred because petitioner and a soon-to-be-acquired third party were in privity on the filing date of the petition. The petition was filed two days before the merger between petitioner and the third party. The Board indicated that patent owner failed to demonstrate that petitioner had control over the third party’s lawsuit at the time of filing the petition, or that the third party had controlled, or had an opportunity to control, the IPR proceeding.