The PTAB Rules That Time Bar of Section 315(B) Applies Even To Complaints Served Prior To Enactment of AIA

By Reza Mollaaghababa

Recently, in Apple. Inc. v. Virnetx, Inc. and Science Application International Corp. (IPR2013-00348), the PTAB found another opportunity to interpret 35 U.S.C. §315(b), a statue of limitations on instituting inter partes review (IPR) proceedings.  Section 315(b) bars the institution of an IPR: 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 the infringement of the patent.

In this case, the petitioner (Apple) was served with a complaint alleging the infringement of U.S. Patent No. 6,502,135 in 2010 as well as in 2012.  The 2010 complaint was served more than one year from the date at which the IPR request was filed while the 2012 complaint was served less than one year from that date.  In its Decision on Institution, The PTAB ruled that the petitioner’s request to institute a trial was time barred because the 2010 complaint was served more than one year before the petitioner filed its request.

In a Request for Rehearing, the petitioner argued that its petition was timely because Section 315(b) should be read as allowing the institution of an IPR if it were filed less than one year after the date on which “any complaint” was served.  In other words, the petitioner had argued that “[t]he August 2010 complaint does not foreclose the present petition, “as the Patent Owner served a new complaint on Petitioner asserting infringement of the ‘135 patent in December of 2012.”  In its Decision on Institution, the Board had rejected this argument and had held that “under the plain meaning of  ‘a complaint’ under 315(b), the 2010 complaint qualifies as ‘a complaint’ that time bars the Petition.”  Continue reading “The PTAB Rules That Time Bar of Section 315(B) Applies Even To Complaints Served Prior To Enactment of AIA”

The PTAB’s Denial of Patent Owner’s Motion to Amend Underscores the Obstacles that Patent Owners Face In Amending Challenged Claims

By Reza Mollaaghababa

As we had reported earlier, a patent owner has a heavy burden in amending claims in an inter partes review (IPR) proceeding.  The recent case of Nichia Corp. v. Emcore Corp. (IPR2012-00005) provides an example of obstacles that a patent owner may face when attempting to amend the challenged claims.  In this case, the patent owner (Emcore) filed a motion with the PTAB to request leave to cancel certain challenged claims and replace them with new claims.  The PTAB denied Emcore’s motion to amend. Continue reading “The PTAB’s Denial of Patent Owner’s Motion to Amend Underscores the Obstacles that Patent Owners Face In Amending Challenged Claims”

A Declaratory Judgment Action that was Dismissed Without Prejudice Does not Bar the Institution of an IPR

By Reza Mollaaghababa

A petition for inter partes review (IPR) will not be granted “if, before the date on which the petition for such a review is filed, the petitioner or the real party in interest filed a civil action challenging the validity of a claim of the patent.”  35 U.S.C. 315(a)(1).  Recently, in Clio USA v. The Proctor and Gamble Company (IPR2013-00438), the PTAB held that a declaratory judgment action filed by Clio (petitioner) against the challenged patent prior to the request for the inter partes review, which had been subsequently dismissed without prejudice, did not bar the institution of the inter partes review. Continue reading “A Declaratory Judgment Action that was Dismissed Without Prejudice Does not Bar the Institution of an IPR”