A Ticking Clock – The PTAB Continues to Define What Constitutes a Complaint Alleging Patent Infringement

By Ben Snitkoff

The Patent Trial and Appeals Board has released another decision interpreting 35 U.S.C. 315(b), regarding the time bar for filing a petitions for inter partes review (IPR). Specifically, the PTAB has again been asked to interpret what the phrase “served with a complaint alleging infringement of the patent” means. This rather straightforward language has resulted in two recent opinions which help define what actions begin the clock on the 1-year deadline to file an IPR.

As we discussed in January, the time limit for filing an IPR applies to counterclaims alleging patent infringement, as well as complaints alleging infringement, as defined in the statute. In a more recent case, Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, the PTAB determined that an allegation of infringement in a Federal arbitration proceeding does not trigger the one-year time bar under Section 315(b).

In 1996, Tessera and Amkor entered into a fifteen-year license agreement that required certain disputes to be resolved by arbitration. In 2009, a dispute arose and Amkor initiated arbitration proceedings, which Tessera countered with allegations of infringement. After winning before the arbitral tribunal, Tessera filed a complaint for patent infringement on July 6, 2012. Amkor filed its Petition for an IPR on April 9, 2013. Tessera argued that its arbitration counterclaim, which alleged that Amkor was infringing multiple patents, triggered the one-year bar.

While the PTAB could, conceivably, have determined this issue on other grounds, including that the arbitration, while alleging infringement, was grounded in breach of contract, the PTAB addressed the issue of whether an arbitration is “a complaint alleging infringement of a patent.”

The PTAB relied on Black’s Law Dictionary, and a lengthy analysis of the AIA and Legislative History to support its ruling that an arbitration is not considered a “complaint alleging infringement of a patent” under the act. In particular, it concentrated on the words “complaint” and “served” in the statute to limit the language to a civil action alleging infringement under 35 U.S.C. § 271 or 281.

The PTAB has, thus far, released several detailed opinions outlining the limits of its jurisdiction, and it is fair to assume that we have not seen the last of parties challenging the boundaries of the PTAB’s jurisdiction to hear an IPR.

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