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.” 

In the Rehearing Request, the petitioner also expanded its petition argument to assert that legislative history supports interpreting the time bar of Section 315(b) as being applicable only to concurrent district court litigation (i.e., the 2012 litigation in this case) because “an IPR, once completed, will reduce the number of issues the district court must ultimately resolve.”

The Board was not, however, persuaded and ruled once again in its Decision on Rehearing that the petition was time barred.  The PTAB reasoned that “[C]ontrary to Petitioner’s new argument, even if Congress intended to reduce issues in district courts, this does not overcome the plain meaning involved in Congress’s carefully balanced statutory scheme that applies the time bar to ‘a complaint.’”  The PTAB further explained that “[A]lthough Congress intended to create a cost-efficient alternative to district court litigation, it does not follow that the time bar only applies to concurrent litigation.”

The petitioner further argued that under the Board’s reading of Section 315(b), the petitioner would have had to file a petition before the IPR law was enacted.  Hence, the Board’s application of Section 315(b) is illogical because Congress did not intend to bar a whole class of patents that had been asserted against a petitioner prior to the enactment of the AIA. The Board rejected the petitioner’s argument and stated that “… the Board applies the time bar evenly to “a complaint,” according to the statute, in concurrent and terminated litigation, whether filed pre- or post-AIA.”

The petitioner had further argued that the Board can resolve any ambiguity in the interpretation of Section 315(b) by “simply reading §315(b) as applying only to actions commenced after the date the IPR authority was enacted.”  The Board pointed out that Chapter 3 of AIA, which includes 35 U.S.C. 315, “applies to any patent issued before, on, or after Sept. 16, 2012.”  The PTAB concluded that “[C]reating a new effective date also runs contrary to the plain meaning of 315(b), which applies the time bar in an even fashion to “a complaint” served in past and concurrent litigation, served pre-AIA or post-AIA.”

As the Board continues to delineate the contours of the time bar imposed by Section 315 (b), petitioners should pay close attention to the way that the Board has so far applied this provision to ensure that their petitions would not be time barred.

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

  1. Tom Engellenner says:

    It’s somewhat ironic that Apple couldn’t have complied with the provisions of section 315(b) by filing its petition earlier. The one year window to file ran out before the the AIA was even enacted and provided for post grant review proceedings.

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