Micron Tech. Inc. v. Mass. Institute of Tech., et al.

Clarifying the meaning of “complaint” for purposes of the 35 U.S.C. § 315(b) one-year time bar for instituting an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) concluded that a proceeding in a foreign country does not trigger the § 315(b) bar.Micron Tech. Inc. v. Mass. Institute of Tech., et al., IPR2015-01087 (PTAB, Nov. 5, 2015) (Galligan, APJ).

The petitioner, Micron, requested IPR of an MIT patent relating to using a laser in cutting parts of a circuit. Under §315(b), an IPR “may not be instituted if the petition requesting the proceedings 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 infringement of the patent.” MIT argued that Micron’s request should be rejected as time-barred because Micron was served with a complaint more than one year before the petition was filed. Specifically, Micron was served with a “Petition for Corporate Reorganization Claim Assessment,” filed in Tokyo District Court on December 22, 2012. MIT contended that this is a “complaint” within the meaning of § 315(b).

MIT argued that the Petition for Corporate Reorganization Claim Assessment is “materially indistinguishable from ordinary infringement litigation” in the United States because it follows comparable procedures and imposes comparable consequences. MIT noted that the petitioner itself asserted that a U.S. litigation over the same patent was “redundant” with the Japanese proceedings. MIT also cited three prior PTAB decisions for the proposition that the term “complaint” in § 315(b) is not limited to formal complaints in federal court, as well as a policy argument that its interpretation of § 315(b) prevented petitioners from using the IPR as a tool for harassment and duplicative litigation.

The Board was not persuaded. According to the Board, none of the decisions cited by MIT determined that a proceeding in a foreign country triggered a bar under § 315(b). Moreover, the record did not contain any authority that a Japanese bankruptcy court can render a decision that is legally binding in the United States concerning the validity of a U.S. patent. For these reasons, the Board concluded that Micron’s petition was not time-barred under § 315(b).