TRW Automotive US LLC v. Magna Elecs., Inc.
In a ruling recently designated as informative, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB or Board) rejected a patent owner’s argument that the petitions were time-barred, finding the petitioner was served with a complaint for purposes of 35 U.S.C. § 315(b) when the court granted the patent owner’s motion for leave and filed the amended complaint, rather than the date the motion for leave was filed with the amended complaint attached as an exhibit. TRW Automotive US LLC v. Magna Elecs., Inc., Case Nos. IPR2014-00293; -00294; -00296; -00297 and -00298 (PTAB, June 27, 2014) (Bunting, APJ).
On December 24, 2013, petitioner TRW filed two petitions for inter partes review (IPR) challenging Magna’s patent relating to an improved electronic rearview mirror system. Magna contended that these petitions were time-barred under § 315(b), which requires IPR petitions to be filed within a year of the petitioner being served a complaint alleging infringement. The Board concluded that TRW’s petitions were not time-barred because the complaint was not actually served until December 26, 2012, the date that the district court granted the motion for leave and filed the amended complaint.
On June 20, 2012, Magna filed a complaint in district court alleging TRW’s infringement of patents related to its electronic rearview mirror system (but not the challenged patent). On December 20, 2012, Magna filed a motion for leave to file a second amended complaint, which included the amended complaint as an exhibit. The amended complaint added the challenged patent. The court granted the motion and filed the amended complaint on December 26.
Magna argued that the amended complaint was served on December 20, when it was served automatically on TRW’s attorneys, who received a notice of electronic filing on December 20, in accordance with local rules of the court. TRW responded that a complaint cannot be served if it is not filed and a proposed complaint is not filed until the court grants leave. Magna also argued that under FRCP 15(a)(2), which allows a party to amend its pleading with opposing party’s written consent or the court’s leave, leave of the court was not needed because TRW consented to file the filing of the amended complaint on December 20.
The Board concluded that the amended complaint was not served on TRW for purposes of § 315(b) until the court had filed it, because TRW was not under the court’s authority or obliged to engage in litigation related to the challenged patent until that date. Prior to this date, the amended complaint was just a proposal. The Board also disagreed with Magna’s interpretation of FRCP 15(a)(2). Regardless of TRW’s consent on December 20 to allow Magna’s request to amend its pleading, Magna clearly left the matter in the court’s hands. Therefore, the amended complaint was not served until December 26, and TRW’s petition was not time-barred under § 315(b).