Petroleum Geo-Services, Inc. v. Westerngeco LLC
Addressing the meaning of “defendant” for purpose of the one-year bar rule, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) explained that being served with a third party subpoena in an action is not sufficient to start the one-year clock under 35 U.S.C. § 315(b)—the complaint must be served in a lawsuit where the petitioner is an actual defendant. Petroleum Geo-Services, Inc. v. Westerngeco LLC, IPR 2014-01475 (PTAB, Mar. 17, 2015) (Daniels, APJ.).
In defending against a petition for inter partes review by Petroleum Geo-Services, the patent owner, argued that the petitioner’s IPR should be time-barred under § 315(b) because the petitioner was served with a copy of the complaint more than one year before filing the present petition. The basis for the patent owner’s claim is that the petitioner received a subpoena in litigation between the patent owner and a third party (ION) and, in response to that subpoena, appeared in the ION lawsuit through its counsel. According to the patent owner, after entering an appearance in the ION lawsuit, the petitioner’s counsel was “served” with a copy of the amended complaint via the court’s electronic filing system (ECF), thereby invoking the start of the one-year bar.
The Board rejected the patent owner’s argument, explaining that the “mere receipt of a complaint, via email or even ECF” and service in response to a subpoena does not initiate the one-year time period under § 315(b). In its interpretation of § 315(b), the Board concurred with a prior panel’s—Motorola Mobility LLC v. Arnouse, Case IPR2013-00010 (PTAB Jan. 30, 2013) —statement that “[w]e do not do not believe that the Congress intended to have the time period start before a petitioner is officially a defendant in a law suit.” Because “Petitioner was not, and never has been, a party defendant” in the ION litigation, it was never “served with a complaint” for purpose of § 315(b).
The patent owner also argued that proposed grounds of invalidity should be rejected as redundant to those advanced in a prior IPR because the claim at issue depends from a claim examined in the previous IPR. The PTAB disagreed, explaining that there was no redundancy “[b]ecause this Petition involves a different claim.”