The Patent Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (PTO) denied a petition for inter partes review (IPR) that was filed more than one year after a counterclaim alleging infringement was served on the petitioner, finding that the phrase “complaint alleging infringement of the patent,” as used in 35 U.S.C. § 315(b), is sufficiently broad to include a counterclaim that alleges infringement of the patent. St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 29 (PTAB, Oct. 16, 2013) (Kamholz, A.P.J.).
Petitioner St. Jude sued Volcano in federal district court alleging infringement by Volcano of St. Jude’s patents. In response, Volcano filed and served a counterclaim alleging infringement its patent. Subsequently, the parties stipulated to the dismissal with prejudice of all claims relating to Volcano’s patent.
Over a year after Volcano served its counterclaim, St. Jude filed a petition to institute an IPR of the first 20 claims of that patent. The Board denied the petition, concluding it was untimely as having not been filed within the one-year period set forth in § 315(b).
Section 315(b) states, in relevant part, that an IPR may not be instituted if the petition requesting the proceeding “is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” The dispute continued on whether a counterclaim alleging infringement of a patent is a complaint for purposes of the statute. The Board said it was.
The Board analyzed the legislative history and found that nothing in the history indicated that Congress intended the statue to bar some accused infringers but not others. The Board also found that a contrary position would leave a patent open to serial attack, even after years of patent infringement litigation, if the accused infringer had only been accused via a counterclaim.
The Board rejected all of St. Jude’s arguments for why a counterclaim should be treated differently from an original complaint. The Board disagreed that the Federal Rules of Civil Procedure treated a complaint different from a counterclaim such that those pleadings should be treated differently under § 315(b). Instead, the Board found that the similarities between a complaint and a counterclaim, noting that they both initiate causes of action against accused infringers, underscore their equivalence for purposes of § 315(b).
The Board also rebuffed St. Jude’s attempts to look at different sub-sections of § 315 and at irrelevant portions of the legislative history. Finally, the Board disagreed with St. Jude that dismissal of a complaint with prejudice purges the cause of action and negates the applicability of the time period in § 315(b). The Board stated that service of a complaint (or counterclaim) alleging infringement triggers applicability of § 315(b), even if that complaint (or counterclaim) is later dismissed with prejudice.