International Trade Commission proceedings do not start the one-year statutory bar for filing an inter partes review or "IPR," according to a recent decision from the Patent Trial and Appeal Board. The decision also confirmed that, where a defendant in a district court action waives service of the complaint, the one-year statutory bar starts when the waiver of service is filed with the District Court.
A&J Manufacturing asserted a patent in an ITC investigation against a variety of barbeque manufacturers. At about the same time, it also filed a district court action asserting the same patent against the parties named in the ITC action.
As to at least one of the district court defendants, A&J obtained a waiver of service in lieu of personal service of the complaint on October 14, 2013, which it filed one week later on October 21, 2013. That defendant, the Brinkmann Corporation, filed an IPR petition challenging the asserted patent’s validity on October 13, 2014. The relevant timeline is shown below:
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A&J filed a patent owner's preliminary response challenging the petition, arguing, among other things, that the IPR was time barred. According to A&J, the one-year period started on October 7, 2013 when Brinkmann was sent a copy of the complaint.
The PTAB rejected the standing challenges, finding that the petition was filed in a timely manner. A discussion of the decision as it pertains to the time bar follows.
The one-year statutory bar of an IPR
35 U.S.C. § 315(b) provides for a one-year statutory bar for filing an IPR petition when a party is accused of patent infringement:
An inter partes review may not be instituted 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 infringement of the patent.
A&J alleged that Brinkmann's petition should be dismissed as time barred because more than a year had passed since Brinkmann was served with the District Court complaint and the ITC complaint.
The one-year statutory bar starts when the waiver of service is filed.
A&J argued that Brinkmann's October 13, 2014 IPR petition was time barred because Brinkmann was mailed a copy of the District Court complaint on October 7, 2013, and thus Brinkman had filed its petition too late. The PTAB rejected this argument, however, explaining that for the purposes of the one-year bar, the date on which the waiver for service was filed with the District Court "is the date that Petitioner is deemed to have been served." A&J filed the waiver of service on October 14, 2013, and, therefore, the IPR petition was timely.
Service of an ITC complaint does not trigger the one-year bar.
A&J also argued that IPR was barred under § 315(b) because BC was served with the ITC complaint more than one year before filing the petition. Specifically, A&J argued that the October 13, 2014 IPR petition was time barred because BC was served with the complaint as part of ITC’s Notice of Institution on September 23, 2013.
By way of background, the ITC is an independent federal agency having investigative powers in matters of international trade, including patent infringement allegations. An ITC investigation is brought under Section 337 of the Tariff Act after a private party files a complaint alleging unfair acts in the importation of articles. But even though such an action is based on a complaint filed by a private party, it is formally a government investigation and not a civil action for patent infringement.
As to A&J’s argument that service of the ITC started the one-year clock running, the PTAB disagreed, concluding instead that "[§ 315(b)] means a complaint in a civil action for patent infringement, not in an arbitral or administrative proceeding." The PTAB reasoned that only civil actions trigger the § 315(b) bar, because the statute uses "action" in the caption and the phrase "service with a complaint," both of which "connote a civil action...." Moreover, Title 35 uses "different language to identify or encompass proceedings before the ITC." In doing so, the PTAB agreed with the reasoning of Amkor Tech., Inc. v. Tessera, Inc., holding that a complaint in an arbitration proceeding does not trigger the one-year limitation. Since service of an ITC complaint does not trigger the § 315(b) bar, Brinkmann's IPR petition was not time barred.
In light of the Brinkmann decision, parties should closely examine the particulars of events that may trigger the one-year limit. At least as to ITC proceedings, potential IPR petitioners may have the opportunity to challenge the patent validity more than a year after being served with the ITC complaint (assuming that there is no other district court litigation that would trigger the one-year period). Note, however, that district court complaints are often filed simultaneously with corresponding ITC complaints. Moreover, since the statutory bar based on a district court litigation is triggered when the waiver of service is filed (as opposed to executed), the Brinkmann decision highlights the importance of filing the waiver of service as soon as possible.