Introduction
Different civil actions bar petitions under Sections 315(a) and 315(b)
Only filed and served civil actions can bar Section 315(b) petitions
Civil actions dismissed without prejudice do not bar petitions
A complaint is a complaint
Joinder and privy
Comment


Introduction

Inter partes review is a new proceeding created by the America Invents Act which allows parties to challenge the validity of a patent before the Patent Trial and Appeal Board (PTAB). A party files a petition before the PTAB to institute an inter partes review of a patent. The petition must identify all real parties in interest, all claims challenged, the grounds on which the claim is challenged and the evidence that supports the grounds for the challenges.(1) The patent owner may then file a preliminary response within three months of the petition being filed, setting forth reasons why no inter partes review should be instituted.(2)The PTAB then issues a written decision instituting or denying the inter partes review.(3) This update provides patent owners with guidance, based on a review of decisions issued by the PTAB, on whether to file a preliminary response asserting a statutory bar.

A patent owner should always file a preliminary response if it believes that the petitioner is statutorily time barred against filing a petition because of previous related civil actions. The statute has two such time bars:

  • Under 35 USC Section 315(a)(1), an inter partes review may not be instituted if the petitioner "filed a civil action challenging the validity of a claim of the patent" at issue in the petition before filing the petition.
  • Under 35 USC Section 315(b), an inter partes review may not be instituted if the petition is filed one year after the petitioner was "served with a complaint alleging infringement of the patent" at issue in the petition.

The PTAB's decisions have made clear that the requirements set forth in Section 315(a) are significantly different from those of Section 315(b).

Different civil actions bar petitions under Sections 315(a) and 315(b)

Patent owners should be aware that the PTAB has interpreted the statutory text and legislative history of the statute to limit the types of civil action that bar petitions under Section 315(a). The statutory text of Section 315(a) refers only to 'civil actions' that would bar inter partes reviews. However, a later provision of the statute, Section 315(a)(3), excludes counterclaims challenging the validity of a patent from barring the institution of an inter partes review. The PTAB has gone further and interpreted Section 315(a) to limit the petition-barring civil actions to complaints that commence the civil action.(4) In Ariosa the patent owner, in its preliminary response, argued that the petitioner's declaratory judgment action of non-infringement filed in district court six months before the petition was filed barred the inter partes review under Section 315(a). In the district court action, the petitioner raised invalidity of the challenged patent as an affirmative defence in response to a counterclaim for infringement. The PTAB disagreed with the patent owner, reading the statutory text of Section 315(a) to require the petition-barring civil action to be a complaint that commences the civil action.

In contrast, the PTAB has interpreted Section 315(b) more broadly. The statutory text of Section 315(b) refers to "complaints alleging infringement of the patent" filed one year before the petition is filed as barring petitions. The statutory text of Section 315(b) does not explicitly exclude counterclaims. The PTAB has confirmed that a counterclaim is the same as a complaint for the purposes of Section 315(b) and triggers the one-year bar under the statute.(5) In St Jude Medical the PTAB found that a counterclaim imposes the same burdens on the parties as a complaint. The PTAB noted that limiting the statute to complaints for infringement would discriminate among "otherwise similarly-situated accused infringers" and "would leave a patent open to serial attack".(6) The PTAB also rejected the petitioner's argument that a counterclaim should be excluded from petition-barring civil actions under Section 315(b) because that distinction is made in Section 315(a). The PTAB found that the absence of an explicit exclusion under Section 315(b) meant that Congress intended no such exception for the Section 315(b) bar.

Only filed and served civil actions can bar Section 315(b) petitions

Patent owners should be aware that the PTAB has imposed an additional requirement on complaints that trigger the Section 315(b) bar: a complaint must have been filed and served one year before the petition for inter partes review is filed.(7) In Motorola the patent owner had filed a complaint alleging patent infringement against the petitioner over a year before the petitioner filed the petition, but did not provide the petitioner with a copy of the summons. The PTAB read the words 'served with a complaint' in Section 315(b) to require filing and service of the civil action before the bar could be triggered. The PTAB noted that the legislative history of the statute showed that the primary concern relating to Section 315(b) was to provide defendants with "sufficient time to fully analyse patent claims, but not to create an open ended process".(8) In addition, where the plaintiff has filed a waiver of service, the PTAB found that the one-year clock would begin to run on the day that the waiver was filed.

In contrast, the PTAB has found Section 315(a) to require only that the petition-barring civil actions be filed.(9) In Anova the PTAB contrasted the language of Section 315(a) (which calls for a civil action to be 'filed') with the language of Section 315(b) (which calls for a complaint to be 'served') and found that a petition-barring civil action under Section 315(a) need not be served to trigger the bar.

Civil actions dismissed without prejudice do not bar petitions

The PTAB has found that civil actions dismissed without prejudice are treated as if the actions were never brought and do not trigger the statutory bars under Section 315(a) or 315(b).(10) In Invue Security the PTAB, relying on Federal Circuit precedent that treats dismissals of civil complaints without prejudice as though the action had never been brought, held that the petitioner's previous declaratory judgment action, which had been dismissed without prejudice, did not trigger the statutory bar under Section 315(a). The PTAB has applied the same principle to civil actions under Section 315(b).(11)

A complaint is a complaint

The PTAB has rejected a number of other creative arguments made by petitioners in an attempt to distinguish civil actions from those that might trigger the statutory bars. The PTAB denied a petition for inter partes review where the petition was to a patent with a re-examination certificate, but the petition-barring civil action was to the original patent.(12) The petitioner filed the petition over a year after the patent owner had served the petitioner with a patent infringement complaint. However, the petition was filed less than a year after an ex parte re-examination proceeding concluded with a re-examination certificate where the original claims were amended and new claims were added. The PTAB denied the petition, noting that the re-examination did not result in a new patent and that the timeliness analysis under Section 315(b) was to be made to the patent.

The PTAB has also held that the service of a second complaint within a year of the petition being filed does not nullify the effect of an earlier first complaint for the purposes of Section 315(b).(13) Most recently, the PTAB rejected petitions by Samsung where Samsung argued that its petitions should be granted because the earlier filed civil actions had been filed before the effective date of the America Invents Act.(14) The PTAB declined to interpret 'is served' in Section 315(b) to mean that the statute applies only to post-America Invents Act complaints.

Joinder and privy

Patent owners should be aware that petitioners may attempt to circumvent the time bars of Sections 315(a) and 315(b) by applying for joinder of a petition which would be time barred – to an earlier-filed petition seeking to invalidate the same patent.(15) In addition, patent owners should bring third parties which might be considered real parties in interest to the petitioner to the attention of the PTAB if those third parties have had petition-barring civil actions served on them.(16)

Comment

In summary, the PTAB decisions discussed above make clear that when considering whether to assert the existence of a statutory bar in a preliminary response, the patent owner must conduct a thorough factual analysis to determine whether Section 315(a) or Section 315(b) can be successfully relied on to thwart the institution of an inter partes review proceeding.

For further information on this topic please contact Raymond Mandra or Chandrika Vira at Fitzpatrick, Cella, Harper & Scinto? by telephone (+1 714 540 8700), fax (+1 714 540 9823) or email (rmandra@fchs.com or cvira@fchs.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.

Endnotes

(1) 35 USC § 312.

(2) 37 CFR § 42.107.

(3) 35 USC § 314.

(4) See Ariosa Diagnostics v Isis Innovation Ltd, IPR 2012-00022.

(5) See St Jude Medical v Volcano Corp, IPR2013-00258.

(6) Id at 3.

(7) See Motorola Mobility LLC v Arnouse, IPR 2013-00010.

(8) Id at 4.

(9) See Anova Food, LLC v Sandau, IPR 2013-00114.

(10) See Invue Security Products Inc v Merchandising Techs Inc IPR 2013-00122

(11) See BAE Systems Info v Cheetah Omni, LLC, IPR 2013-00175.

(12) See BioDelivery Sciences Int'l, Inc v MonoSol RX, LLC, IPR 2013-00315

(13) See Universal Remote Control, Inc v Universal Elec, Inc, IPR 2013-00168

(14) See Samsung Electronics Co Ltd v Fractus, SA, IPR 2014-00008.

(15) See, for example, NetApp, Inc v Personalweb Techs LLC, IPR 2013-00319; Apple, Inc v Benjamin Filmalter Grobler, IPR 2014-00060.

(16) See, for example, Synopsys, Inc v Mentor Graphics Corp, IPR 2012-00042; Chi Mei Innolux Corp v Semiconductor Energy Labs Co, Ltd, IPR 2013-00028.