On the heels of the US Court of Appeals for the Federal Circuit’s en banc opinion in Wi-Fi One, LLC v. Broadcom Corp. holding that § 315(b) time-bar determinations are appealable (IP Update, current issue), the Patent Trial and Appeal Board (PTAB) designated two of its earlier § 315(b) decisions as informative precedent. Luv’n Care, Ltd. v. McGinley, Case No. IPR2017-01216 (PTAB, Sept. 18, 2017) (Browne, APJ); Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., Case No. IPR2014-00360 (PTAB, June 27, 2014) (Bonilla, APJ). In light of this designation, scrutiny of service timing and satisfaction of fee-payment requirements will continue to be central to § 315(b) time-bar analysis for inter partesreview (IPR). 

The issue in Luv’n Care, Ltd., concerned the impact of failure to pay the required petition fees due to insufficient funds in the deposit account used. The petitioner filed its IPR petition against the challenged patent on March 20, 2017, but the US Patent and Trademark Office (PTO) did not receive payment on that date. After discovering that the PTO had not received payment of the required fees, the petitioner filed a second petition on April 11, 2017, and was accorded a filing date for that later petition. The petitioner then filed a motion to have the later petition accorded the filing date of the earlier petition. The earlier filing date was necessary for the petitioner to safely file its IPR petition within the § 315(b) one-year period of being served with the patent owner’s district court complaint alleging infringement of the challenged patent.

The PTAB denied institution of the earlier-filed petition, citing 35 USC § 312(a)(1) and observing that an IPR petition “may be considered only if the petition is accompanied by payment established by the Director under section 311.” The PTAB noted its earlier precedent explaining that § 312(a) was not jurisdictional and that petition defects under that section could be cured in some circumstances. But the PTAB found, with analysis, that it would not waive the fee requirement in this case.

In Amneal Pharmaceuticals, LLC, the issue was whether the “served with a complaint” provision under § 315(b) was implicated by the patent owner’s service of a motion to amend its district court complaint, which included a proposed second amended complaint alleging infringement of the challenged patent. The patent owner filed an initial complaint against the petitioner on November 7, 2012, and filed a first amended complaint one week later. On December 11, 2012, the challenged patent issued. The patent owner then filed a motion to amend the complaint on January 9, 2013, including a copy of its proposed second amended complaint in which it alleged infringement of the challenged patent for the first time. Those documents were served on the petitioner via the district court’s notice of electronic filing. The district court granted the patent owner’s motion on January 14, 2013. The patent owner then filed its second amended complaint on January 17, 2013. The petitioner filed its IPR petition against the challenged patent on January 16, 2014. In its preliminary response, the patent owner argued that the petition was time-barred under § 315(b).

The PTAB concluded that the date the patent owner served the petitioner with its motion to file its second amended complaint, January 9, 2013, did not start the § 315(b) time clock. According to the PTAB, the motion was simply a request to file the proposed second amended complaint, and at that time the petitioner was not yet a defendant in a lawsuit with respect the challenged patent. As a result, the petition was filed within the one-year period after the petitioner was served with the second amended complaint.