Since their introduction as part of the America Invents Act, Inter Partes Reviews (IPRs) have proven to be a powerful tool for parties accused on patent infringement. One important constraint on their deployment is a one year limit to filing an IPR request after a party is accused of patent infringement. Recent decisions by the Patent Trial and Appeal Board (PTAB) clarify that only a district court action, not an ITC complaint, will trigger this one year bar.
In three decisions issued on the same day, the PTAB denied Robert Bosch Tool Corp.’s requests to institute IPRs of three patents owned by SD3. See Robert Bosch Tool Corp. v SD3, LLC, IPR2016-01751; -01753; -01754. In two of these decisions (IPR2016-01751 and -01753), the PTAB considered patent owner’s argument that “Petition [was] time barred under the plain meaning of 35 U.S.C. § 315(b), because Petitioner was served with an ITC complaint more than one year before the date [the] Petition was filed.”
The patents at issue have been asserted by SD3 and its subsidiary SawStop LLC against Bosch in both an ITC matter and a district court proceeding. Bosch filed its IPRs on September 14, 2016, less than a year from being served in the Oregon action, but more than a year after the ITC action. The question naturally arises whether Bosch’s petitions are subject to the one year litigation bar of 35 U.S.C. § 315(b).
The language of § 315(b) recites that “[a]n 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 . . . is served with a complaint alleging infringement of the patent.” In opposing the petitions, SD3 pointed to the heading of § 315(b) (“Patent Owner’s Action”) to argue that this section “should be interpreted to include both a civil action in a federal district court and a Patent Enforcement Action at the ITC.” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 9.
To support its argument, SD3 pointed to the language in one of the prior PTAB opinions that discussed a relationship between ITC proceedings and a one-year bar for IPR request. In that opinion, the PTAB explained that “the drafters intended the triggering event of § 315(b) to be ‘tied to a pleading in litigation.’” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 10 (quoting Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98, at 13 (PTAB January 31, 2014)) (emphasis in original). SD3 pointed out that the Federal Circuit “has consistently treated section 337 patent infringement proceedings as litigation.” Texas Instruments., Inc. v. Tessera, Inc., 231 F.3d 1325, 1330 (Fed. Cir. 2000). Therefore, according to SD3, PTAB’s own logic in Amkor “should not preclude ITC actions from falling within § 315(b).” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 10.
The PTAB “decline[d] to interpret § 315(b) as including ITC complaints.” Id. at 11. The PTAB cited several reasons for this conclusion. First, the very “title of § 315 is, ‘Relation to Other Proceedings or Actions.’” Id. Second, “[p]aragraph (e)(2) of § 315 specifically identifies an ITC investigation as a ‘proceeding,’ and separately refers to a ‘civil action.’” Id. Third, “§ 315(b) refers to ‘infringement,’ not to ‘patent enforcement.’” Id. Fourth, the PTAB argued that when Congress intended a provision of the AIA to apply to ITC proceedings, “it took care to recite ‘section 337’ in the body of the statute.” Id. (citing 35 U.S.C. §§ 257(c)(2)(B) and 325(e)(2)). Fifth, the PTAB pointed out that 35 U.S.C. § 257 relied on by SD3 “relates specifically to supplemental examination of patents before the Patent Office, not inter partes review.” Id. Finally, the PTAB referred to reasoning it used in previous decisions on the same point: LG Elecs., Inc. v. Straight Path IP Group, Inc., IPR2015-00196, Paper 20 (P.T.A.B. May 15, 2015); Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 (P.T.A.B. Mar. 23, 2015); Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (P.T.A.B. Jan. 31, 2014). As a result, the PTAB “decline[d] to extend § 315(b) to cover ITC complaints.” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 12.
The PTAB confirmed that an ITC complaint, unlike a district court action, does not trigger a one year bar on filing an IPR. This difference between the two forums should become part of a strategic analysis by any patent owner planning to initiate a district court and/or ITC litigation. For an accused infringer, the PTAB decision removes one potential concern with ITC proceedings – namely, they do not endanger its ability to attack a patent in an IPR later on.