Practitioners understand that an inter partes review cannot be instituted more than one year after service of a complaint. There have, however, been several questions regarding how the one year period is calculated. For example, if two complaints are filed at different times against the same defendant, each alleging infringement of the same patent, which date of service is used to determine the one-year period? We are now starting to get clear indications from the PTAB that the one-year period cannot be restarted in most instances because the time period is calculated from the service of the first complaint (as opposed to any complaint or the last complaint) for patent infringement.
The relevant statutory provision (35 U.S.C. §315(b)) provides,
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. The time limitation set forth in
the preceding sentence shall not apply to a request for
joinder under subsection (c).
While the statute makes clear that an IPR cannot be filed more than one year after the date on which the petitioner is served with a complaint, what is the operative date from which the one-year period is calculated in the following scenarios:
(1) What is the deadline for filing an IPR when a patentee serves a new patent infringement complaint covering a newly released product against a party on whom it had served a complaint more than one year ago on the same patent, but a different product?
(2) Relatedly, what is the deadline for filing an IPR when a patent owner files and serves a complaint, only to dismiss it without prejudice within a year of service? More pointedly, does the defendant have to file an IPR within one year of the service of a complaint that is subsequently dismissed without prejudice?
The PTAB’s decisions in Accord Healthcare, Inc., USA v. Eli Lilly & Company (IPR2013-00356) and Universal Remote Control, Inc. v. Universal Elec., Inc. (IPR2013-00168) provide an answer to the first scenario.
In Accord, the patent owner Eli Lilly served Accord with a complaint alleging infringement of U.S. Patent 7,772,209 (“the ’209 Patent”) on at least two occasions: In January 2012 with respect to the 100 mg and 500 mg dosage forms of the cancer drug ALIMTA; and in March 2013 with respect to the 1000 mg dosage form of the same drug. Accord argued that its petition was timely because it was filed its IPR petition less than one year after service of the March 2013 complaint, which constituted “a complaint” under the statute. The PTAB, however, disagreed and held, “[t]he plain language of the statue does not indicate or suggest that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a nullity.” On this basis, the PTAB denied Accord’s petition.
Likewise, in Universal Remote, the PTAB denied the IPR petition and found,
[w]e agree that the plain language of the statute does not
address the subject of multiple lawsuits involving the same
patent. We disagree, however, that the one-year grace
period applies only to the last of a chain of multiple
lawsuits or that the filing of a later lawsuit renders the
service of a complaint in an earlier lawsuit to be a nullity as
Petitioner argues. The plain language of the statute does not
include such a restriction.
These two decisions make clear that the PTAB views the language “service of any complaint” as the service of the first complaint with respect to a patent, as opposed to the service of the last complaint with respect to the same patent. While these decisions open the system up for gamesmanship by the patent owner – for example, where a patent owner could assert one set of claims in a first action and then assert a different set of claims in a new action filed more than one year after the first action - the PTAB’s position on this issue seems to be fairly set.
The PTAB’s decision in Macauto U.S.A. v. Bos GMBH &KG, IPR2012-00004, directly answer the questions set forth in the second scenario. In Macauto, the patent owner first sued the petitioner’s parent company (Macauto Taiwan) for patent infringement in April 2011. However, this complaint was voluntarily dismissed without prejudice in November 2011. In reaching its decision to institute an IPR based on a petition filed on September 16, 2012 (more than one year after the filing of the complaint), the PTAB noted, “Federal Circuit has consistently interpreted the effect of such [voluntary] dismissals [without prejudice] as leaving the parties as though the action had never been brought. Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002) (‘The dismissal of an action without prejudice leaves the parties as though the action had never been brought’).” Based on this and other precedent discussed in the opinion, the PTAB held, “the dismissal of the earlier action against Macauto Taiwan nullifies the effect of the alleged service of the complaint on Petitioner.” In other words, an IPR may be filed at any time with respect to a patent that is asserted in an action, which is subsequently dismissed without prejudice.
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