By Rich Graham and Matt Johnson

On January 10, 2018, the PTAB designated two decisions weighing on 35 U.S.C. § 315(b) as informative:

Section 315(b) reads:

Patent Owner’s Action.—

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).

In Luv N’ Care, the PTAB considered whether a petition was timely filed under 35 U.S.C. 315(b) when payment of the petition fee required by § 42.15(a) was not received on the date of an attempted filing.  On March 30, 2017, Petitioner attempted to file a petition for Inter Partes Review (“IPR”), but the Office did not receive payment on that date.  (IPR2017-01216, Paper 13 at 2.)  On April 11, 2017, after discovering that payment had not been received by the Office, Petitioner again filed a petition for IPR, paid the fee, and was accorded a filing date of April 11, more than one year after Petitioner was served with a complaint alleging infringement of the patent.  (Id.) On that same day, Petitioner filed a Motion to Assign a Filing Date seeking to have the Petition accorded the filing date of the original attempted filing, March 20. (Id.) Petitioner subsequently failed to respond to the Board’s Order to Show Cause why its Motion to Assign Filing Date should not be denied.  (Id.) In its Decision Denying Institution, the Board considered Petitioners motion as a threshold question.  (Id.)

On March 30, 2017, Petitioner successfully uploaded the Petition to the PTAB E2E filing system, and received a receipt dated the same day indicating that the payment was in process.  (Id. at 3).  By affidavit, Petitioner stated that the identified deposit account was sufficiently funded. (Id.) But PTO records indicated that at the time of the first attempt to pay the fee, Petitioner’s deposit account had insufficient funds, and that sufficient funds were added on March 31, 2017, after which no attempt to pay the filing fee until the April 11th filing. (Id.) The Board noted that:

The first page of the Exhibit specifically states, in bold: “Your Payment Has Not Been Cleared for AIA Review IPR2017-01216! Please call system administrator with any questions[.]” Ex. 1011, 1. Petitioner does not address this warning.

(Id. at 4 (emphasis in original).)  Nonetheless, “Petitioner [did] not explain the more than 10 day delay in submitting payment.” (Id.)

The Board held that, “absent a showing of good cause … and in accordance with our rules … we will not waive the fee requirement in this case.”  (Id. at 5 (quoting Rules 42.103 (“No filing date will be accorded … until full payment is received”), 42.106 (same in effect the))). While acknowledging that § 312(a)(1), requiring the fee before the Board may consider the petition, is not jurisdictional (implying that under some conditions failure to timely pay the requisite fee could be forgiven), the Board nonetheless summarized the many failures of Petitioner to rectify its failure to file pay the fee, including its failure to respond to the Show Cause Order, and concluded that there was no good cause for granting Petitioner’s requested relief. (Id. at 6.) Because Petitioner’s Motion to Accord the original filing date was denied, and because the filing date accorded to the Petition was after one year bar date, the Board considered the petition untimely, and thus barred under 35 U.S.C. § 315.

In Amneal Pharma., Petitioner filed a petition for IPR of the ’216 patent on January 16, 2014.  Patent Owner’s Preliminary Response asserted that the petition was time barred under § 315(b) for having been filed more than one year after the date on which the Petitioner was served with a complaint alleging infringement of the patent. (IPR2014-00360, Paper 15, at 2.)

The Patent Owner had filed a complaint in district court on Nov. 7, 2012 alleging that Petitioner infringed patents other than the ’216 patent. (Id. at 3.) Subsequently, Patent Owner filed a First Amended Complaint one week later on Nov. 14, 2012, also alleging infringement of patents other than the ’216 patent, which issued three weeks later on December 11, 2012. (Id.) Thereafter, on Jan. 9, 2013, Patent Owner sought leave to amend its First Amended Complaint by motion, attaching the proposed Second Amended Complaint, which the district court granted on Jan. 14, 2013 stating “Plaintiff shall file the Second Amended Complaint promptly.” (Id.) On Jan. 17, 2013, the  Patent Owner filed the Second Amended Complaint—less than one year before Petitioner’s petition for IPR. (Id.)

The Board framed the question as “whether service on January 9, 2013, of Patent Owner’s Motion to Amend Complaint, attaching a proposed “Second Amended Complaint” as an exhibit, or the district court Order granting that Motion on January 14, constituted service of a “complaint”, thereby triggering the one-year time bar under § 315(b).” (Id. at 4.)  The Board found that service, via the district court’s ECF system, of a motion with an attached amended complaint was at best service of a “proposed complaint” until the district court had granted leave for filing the amendment, because until then “Petitioner was not yet a defendant in a lawsuit with respect to the ’216 patent.” (Id. at 8-9.)  The Board also found that, “Petitioner was not served with a complaint for the purposes of § 315(b) when the district court granted Patent Owner’s [motion] on [Jan.] 14, 2013” because “the Order did not indicate that the Second Amended Complaint was filed or served on Petitioner as of [Jan.] 14, 2013” “rather the court specified a timing of the filing” i.e. “promptly.” (Id. at 9.)

The Board, weighing the effect of the district courts local rules, the Federal Rules of Civil Procedure, and binding precedent, accordingly held that it was not until “Petitioner was brought under a court’s authority by formal process, and became obliged to engage in litigation in relation to the ’216 patent, on January 17, 2013, when Patent Owner actually filed its Second Amended Complaint, and not beforehand” did § 315(b)’s time period being to toll.  (Id. at 9-10 (emphasis added).)

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.