Service in Dismissed Infringement Cases Can Still Bar IPR Institution
The PTAB recently designated two decisions interpreting 35 U.S.C. § 315(b) as precedential. Each decision applies the Federal Circuit’s literalist interpretation of § 315(b) from Click-to-Call1 (CTC) to, in one case—Infiltrator water Technologies, LLC v. Presby Patent Trust (IPR2018-00224, Paper No. 18)—terminate the Board’s previous institution decision, and in a second case—GoPro, Inc. v. 360Heroes, Inc. (IPR2018-01754, Paper No. 38)—deny institution of inter partes review. These decisions illustrate the procedural trap § 315(b) can pose for Petitioners and which Patent Owners may take advantage of.
Section 315(b) states 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, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” In CTC, the Federal Circuit found the statutory language clear, barring institution of an IPR where the petitioner was “served with a complaint” more than a year prior to filing a petition, even though the original complaint was subsequently voluntarily dismissed. Id. at 1330, 1332. The Court found that service of the complaint triggered an “administrative time bar” that remains unaltered even if the action later becomes a “nullity” for other purposes, such as a voluntary dismissal. Id. at 1336.
Relying on CTC, the Board in Infiltrator Water Techs. (IWT) terminated an IPR that it originally instituted because the petitioner had been served with a complaint for infringement of the patent undergoing review more than one year prior. In trying to avoid this outcome, Petitioner argued that CTC did not apply because the complaint was not voluntarily dismissed, but instead was terminated based on the trial court’s lack of personal jurisdiction. Petitioner attempted to rely on Federal Rule of Civil Procedure 4(k) as showing that service is not effective when the district court that issued it lacks personal jurisdiction, meaning that petitioner was never “effectively served.” IWT at 2-4. The Board disagreed.
First, the Board noted that subsequent to CTC, the Federal Circuit addressed involuntary dismissal of a complaint in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,2 and found that 35 USC § 315(b) still barred institution of an IPR where the complaint was served on the petitioner more than a year before the petition was filed. IWT at 5. Second, the Board found that Rule 4(k) does not purport to establish legal means for accomplishing service. Id. at 6. Instead, that is the function of various other rules (e.g., 4(c)-(j)), and petitioner failed to establish it was not served in accordance with those rules. Id. at 7. Based on this decision, arguments against application of § 315(b) based on service being ineffective due to lack of jurisdiction seem likely to fail at the PTAB as a general rule. Left open in IWT is whether service defects under Rule 4 subsections (c)-(j) might negate application of § 315(b).
In GoPro, a PTAB precedential opinion panel (POP) extended the literalist approach to § 315(b) of CTC beyond the dismissal issues considered in that case and in Bennet Regulator. In this case, the purported patent owner, 360Heroes, had filed an infringement complaint based on the patent at issue, but was subsequently determined to have lacked standing to file the complaint because it did not even own the patent at the time (its CEO did). The original PTAB panel instituted an IPR and refused to apply § 315(b) in view of the lack of standing, citing a line of PTAB cases requiring ownership of the patent at issue at the time of filing a complaint in order to trigger the § 315(b) time bar. That panel found CTC not controlling since that decision had not considered the same standing issue. Patent Owner nonetheless requested Rehearing based on its reading of CTC.
The POP, including USPTO Director Iancu, Commissioner Hirshfeld and Chief Administrative Patent Judge Boalick, granted Patent Owner a rehearing with respect to the § 315(b) issue and denied institution of the IPR. Despite acknowledging that CTC had not considered the “narrow statutory interpretation question presented,” it found CTC controlling. Petitioner argued that the “served with a complaint alleging infringement” language of § 315(b) was ambiguous with respect to whether the complaint must be a proper federal pleading, allowing the Board to look at § 315(b)’s title and legislative history. Petitioner also argued that standing is a fundamental requirement that must be satisfied at the time of filing before the § 315(b) time bar may be triggered.
The POP was unconvinced and concluded that because CTC’s statutory interpretation was still applicable, there was no need to look beyond the words of the statute as urged by Petitioner. GoPro at 9. The POP determined that “if service of a pleading asserting infringement occurred ‘in a manner prescribed by law,’ then the one-year time period for a Petitioner to file a petition under § 315(b) is triggered on the date of service.” Id. at 10. It refused to graft terms into the plain language of the statute, such as requiring the complaint be proper or be served by the true Patent Owner. Id. at 12. The POP also dismissed (in footnote 7) Petitioner’s concerns that without requiring standing, there could be potential misuses of § 315(b) by third parties without rights to enforce the patents. It hinted that equitable tolling of the time-bar might be available in situations where a party serves a complaint in bad faith, but the question remains open for now.
The GoPro and IWT decisions make very clear that if a complaint is served in accordance with the technical requirements of FRCP Rule 4, the PTAB will not look to whether the complaint was legally sufficient or the court has jurisdiction to hear the patent infringement suit described in the complaint. The GoPro Decision does indicate that delivery of a proposed complaint or a complaint not served in compliance with Rule 4 may not trigger the start of the § 315(b) time period, but otherwise would-be Petitioners must file their petitions within one year of receiving a complaint, irrespective of jurisdictional or standing defects.
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1Click-to-Call Techs. LP v. Ingenio, Inc. 899 F.3d 1321, 1330 (Fed. Cir. 2018).
2905 F.3d 1311 (Fed. Cir. 2018)
