Recently, in Apple. Inc. v. Virnetx, Inc. and Science Application International Corp. (IPR2013-00348), the PTAB found another opportunity to interpret 35 U.S.C. §315(b), a statue of limitations on instituting inter partes review (IPR) proceedings. Section 315(b) bars the institution of an IPR: 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 the infringement of the patent.
In this case, the petitioner (Apple) was served with a complaint alleging the infringement of U.S. Patent No. 6,502,135 in 2010 as well as in 2012. The 2010 complaint was served more than one year from the date at which the IPR request was filed while the 2012 complaint was served less than one year from that date. In its Decision on Institution, The PTAB ruled that the petitioner’s request to institute a trial was time barred because the 2010 complaint was served more than one year before the petitioner filed its request.
In a Request for Rehearing, the petitioner argued that its petition was timely because Section 315(b) should be read as allowing the institution of an IPR if it were filed less than one year after the date on which “any complaint” was served. In other words, the petitioner had argued that “[t]he August 2010 complaint does not foreclose the present petition, “as the Patent Owner served a new complaint on Petitioner asserting infringement of the ‘135 patent in December of 2012.” In its Decision on Institution, the Board had rejected this argument and had held that “under the plain meaning of ‘a complaint’ under 315(b), the 2010 complaint qualifies as ‘a complaint’ that time bars the Petition.”
Continue Reading The PTAB Rules That Time Bar of Section 315(B) Applies Even To Complaints Served Prior To Enactment of AIA