APJs Issue another Ruling on One-Year Deadline to File IPR Requests

Scott Daniels | July 11, 2013

Earlier this week, we reported a ruling by the APJs in The Scotts Company v. Encap, IPR2013-00110, regarding the AIA requirement that a party file a petition for inter partes review within one year of the date that party had been served with an infringement complaint. 35 U.S.C. § 315(b).  The APJs have now issued another ruling on the § 315(b) one-year deadline, this time in BAE Systems v. Cheetah Omni, IPR2013-00175.  Again, they found that the petition had been timely filed.

Here are the relevant facts:

  • On November 12, 2010, Cheetah filed a patent infringement complaint in District Court against BAE Systems.
  • On February 10, 2011, Cheetah voluntarily dismissed its infringement action.
  • On April 22, 2011, Cheetah filed a complaint in the U.S. Court of Federal Claims against the United States, asserting infringement of the same patent and identifying BAE Systems’ Boldstroke™ system as an infringing product.
  • On March 19, 2012, BAE Systems was served with a notice by the Federal Claims court requesting that BAE Systems appear and assert any claims or interest it may have in the Federal Claims litigation.
  • On March 4, 2013BAE Systems filed the present IPR petition.

The patent owner Cheetah told the APJs that its November 12, 2010 filing triggered the § 315(b) one-year deadline.  The APJs disagreed, noting that Cheetah had “voluntarily dismissed that action pursuant to Fed. R. Civ. P. 41(a) before any of the named defendants were required to answer … a voluntary dismissal of an infringement action nullifies the effect of the alleged service of the complaint on the petitioner” (emphasis added).

Cheetah also told the APJs that BAE Systems’ petition was barred under § 315(b) because the United States is a privy of BAE Systems with regard to this matter, and that the United States was served with the Federal Claims complaint on April 22, 2011, more than 22 months before BAE Systems filed its IPR petition.

Again, the APJs disagreed. First, “the parties’ property interests in BAE Systems’ products alleged by Cheetah in its Federal Claims complaint to infringe, “are irrelevant here because any such property interests are not at issue in this proceeding.” “[p]atentability, not infringement, is the issue before the Board in an inter partes review … any privity stemming from interests in BAE Systems’ allegedly infringing products does not apply to this patentability proceeding.”

Second, the APJs found that the United States was not a privy of BAE Systems with respect to this proceeding.  Citing the Office Patent Trial Practice Guide, the APJs explained that the question of whether a non-party is a “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question.”  The APJs must take “into account how courts generally have used the terms to ‘describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.’”  According to the APJs, the relevant factors include “whether the non-party ‘exercised or could have exercised control over a party’s participation in a proceeding’ or whether the non-party is responsible for funding and directing the proceeding.”  Here, Cheetah had not presented “sufficient and credible evidence that the United States exercises control over BAE Systems’ participation in this matter or that the United States is responsible for funding and directing the proceeding.”  Thus, BAE Systems and the United States were not privies and the complaint served on the United States did not trigger § 315(b).


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