APJs Reject Creative Arguments for not Applying § 315(b) Bar

Scott Daniels | January 7, 2014

The APJs are rapidly developing an extensive body of case law applying the deadline under 35 U.S.C. § 315(b) for requesting inter partes review of a patent.  That statutory provision states that 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).

(Emphasis added).  Last week, the APJs addressed two § 315(b) questions that some readers may not have previously seen.

In October Samsung Electronics petitioned for inter partes review of four patents owned by Fractus, S.A., that claimed multiband antennae useful in mobile telephones (IPR2014-00008, 00011, 00012, 00013).  Fractus had served Samsung in February 2013 with a complaint alleging infringement of the four patents; but in May 2009, Fractus had served Samsung with an earlier complaint asserting infringement of a series of patents, including the four patents-in-issue here.  Fractus cried foul, claiming that Samsung’s petitions were barred under § 315(b) and should be dismissed.

The APJs began their analysis by quoting from the legislative history of § 315(b) that the point of the deadline was to prevent inter partes review from becoming a “tool[] for harassment” by “repeated litigation and administrative attacks.”  Such repeated attacks “would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”

Samsung argued that that the patent infringement complaint served in 2009 does not bar inter partes review under § 315(b) because it was filed before the September 16, 2011 effective date of the Leahy-Smith America Invents Act.  Samsung added that the 2009 complaint is not a complaint that “is served” (emphasis in original) within the meaning of § 315(b).  Had Congress intended to bar inter partes review on the basis of pre-September 16, 2011 complaints, it would have used the phrase “was served” (emphasis in original).

The APJs replied in a perfunctory manner that they had already held “that § 315(b) bars institution of an inter partes review based on a complaint for infringement served more than one year before filing of the request for inter partes review, even if the complaint at issue was served before passage of the America Invents Act.,” citing as examples Universal Remote control, Inc. vs. Universal Electronics, Inc., IPR No. IPR2013-00168, slip. op. PTAB August 26, 2013; St. Jude Medical, Cardiology Division, Inc. vs. Volcano Corporation, IPR No. IPR2013-00258, slip. op. PTAB October 16, 2013.

Samsung also maintained that it would not be precluded from filing this petition because the February 28, 2013 complaint is “a complaint” and its four petitions were filed within a year of the service of that complaint.

The APJs rejected Samsung’s construction of § 315(b).  They explained that Samsung “incorrectly supposes that institution of an inter partes review is authorized by the statute within a year of being served with a complaint for patent infringement. The statute provides no such authorization.  Rather, the statute bars institution of an inter partes review on any patent that was the subject of a patent-infringement complaint served on Petitioner more than one year before the filing of an inter partes review petition.”  (Emphasis in original).


Reference: Institution Decision- IPR2014-00008, -011, -012, -013

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