When Served is Not “Served”

The one-year rule, codified in 35 U.S.C. § 315(b), bars a party from filing an inter partes review (IPR) petition challenging the validity of a patent’s claims “more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” Patent Owners having brought a district court action against infringers start this one-year clock by serving the complaint, or by filing a notice of waiver with the court.

A recent Institution Decision in IPR2015-00056 clarifies, however, that service with an International Trade Commission (ITC) complaint does not trigger the one-year rule. IPR2015-00056, Paper No. 10. In IPR2015-00056, the Patent Owner argued that the IPR was barred under 35 U.S.C. § 315(b) because Petitioner was served with a complaint in ITC Investigation No. 337-TA-895 more than one year before the Petition was filed. The Board rejected the Patent Owner’s argument, explaining that “[t]he phrase ‘served with a complaint alleging infringement of the patent’ means a complaint in a civil action for patent infringement, not in an arbitral or administrative proceeding.” Citing Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, slip op. at 6–18 (PTAB, Jan. 31, 2014) (Paper 98), the Board reasoned that “because the term ‘action’ in the caption to § 315(b), as well as the phrase ‘served with a complaint,’ connote a civil action, and because Congress used different language to identify or encompass proceedings before the ITC,” the provision should not apply to ITC proceedings.