The One Year Window for Filing of IPRs under 35 U.S.C. §315(b). Does the Window Ever Reopen?

Authored by A. Antony Pfeffer

Issues related to how the laws and regulations regarding IPR practice will be applied continue to be fleshed out at the PTAB. Apple has now raised to the PTAB the issue of how the one year window for the filing of an IPR under 35 U.S.C. §315(b) should be applied.

35 U.S.C. § 315(b) provides 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).

The question is what happens when a patent owner serves a new complaint against a competitor on whom it had served a complaint more than a year earlier on the same patent. Does the one year clock reset? In a petition filed on July 1, 2013, (IPR 2013-397) Apple has taken the position that the clock in fact should reset. In support of this position Apple states:

Notably, § 315(b) does not specify a one-year deadline that runs from the date of the first complaint served on a petitioner. Rather, it states “[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.” Thus, a petition filed within 1 year of the date any complaint alleging infringement of the patent is served on a petitioner is timely under the plain statutory language of § 315(b). This is also the only reading of § 315(b) consistent with the statutory design. Congress designed the IPR authority to be option to contest validity of a patent concurrently with district court proceedings involving the same patent. A timely filed IPR proceeding in any action a patent owner elects to commence is perfectly consistent with this statutory design.

Reading § 315(b) in this manner also is the only way to effectively foreclose gaming of the system by a Patent Owner. Indeed, if § 315(b) were read to foreclose IPR proceedings in a second, independent action for infringement a patent owner elected to commence, it would unfairly foreclose use of the IPR system. For example, a patent owner could assert irrelevant claims in a first action, wait a year, and then assert different claims in a new action that do present risks to a third party. In this scenario, the patent owner would foreclose legitimate use of an IPR to contest validity of the patent claims asserted in the second action based on the third party’s reasonable business decision to not dispute validity of irrelevant claims in the first action. Rather than attempting to decipher which scenarios would be improper, the Board should follow the plain meaning of § 315(b), and find a petition timely if it is filed within 1 year of the date any complaint alleging infringement of the patent is served on a Petitioner.

It will be interesting to see how this issue plays out, both at the PTAB and in the Courts. Until it is resolved, parties and their counsel will have to ask the question of whether to file an IPR if they are within one year of service of a complaint, even if an earlier complaint on the same patent was served on them more than a year earlier.