Tick Tock: Timing Implications of Inter Partes Review in View of ITC Proceedings
In LG Electronics, Inc. v. Straight Path IP Group, Inc., IPR2015-00196, Paper 20 (PTAB May 15, 2015) the Patent and Trials Appeal Board (“Board”) reaffirmed that administrative proceedings such as an ITC investigation are treated differently from district court litigations, and as such the one-year time bar of 35 U.S.C. § 315(b) does not apply to these actions.
LG Electronics, Inc., Toshiba Corp., VIZIO, Inc. and Hulu, LLC (collectively, “Petitioners”) filed a petition requesting an inter partes review of 11 claims of Straight Path’s U.S. Patent No. 6,131,121. Straight Path argued that the petition was barred, for among other reasons, because it was filed more than one year after the Petitioners were served with a complaint filed with the United States International Trade Commission (“ITC”). Pursuant to 35 U.S.C. § 315(b) “[a]n inter partes review may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner, real party in interest, or privity of the petitioner is served with a complaint alleging infringement of the patent.” Looking to two prior Board decisions that issued in Brinkman Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 at 7-8 (PTAB Mar. 23, 2015) (refusing to apply section 315(b)’s one-year bar to an ITC complaint) and Amkor Tech., Inc. v. Tessera, Inc. IPR2013-00242, Paper 98, 10-12 (PTAB Jan. 31, 2014) (refusing to apply the provision to the filing of an arbitral counterclaim) as instructive, the Board reiterated that the language of 315(b) is directed to civil and not administrative actions. Had Congress intended Section 315(b) to apply to administrative proceedings, it would have used broader language than “‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” See LG Electronics, IPR2013-00196, Paper 20 (quoting Amkor, IPR2013-00242, Paper 98 at 11); see also Amkor, IPR2013-00242, Paper 98 at 12-15 (analyzing the legislative history of section 315(b)).
Indeed, this broader language is exactly what is recited in the estoppel provision of 35 U.S.C. § 315(e)(2). Specifically, this section recites:
Civil actions and other proceedings. – The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during the inter partes review.
Both patent owners and petitioners are cautioned to review the timing provisions of 35 U.S.C. § 315 when contemplating IPR strategies in view of ITC (or other administrative) proceedings.
Additional information about post-grant proceedings can be found on our Post-Grant Patent practice group page.