Decision Denying Institution of Inter Partes Review IPR2014-00236, 239, 240

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Takeaway: In determining whether the one-year bar of 35 U.S.C. § 315(b) estops the institution of an IPR, the operative complaint is the original complaint, even if there are subsequent amended complaints, unless the original complaint is dismissed without prejudice.

In its Order, the Board denied institution of three inter partes reviews because the Petitions were not filed within the one-year period set forth in 35 U.S.C. § 315(b).  Each of the three challenged patents is at issue in a related district court litigation, and the complaint and first amended complaint were served on Petitioner more than one year prior to the filing of the inter partes reviews, but a subsequent complaint was served within the one-year time frame.  Petitioner made three arguments that the bar did not apply to the three Petitions.

First, Petitioner argued that the one-year bar did not apply to these Petitions because the complaints were served prior to the effective date of the America Invents Act. Petitioner stated that the statute bars a complaint that “is served,” not that “was served,” therefore, Supreme Court precedent requires a construction that the one-year bar only applies to a complaint served after enactment.  The Board disagreed, relying upon the dissent in a Supreme Court case, and finding that “is served” is part of a prepositional phrase that defines “the date,” therefore it should be construed relative to the date of service, not the statute enactment date.

Petitioner then argued that because the IPRs were filed within a year of when the last of the complaints was served, the Board should disregard service of the prior two complaints and treat them as having been dismissed without prejudice. The Board did not agree, and held that an amended complaint is simply amending the original complaint and the original complaint has not gone away.

Similarly, Petitioner argued that the last complaint was “a complaint” within the meaning of the statute; therefore, the one-year limit should not estop Petitioner from filing the IPRs. Petitioner claimed this interpretation was consistent with the legislative history of the America Invents Act.  The Board disagreed, stating that the statute does not authorize filing of IPRs within a year of being served with a complaint, but instead bars institution of IPRs filed more than a year after service of a complaint.

Loral Space & Communications, Inc. v. ViaSat, Inc., IPR2014-00236, IPR2014-00239, IPR2014-00240
Paper 7: Decision Denying Institution of Inter Partes
Review
Dated: April 21, 2014
Patents 8,107,875; 8,068,827; 8,010,043
Before: Glenn J. Perry, Lynne E. Pettigrew, and Gregg I. Anderson
Written by: Perry
Related Proceeding: ViaSat, Inc. v. Space Systems/Loral, Inc., No. 3-12-cv-00260 (S.D. Cal.)