IP Newsflash

The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent infringement against a seller of accused lighting products. The PTAB concluded that the seller was a real party in interest (RPI) to petitioner based on an indemnification relationship between the two entities. Therefore, institution of the petition was time-barred because petitioner filed the petition more than a year after an RPI had been served with a complaint.

The Patent Trial and Appeal Board has denied institution and joinder of an inter partes review petition after determining that the petition was not only time-barred but that joinder was also foreclosed. In making its determination, the board found that the concurrent motion for joinder was not proper because the IPR proceeding sought to be joined had just been terminated due to settlement.

The Patent Trial and Appeal Board held that service of a bare complaint without exhibits did not trigger the one-year time bar under 35 U.S.C. § 315(b), which requires the filing of a petition for inter partes review within one year after being served with a district court complaint alleging patent infringement. Although the petitioner’s request for an inter partes review was more than one year after the date of service, the Board found it was not untimely.

The Central District of California recently granted a defendant’s motion for an exceptional case finding and attorney’s fees under 35 U.S.C. § 285. The court held that it could award fees for conduct taking place not only in the district court, but also in a related inter partes review before the Patent Trial and Appeal Board and subsequent appeal before the Federal Circuit. The court found that the plaintiff’s improper and unreasonable conduct in all three venues justified an award of fees.

The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for infringement. The court further held that the patent owner was precluded from relying on the petitioner’s waiver of service because it did not raise that argument to the Patent Trial and Appeal Board.

A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b).

The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the petitioner, ON Semiconductor, and Fairchild Semiconductor Corporation, even though the ON-Fairchild merger became final after the IPR was filed.

The Patent Trial and Appeal Board has denied a Petitioner’s request for institution of inter partes review (IPR) of claims that were added during ex parte reexamination because it found the IPR petitions were time-barred under § 315(b).