iTakeaway: Service with a complaint for purposes of the time bar under 35 U.S.C. § 315(b) does not occur when a patent owner files a motion seeking leave of the court to file an amended complaint, even though the motion may include, as an attachment, the proposed amended complaint.
In its Decision, the Board concluded that Petitioner was not time-barred under 35 U.S.C. § 315(b) because it was not “served with a complaint” alleging infringement more than one year before filing the Petition. Patent Owner argued that the Petition was time-barred in its Preliminary Response, and after a conference call, the Board ordered the parties to submit additional briefing on the question. The Board addressed only the time bar issue under 35 U.S.C. § 315(b) in this Decision and indicated that it would address the question of whether to institute an inter partes reviewin a separate decision.
Patent Owner filed a complaint on November 7, 2012 alleging infringement of patents other than the ’216 Patent challenged in this Petition. A First Amended Complaint was filed on November 14, 2012. The ’216 Patent was issued to Patent Owner on December 11, 2012. Thereafter, Patent Owner filed an Unopposed Motion to Amend the Complaint on January 9, 2013. Attached to the Motion to Amend was a copy of a Second Amended Complaint adding the ’216 Patent to Patent Owner’s infringement allegations.
In an Order dated January 14, 2013, the court granted Patent Owner’s Motion. The court stated that “Plaintiff shall file the Second Amended Complaint promptly” and that Petitioner was to file an Answer by February 14, 2013. Patent Owner filed the Second Amended Complaint on January 17, 2013. Petitioner filed the Petition in this proceeding on January 16, 2014.
Patent Owner argued that either the service of the Motion to Amend Complaint, attaching the proposed Second Amended Complaint, on January 9, 2013 or the court granting the Motion on January 14, 2013 constituted service of a complaint on Petitioner for purposes of Section 315(b). Patent Owner cited to the local rules of the Southern District of New York, and particularly, Local Rule 9.1, which states that “[t]ransmission of the [Notice of Electronic Filing] constitutes service upon all Filing and Receiving Users.” Thus, Patent Owner concluded, Petitioner was “served with a complaint” when it was served with the Motion to Amend attaching the relevant complaint.
Petitioner did not dispute that it was served with a Motion to Amend on January 9, 2013 attaching a “proposed” Second Amended Complaint. Petitioner argued that such service could not trigger the time bar under Section 315(b) as Patent Owner had no legal right to file or serve the Second Amended Complaint until the court granted leave. Petitioner cited to Federal Rule of Civil Procedure 15(a)(2), which permits the filing of an amended pleading “once as a matter of course” and requires consent or court’s leave for additional amended pleadings. Thus, Petitioner argued that the one-year period under Section 315(b) began on January 17, 2013 when the Second Amended Complaint was actually filed and served.
In Patent Owner’s Surreply, it cited to district court cases in which deadlines dependent upon dates of service were determined based on the date the court granted a motion to amend a complaint. Thus, it argued the filing of the Motion to Amend constituted service. Patent Owner also argued that the Second Amended Complaint had legal effect as of January 14, 2013, because the court ordered Petitioner to respond to it by February 14, 2013, and that service of the Complaint was authorized before it was actually filed because Petitioner expressly consented to its filing.
The Board first held that Patent Owner’s filing of the Motion to Amend did not constitute service with a complaint of the ’216 Patent because the filing merely sought permission to file a Second Amended Complaint. The attachment was only a proposed complaint and “Petitioner was not yet a defendant in a lawsuit with respect to the ’216 Patent.” With respect to FRCP 15(a)(2) and Petitioner’s consent to the filing of the Second Amended Complaint, the Board noted that it was undisputed that Patent Owner requested leave in this case. Therefore, despite any prior consent by Petitioner, it was in the court’s discretion to make Petitioner a defendant with respect to the ’216 Patent.
With respect to the court’s order granting Patent Owner’s Motion to Amend, the Board held that the order did not constitute service with a complaint. Rather, the order merely specified the timing in which the Second Amended Complaint was to be filed – “promptly.” The court did not indicate that it had been filed or served. Therefore, Petitioner was not “brought under a court’s authority, by formal process” such that it was “obliged to engage in litigation” regarding the ’216 Patent until January 17, 2014 when Patent Owner filed the Second Amended Complaint.
Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-00360
Paper 15: Decision on Service Under 35 U.S.C. § 315(b)
Dated: June 27, 2014
Patent 8,329,216 B2
Before: Toni R. Scheiner, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla
