Addressing whether a petitioner was time-barred or estopped from requesting inter partes review (IPR) based on a newly filed second complaint, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) held that the petitioner was barred from making the request because the IPR petition was filed outside the one-year time-bar set by 35 U.S.C. 315(b), based on a prior complaint. LG Electronics, Inc. v. Mondis Tech. Ltd., Case No. IPR2015-00937 (PTAB, Sept. 17, 2015) (Zecher, APJ).

The petitioner was served with a complaint alleging infringement of the subject patent in 2008 and again in 2014. The pre-America Invents Act (pre-AIA) complaint of 2008 had been previously dismissed, partly with prejudice and partly without. The petitioner contended that it was not time-barred because its IPR petition was filed within one year service of the 2014 complaint, because following dismissal of the 2008 complaint the parties were left in the same legal position as if the complaint had never been served and because and equitable and public policy considerations favor a “broad” interpretation of § 315(b).

The Board declined to read § 315(b) as being subject to a “latest” or “second” complaint, instead explaining that it “interpret[s] ‘a complaint,’ according to the plain language of § 315(b) to simply mean ‘a complaint’,” and that the 2008 complaint was therefore now a time-bar to the IPR petition. The Board also found that the circumstances of the dismissal of the 2008 complaint did not leave the parties in the same legal position as if the 2008 complaint had never been served, because the parties are now prohibited from pursuing the claims (and counterclaims) dismissed with prejudice and are subject to the terms of a settlement agreement. Nor did the Board agree that equitable or public policy considerations favored a “broad” interpretation of the statute, noting that “the purpose of § 315(b) is ‘to ensure that inter parties review is not used as a tool for harassment by repeating litigation and administrative attacks.’” Thus, the Board dismissed the petition without reaching the merits regarding invalidity.

The Board marked its decision in the instant case as “precedential,” meaning that future Board judges must adhere to the ruling in the instant case as long as this ruling is not “overcome by subsequent binding authority.”