The United States Patent Trial and Appeal Board (“PTAB”) recently interpreted what constitutes a “trigger” under 35 U.S.C. § 315(b). The PTAB concluded that under the statute, a “complaint alleging infringement of the patent” does not include arbitration proceedings.
Amkor Tech., Inc. (“Amkor”) and Tessera, Inc. (“Tessera”) executed a license agreement in 1996 (“Agreement”) under which Amkor had rights to use Tessera technology covered by U.S. Patent No. 6,046,076 (“the ‘076 patent”) in exchange for the payment of royalties. In 2009, a dispute arose regarding the payment of royalties under the Agreement. Amkor availed itself to the arbitration provision in the Agreement and initiated an arbitration proceeding seeking declaratory relief that it was fully compliant with the terms of the Agreement. In its answer to Amkor’s arbitration request, Tessera included counterclaims for patent infringement. In July 2012, the arbitration tribunal found that Amkor did fail to pay royalties on certain products covered by claims of the ‘076 patent.
Immediately following the arbitration, Tessera filed a complaint against Amkor in the United States District Court for the District of Delaware alleging infringement of the ‘076 patent. In April 2013, less than one year after Tessera initiated the District Court action, but over three years after the inititation of the arbitration, Amkor filed a petition with the United States Patent and Trademark Office (“USPTO”) requesting inter partes review of the’076 patent (“IPR”). Tessera subsequently filed a motion to terminate the IPR on the grounds that it was “filed more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent.” Tessera based its motion on the fact that its allegation of infringement raised as a counterclaim in the prior arbitration proceeding occurred more than one year prior to the IPR, thus triggering the one-year bar under 35 U.S.C. § 315(b).
Title 35, section 315, part b of the United States Code provides:
PATENT OWNER’S ACTION. — An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
The PTAB began its analysis with the plain language of the statute. It determined that the key terms of the statute, “complaint” and “served,” “are used ordinarily in connection with a civil action, not an arbitration proceeding.” The PTAB relied on Black’s Law Dictionary’s (“Black’s”) definition of “complaint,” “serve” and “service.” Black’s defines “complaint” as “[t]he initial pleading that starts a civil actions and states the basis for the court’s jurisdiction, the basis for the plaintiff’s claim, and the demand for relief.” The term “serve” is defined as “[t]o make legal delivery of (a notice or process)” and the term “service” as “[t]he formal delivery of a writ, summons or other legal process.” The PTAB also relied on a prior decision where it held that “served” under § 315(b) required that the petitioner be served with a summons and be named a defendant in a law suit. It concluded that, based on the plain meaning, “the action required to trigger the time period under section 315(b) occurs in the context of a civil action, not an arbitration proceeding.”
The PTAB found further support in what the statue does not say. It found that other sections of the patent statute expressly use the term “arbitration” or “proceeding” when referencing non-judicial remedies. However, § 315(b) makes no reference to an arbitration or a “proceeding” and thus, cannot be a trigger of the time bar.
Finding that Tessera failed to overcome the plain meaning of the statutory text of § 315(b), the PTAB denied Tessera’s motion.
Gibbons will continue to track future developments stemming from this case.