35 U.S.C. § 315(b) requires that an IPR is barred if the petition is filed more than a year after the date which petitioner is served with a complaint alleging infringement of the patent. In Apple Inc. v. Vernetx, Inc. and Science Application International Corporation (Case IPR 2013-00393), the Board addressed the statutory interpretation of the term “complaint” and clarified several issues relating to the effect that subsequent infringement complaints have on earlier-served complaints.
Petitioner was served with a complaint relating to the Patent-at-issue on two occasions — the earlier complaint was served more than one year before Petitioner filed the IPR petition; the latter, less than one year. The Board denied institution because the petition was not timely filed under 35 U.S.C. § 315(b), finding that service of the first complaint started the one-year time bar.
In a follow-up decision on a Motion for Rehearing, the Board made several key points in dispatching Petitioner’s arguments:
(1) Congressional intent does not trump the plain meaning of the statute. Congress made a specific provision (35 U.S.C. § 315(c)) which allowed requests for joinder to be exempted from the time-bar limitation of 35 U.S.C. § 315(b). If Congress intended that § 315(b) time-bar not apply to infringement litigation unless it’s concurrent with the filing of the petition (as Patent Challenger maintained was the case), then it would have explicitly stated so in a similar provision to 35 U.S.C. § 315(c). But, because Congress did not insert such a provision, legislative intent clearly points toward the opposition of Petitioner’s assertion.
(2) Adopting Petitioner’s reading of the statute would lead to undesirable results. If the statute is read to mean that the time-bar does not apply to infringement litigation unless it’s concurrent with the filing of the petition, then a defendant could lose a patent infringement suit and then file for IPR challenging the same patent after the one year time-bar expires. This is clearly not a positive result.
(3) The § 315(b) time-bar applies to any patent issued before, on, or after the enactment of the AIA. The language of the statute is clear on this subject, contrary to Petitioner’s assertion that the time-bar should only apply to actions after the enactment of the AIA.
In short, the § 315(b) time-bar applies to first-served complaint alleging patent infringement.