In response to a patent owner’s post-institution motion to terminate an inter partes review (IPR) proceeding, an expanded panel of the Patent Trial and Appeal Board (PTAB) gave further definition to the triggering events of the time bar under 35 U.S.C. § 315(b), concluding that the statute does not apply to arbitration proceedings. Amkor Technology, Inc. v. Tessera, Inc., Case CBM2013-00242 (PTAB, Jan. 31, 2014). (De Franco, APJ)
Petitioner Amkor filed for IPR of a Tessera patent on 18 grounds. The claimed invention relates to a method and apparatus for encapsulating semiconductor chips and related assemblies by adjusting ambient pressure during application and curing of an encapsulant material. In its preliminary response, Tessera argued that Amkor was served with a “complaint” that came within the ambit of 35 U.S.C. § 315(b) by way of Tessera’s response to Amkor’s request for arbitration in 2009. Tessera contended that its response to the arbitration demand, specifically asserted that Amkor continued to infringe the patent. The Board instituted the IPR on most, but not all, grounds of view. After Tessera’s petition for rehearing of the decision to institute the proceeding was denied, Tessera filed a motion to terminate the proceeding.
The Board also denied Amkor’s petition for rehearing of the institution decision on fewer than all asserted grounds, noting that it was not necessarily bound by the Manual of Patent Examining Procedure (MPEP) provision cited by Amkor regarding the cumulative nature of technical references. The Board found unpersuasive Amkor’s argument that not instituting the IPR on all of the proffered grounds of invalidity was unjust due to estoppel considerations, with the Board noting the competing demands of speedy and inexpensive resolution and providing dispositive determinations of the patentability of claims all within the § 42.1(b) statutory one-year time frame.
Responding to Tessera’s motion to terminate the IPR, the Board held that the earlier arbitration, including Tessera’s allegation of infringement, did not operate as a trigger for the § 315(b) one-year time period for filing. According to the Board, in the context of § 315(b), the “action” by the patent owner that triggers the one-year filing deadline is service of a complaint alleging infringement of the patent. The Board noted that the key terms of that statute, “complaint” and “served,” are ordinarily used in connection with a civil action, not arbitration proceeding. The Board also noted that (unlike § 315(b)) other sections of Title 35 that were introduced by the American Invents Act (AIA) specifically addressed arbitration proceedings, such as the provision dealing with derivation proceedings. The Board concluded “[t]hus, had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of § 315(b), it would have used more encompassing language than Patent Owner’s Action and served with a complaint, which are harmonious with a civil action.” The Board reasoned that the plain meaning of the term “action” in the narrowing context of the phrase “served with a complaint” dictates an interpretation that limits its applicability, consistent with Supreme Court precedent, to when the patent owner brings a civil action for patent infringement.