In proceedings IPR2013-00315 and IPR2013-00316, both captioned BioDelivery Sciences Int'l, Inc. v. MonoSol Rx LLC, the Patent Trial and Appeals Board (PTAB) addressed the question of whether a reexamination certificate reset the one-year deadline for filing a petition for inter partes review (IPR) triggered by the filing of a complaint under 35 U.S.C. § 315(b). The PTAB found the timing deadline does not reset.
On June 12, 2013, petitioner filed two IPR petitions. In
both cases, a complaint alleging infringement of the underlying
patents had been filed in district court almost 20 months prior to
the filing of the petitions. In its petition, petitioner
argued that the petition was timely because issuance of the
reexamination certificate effectively created a new patent in which
none of the claims is substantially identical to the claims in the
patent as originally issued. Petitioner continued that it has
not been served with a complaint alleging infringement of the
claims as amended in reexamination.
The PTAB rejected petitioner's interpretation of the law,
holding that "35 U.S.C. § 315(b) bars a petition filed
more than one year after a complaint alleging infringement was
served on the petitioner, even when the petition challenges claims
amended by a reexamination certificate issued after service of the
complaint." The PTAB's decision focused on several
key points. First, the PTAB clarified that reexamination does
not result in the issuance of a new patent. Instead, a
reexamination certificate incorporates into the patent any proposed
amended or new claim determined to be patentable. Second, the
PTAB emphasized that § 315(b) applies to service of a
complaint alleging infringement of a specific patent, and
not specific claims. Third, to reset the clock under
§ 315(b), service of the complaint triggering the one-year
deadline must be nullified.
While this appears to be the first time the PTAB has addressed § 315(b) in the context of reexamination, the PTAB's decision adds to a growing body of PTAB law that has found service of the complaint triggering § 315(b) must be "nullified" before the one year clock can be restarted. For example, in Accord Healthcare, Inc., USA v. Eli Lilly & Co., IPR2013-00356, PTAB denied institution of an IPR under § 315(b), finding that filing of a later lawsuit does not "nullify" the service of a complaint in an earlier lawsuit involving the same patent. On the flip side, in Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, the PTAB instituted an IPR over § 315(b), finding that voluntary dismissal of an earlier lawsuit nullified the effect of the alleged service of the complaint on petitioner.
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