The time bar in Section 315(b) says that IPR may not be instituted if the petition was filed more than one year after the petitioner was "served with a complaint alleging infringement of the patent." A recent PTAB decision illustrates that petitioners should be wary of stepping over that line, even if there is a dispute about the patent owner's proof of service.
In Ecometal v. Terves, IPR2020-01620, the petitioner admitted that it received the patent owner's complaint more than a year before filing the IPR petition. But the petitioner disputed that service was proper and argued that the patent owner had not filed in the court the proof of service that the Federal Rules of Civil Procedure require.
The PTAB was not convinced that the service was improper. Nor was the PTAB convinced that failing to file the required proof in court would impact whether proof of service existed sufficient to know when the one-year time bar started.
Notably, the PTAB recognized that the petitioner's late filing might have been avoided had the patent owner promptly filed the required proof of service stating when the patent owner felt service had occurred. But the PTAB explained that the petitioner had received the complaint and so "bore the risk" that the patent owner could prove that service occurred at that date.
Takeaways:
- Petitioners should avoid taking risks with the one-year time bar, if possible. Given the limited opportunities for judicial review of the PTAB's institution decision—especially when the PTAB denies institution, as recently address in Mylan v. Janssen, No. 2021-1071, 2021 WL 936345, at *5 (Fed. Cir. Mar. 12, 2021)—petitioners should not rely on getting another chance to prove inadequate service.
- For patent owners, this case should not be an excuse to relax about collecting proof of adequate service. Here, the PTAB was influenced by the petitioner's admission that it had received the complaint. Had the PTAB found the petitioner's arguments about improper service more convincing, there might have been a different result.
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