Discussion Board

PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues

Team Contact: Andrew B. Turner, John P. Rondini

The PTAB recently designated two decisions as informative that concern the time bar to filing an inter partes review (IPR). Under 35 U.S.C. § 315(b), “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 periodically designates one of its decisions as “informative” for several reasons, including that they illustrate norms on recurring issues, guidance on issues of first impression, or guidance on PTAB rules and practices. See PTAB Standard Operating Procedure No. 2 (Rev. 9, Sept. 22, 2014).

Luv N’ Care, Ltd. v. McGinley: IPR Filing Date When Petitioner’s Deposit Account Lacks Sufficient Funds

The first new informative decision, Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13), concerns the filing date provision of 35 U.S.C. § 315(b), when a petitioner has insufficient funds in its account to cover the IPR petition filing fee.

The Board determined that the IPR petition was not timely filed under 35 U.S.C. § 315(b), because payment was late, and denied institution. The filing date under § 315(b) does not occur until the USPTO receives the filing fee, which in this case was 10 days after the petition was filed and more than one year after the service date. The Board also denied the petitioner’s motion to assign an earlier filing date to the petition after determining that the petitioner failed to show good cause for waiving the fee requirement.

This decision serves as a reminder for petitioners to monitor the balance of deposit accounts and pay attention to any warning messages during filing, such as “Your Payment Has Not Been Cleared for AIA Review . . . ! Please call system administrator with any questions[.]”

The informative decision is available for download HERE.

Amneal Pharmaceuticals, LLC: Prior Infringement Claim Presented in Amended Complaint

The second new informative decision, Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15), concerns the service date provision of 35 U.S.C. § 315(b), when a patent challenged in a IPR was previously added to a district court infringement action by an amended complaint.

The Board determined that the petition was timely filed under 35 U.S.C. § 315(b) because filing a motion to amend the complaint in district court (to add a patent later challenged in an IPR), with an amended complaint attached, does not constitute service. Also, the district court’s order granting the motion does not constitute service.  Rather, service under § 315(b) does not occur until the patent owner actually files its amended complaint after the district court grants leave to file the amended pleading.

The informative decision is available for download HERE.