Takeaway: A complaint alleging infringement that is subsequently amended will start the one-year time period under Section 315(b), and an agreement between the parties that the petitioner need not respond to the first complaint will not restart the clock.

In its Decision, the Board denied institution of an inter partes review of the ’122 patent as being time-barred under 35 U.S.C. § 315(b) because Petitioner was served with a complaint alleging infringement of the ’122 patent more than one year before filing the Petition.

Patent Owner filed an amended complaint (“First Amended Complaint”) to add the ’122 patent to an ongoing litigation between the parties on November 14, 2012, soon after the patent issued. Patent Owner contended that the Petitioner was served with the First Amended Complaint on November 20, 2012.  After a related patent was issued, Patent Owner filed another complaint (“Second Amended Complaint”) to add the newly issued patent on January 17, 2013.

The issue before the Board was whether service of the First Amended Complaint constituted being served with a complaint under Section 315(b) in light of the fact that the Second Amended Complaint, also alleging infringement of the ’122 patent, was filed later.

Petitioner argued that the Second Amended Complaint should be the operative complaint for when the clock started on the one-year bar. In support of its position, Petitioner stated that it had agreed not to oppose the Second Amended Complaint, and in return, Petitioner would not need to respond to the First Amended Complaint.  Thus, according to Petitioner, the First Amended Complaint should have no effect.  Petitioner cited cases regarding the effect of amended complaints as well as an IPR proceeding that dealt with dismissals of complaints without prejudice.

The Board was not persuaded. First, the Board noted that an amended complaint is different from a dismissal without prejudice, which leaves the parties as if a complaint was never filed.  Also, citing Patent Owner’s Surreply, the Board noted that according to FRCP 15(c)(1)(B), “an amended complaint ‘relates back to the date of the original pleading’ when the amended complaint ‘asserts a claim . . . in the original pleading.’”  Thus, a complaint that is subsequently amended would have “legal effect.”  Finally, the Board found the agreement between the parties did not nullify the First Amended Complaint.  Rather, it “simply reflects an understanding of a reasonable time frame for Petitioner to respond to a yet-again-revised complaint.”

Because Petitioner was served with a complaint on November 20, 2012 and did not file the Petition until January 16, 2014, the Board denied the Petition under Section 315(b).

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-00361 Paper 14: Decision Denying Institution of Inter Partes Review
Dated: July 25, 2014
Patent 8,309,122, B2
Before: Toni R. Scheiner, Francisco C. Prats, and Jacqueline Wright Bonilla Written by: Bonilla