Takeaway: The service date of an amended complaint for purposes of determining the time bar under 35 U.S.C. § 315(b) is the date the amended complaint is actually filed and served, not when a proposed amended complaint that requires approval from the court is first served as an attachment to a motion for leave.

In its Decision, the Board determined that 35 U.S.C. § 315(b) does not bar institution of the Petitions, that that none of the Petitions should be denied for failure to identify all real parties-in-interest. Patent Owner contended in its Preliminary Response that the Petitions were time-barred as being filed more than one year after the date on which Petitioner, a real party-in-interest, or a privy of Petitioner was served with a complaint alleging infringement of the patent, and that Petitioner failed to identify all real parties-in-interest. Following a conference call, the Board ordered briefing by both parties on the subject.

With regard to the alleged time bar, Patent Owner filed a complaint against Petitioner, alleging infringement of patents related to the ’689 Patent and the ’552 Patent, on June 20, 2012, in the United States District Court for the Western District of Michigan. Patent Owner filed a Motion for Leave to file a Second Amended Complaint alleging infringement of the ’689 Patent and the ’552 Patent on December 20, 2012. The District Court granted the motion for leave on December 26, 2012, and the Clerk of the Court filed the Second Amended Complaint the same day. Petitioner filed the Petitions for these IPR proceedings on December 24, 2013 and December 26, 2013.

Patent Owner contended that the Second Amended Complaint as an attachment to the Motion to Leave was served on Petitioner on December 20, 2012, even though the Second Amended Complaint was not actually filed until December 26, 2012. Petitioner argued that the attachment to the Motion to Leave was merely a proposed complaint, and was not a complaint until the Motion was granted and filed by the Clerk. Thus, Petitioner argued that it was not served until December 26, 2012. Patent Owner disagreed with Petitioner’s argument, stating that because Petitioner gave its consent to file the Second Amended Complaint, leave of court was not required under FRCP 15(a)(2), and thus the Second Amended Complaint was operative immediately upon service via transmission of the Notice of Electronic Filing via the court’s electronic filing system on December 20, 2012. The Board determined that on December 20, 2012, Petitioner was merely served with a Motion for Leave, not a “complaint” for purposes of 35 U.S.C. § 315(b).

With regard to real parties-in-interest, Petitioner certified that TRW Automotive US LLC is the real party-in-interest in these proceedings, even though two other related corporations are also defendants in the district court action. The Board determined that Patent Owner failed to provide sufficient factual basis to conclude that the two other TRW entities should have been identified as real parties-in-interest. Patent Owner merely argued that Petitioner had identified the other two entities as “related to Petitioner,” without providing evidence related to the factors provided in the Office Patent Trial Practice Guide.

TRW Automotive US LLC v. Magna Electronics, Inc.,IPR2014-00293; IPR2014-00294; IPR2014-00296; IPR2014-00297; IPR2014-00298
Paper 18: Decision on Service under 35 U.S.C. § 315(b) and Real Party-In-Interest under 35 U.S.C. § 312(a)(2)
Dated: June 27, 2014
Patent 8,314,689; 8,324,552
Before: Justin T. Arbes, Barry L. Grossman, Bart A. Gerstenblith, Beverly M. Bunting, and Frances L. Ippolito
Written by: Bunting