The AIA prohibits the filing of an IPR petition more than one year after "the petitioner is served with a complaint alleging infringement of the patent" at issue. 35 U.S.C. § 315(b). In a recent decision, the PTAB found that a counterclaim was equivalent to a complaint in triggering the one-year time bar of § 315(b).
Responding to St. Jude's claim of patent infringement, Volcano served an answer and a counterclaim alleging that St. Jude infringed U.S. Patent 7,134,994. Two and a half years later, St. Jude filed a petition to institute an IPR challenging the validity of the '944 patent. In determining whether to institute the IPR, the PTAB considered whether a counterclaim alleging infringement counts as a "complaint alleging infringement" within the meaning of 35 U.S.C. § 315(b).
St. Jude argued that a complaint and a counterclaim are separate pleadings under the Federal Rules of Civil Procedure, and because it was never served with a complaint per se, the one year clock never started. The PTAB disagreed with St. Jude and found that a complaint and a counterclaim "bear marked similarities" that render them equivalent with respect to § 315(b). The PTAB also dismissed St. Jude's argument that the pleadings are treated differently under § 315(a)(3), finding that the distinction is limited to subsection § 315(a). The PTAB further rejected St. Jude's argument that Congress intended a narrow construction of "served with a complaint" in § 315(b) because it used the broader language, "charged with infringement," when it intended to encompass allegations beyond those made when a civil action is commenced. Looking to the legislative history of the AIA and the statutory definition under 37 C.F.R. § 41.302(a), the PTAB noted that Congress used the term "charged with infringement" in the context of covered business method patents to extend standing to parties who had not yet been sued and thus it had no bearing on § 315(b).
The Board stated that the purpose of the one-year bar was to prevent IPR from being used as a "tool for harassment" in "repeated litigation and administrative attacks." Noting that a narrow construction of § 315(b) would "leave a patent open to serial attack," the PTAB held that the "complaint alleging infringement of the patent," as used in § 315(b), encompassed counterclaims alleging infringement of the challenged patent. Because St. Jude was served with Volcano's counterclaim more than one year before the filing of the IPR petition, its petition was barred.
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