In wake of the Federal Circuit’s Wi-Fi One decision, the PTAB has designated two of its decisions as informative on the issue of IPR petition timeliness under § 315(b). This statute provides that an IPR may not be instituted if the petition is filed more than 1 year after the date on which the challenger is served with a complaint alleging infringement. In Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc), the Federal Circuit decided en banc that a § 315(b) time bar determination is appealable. The Court distinguished Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), which was “limited to the Director’s determinations closely related to the preliminary patentability determination or the exercise of discretion not to institute.” In contrast, the § 315(b) time bar is a threshold requirement for whether the Director has authority to institute IPR.
Of the two decisions designated as informative, one concluded that an IPR petition was time-barred because the petition fees were not paid prior to the 1-year period provided by § 315(b). Luv N’ Care, Ltd. v. McGinley, IPR2017-01216, Paper 13 (P.T.A.B. September 18, 2017). The other decision decided that a petition was timely because filing a motion to amend a complaint with an amended complaint attached, does not qualify as service of the complaint. Amneal Pharmaceuticals, LLC. V. Endo Pharmaceuticals Inc., IPR2014-00360, Paper 15 (P.T.A.B. June 27, 2014).
In Luv N’ Care, the petition was filed before expiration of the 1-year period provided by § 315(b) and a first attempt was made to pay the filing fee. Petitioner’s account, however, held insufficient funds to pay the fee. Petitioner was notified that the attempted payment had not cleared. On the last day of the 1-year period, sufficient funds were added to the account, but no attempt was made at that time to pay the filing fee. The filing fee was not paid until ten days after the 1-year period had expired and Petitioner provided no explanation for this delay. The Board concluded that, absent a showing of good cause, it would not waive the fee requirement.
In Amneal, the patent owner argued that Amneal’s petition was untimely because it was filed more than one year after patent owner filed a motion to amend the complaint along with a proposed amended complaint asserting the challenged patent. However, the Board determined that this motion did not constitute service because the patent owner had not yet obtained permission to file the proposed amended complaint. The patent owner eventually received permission and filed the amended complaint several days later. Amneal’s IPR petition was filed within one year of the actual filing date of the amended complaint. Thus, Amneal’s petition was timely.
The PTAB has designated these decisions as “informative,” indicating that the decisions provide the PTAB’s general consensus and guidance without being binding on other panels. These informative decisions remind practitioners that a petition does not receive a filing date until the filing is complete, including the PTO receiving the required fee. This requirement may be waived by showing good cause, which may be difficult to show. Although Amneal provides some clarity on when the 1-year period begins, practitioners should err on the side of filing petitions earlier if there is any uncertainty regarding the initial service to ensure that the petition is timely filed.