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Time-bar Challenges to IPR under Section 315(b) Can Be Waived

ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NOS. 2019-1059 & 2019-1060)

ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NO. 2019-1061)

Before Moore, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary:  Time-bar challenges to inter partes review (“IPR”) under 35 U.S.C. § 315(b) may be waived if not raised before the Patent Trial and Appeal Board’s (“Board”).

In 2010, Acoustic Technology Inc. (“Acoustic”) sued Itron Inc. (“Itron”) alleging infringement of U.S. Patent Nos. 5,986,574 (“the ’574 patent”) and 6,509,841 (“the ’841 patent”).  In 2017, Silver Spring Networks, Inc. (“Silver Spring”) timely petitioned for IPR of the ’574 and ’841 patents, and the Board instituted IPR.  After institution and while the IPR proceedings were pending, Silver Spring merged with Itron and filed updated mandatory notices that listed Itron as a real-party-in-interest.  Seven months after those mandatory notices were filed, the Board issued final written decisions that found the challenged claims unpatentable.  Acoustic timely appealed, asserting that the petitions were time-barred under section 315(b).

The Federal Circuit affirmed.  The Federal Circuit found that Acoustic waived its time-bar argument when it failed to present the argument to the Board in the seven months between Acoustic’s awareness of Itron as a real-party-in-interest and the Board’s issuance of its final written decisions.  Acoustic attempted to excuse its delay by asserting that the time-bar is a “jurisdictional” issue that may be raised at any time, even on appeal.  The Federal Circuit disagreed, noting that under Federal Circuit precedent there is a distinction between challenges to an agency’s “jurisdiction” and challenges to a federal court’s jurisdiction.  The Federal Circuit held that time-bar challenges to the Board’s jurisdiction are not immune to waiver, and were waived here by Acoustic.

Editor: Paul Stewart