Amneal Pharmaceuticals, LLC. v. Endo Pharmaceuticals Inc., Case IPR2014-00360, (June 27, 2014) (Paper 15)

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Takeaway (1) (Informative): An amended complaint filed with the court’s leave is not deemed “served” for purposes of 35 USC § 315(b) at the time the motion to amend the complaint and proposed amended complaint were filed and served.

Takeaway  (2) (Informative): An amended complaint filed with the court’s leave is not deemed “served” for purposes of 35 USC § 315(b) until an amended complaint deemed to have been filed by the court is served, which cannot occur before the court grants the motion to amend the complaint.

Summary:

Petitioner Amneal Pharmaceuticals, LLC (“Amneal”), filed a Petition (Paper 1) requesting inter partes review of U.S. Patent No. 8,329,216 (“the ’216 patent”) on January 16, 2014.

More than a year earlier, on January 9, 2013, in a district court patent infringement case that Patent Owner Endo Pharmaceuticals Inc. (“Endo”) brought against Amneal, Endo filed an unopposed motion to amend its complaint to add the ’216 patent. Endo filed its proposed amended complaint together with the motion. The motion and proposed amended complaint were served via the court’s electronic filing system.

On, January 14, 2013, the court granted the motion to amend, but the order granting the motion did not indicate that the amended complaint filed with the motion was deemed entered as of the date of the order. Rather, the court ordered Endo to file the amended complaint “promptly.” The court also ordered that any response by Amneal to the amended complaint be filed by February 14, 2013. On January 17, 2013, Endo filed the amended complaint adding the ’216 Patent. The amended complaint was served via the court’s electronic filing system.

Amneal’s petition would have been deemed untimely if Board determined that the 35 USC § 315(b) one-year time bar began to run on January 9, when the Endo filed and served the motion to amend with the amended complaint, or on January 14, when the court granted the motion to amend.

However, the Board determined that the the 35 USC § 315(b) time bar began to run on January 17, 2013, when Endo filed and served via the electronic filing system the amended complaint adding the ’216 Patent pursuant to the court’s instructions in granting the motion to amend.

The Board noted that Amneal was “‘brought under a court’s authority, by formal process,’ and became ‘obliged to engage in litigation’ in relation to the ’216 patent, on January 17, 2013, … and not beforehand.”

Clint Conner

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).

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