Topic: One-year time bar

Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (Sept. 18, 2017) (Paper 13)

Takeaway (1) (Informative): In order to avoid the one-year time bar, a petition must be complete before the bar date. To be complete, a petition must satisfy each of the following requirements: (1) the content of the petition complies with 37 C.F.R. § 42.104, (2) the fee to institute has been paid, see 37 C.F.R. §§ 42.15(a), 42.103(b), and (3) the petition and relevant documents have been served on the patent owner. 37 C.F.R. § 42.105(a).

Takeaway (2): Absent a showing of good cause, the Board will not allow a petitioner to obtain the benefit of the date on which the petitioner filed an incomplete petition.

Takeaway (3): Petitioners should make sure that they have sufficient funds in their Patent and Trademark Office deposit accounts at the time of filing a petition, and, if there are insufficient funds in the account at the time of filing, make a separate attempt to reinitiate payment immediately upon the addition of sufficient funds.

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

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.

TRW Automotive US LLC v. Magna Electronics, Inc., Case No. IPR2014-00293 (June 27, 2014) (Paper 18)

Takeaway(1): For patents added to a pending patent litigation through a motion to amend the complaint, the clock for the 35 U.S.C. § 315(b) one-year time bar starts when the motion is granted (not when the motion is first served).

Takeaway (2): A Patent Owner challenging a petition for failing to identify all real-parties-in-interest must provide a factual basis to support its allegation.