Patent Office Clarifies One-Year Deadline for Validity Challenges

By Peter Leung

The Patent Trial and Appeal Board, the patent office body that decides validity challenges, Jan. 10 selected two decisions to provide guidance on petition-filing deadlines.

Both earlier decisions—designated as informative—concern the time bar for filing inter partes reviews, which give challengers a relatively quick way to attack patents outside of court. Challengers that have been sued for infringement must file their IPRs within a year of being served with a complaint. Informative decisions, though not binding, are influential.

The designations follow a U.S. Court of Appeals for the Federal Circuit opinion holding that decisions regarding the one-year time bar can be appealed in court. PTAB decisions on whether to institute trial in IPRs are generally not appealable, but the full Federal Circuit’s ruling in Wi-2 Fi One, LLC v. Broadcom Corp. is an exception to that rule.

Completed Payment Required

In Luv’n Care Ltd v. McGinley, the PTAB refused to take up the IPR because the challenger, even though it filed its petition before the one-year deadline, didn’t pay the required filing fees until after.

Luv’n Care Ltd., which challenged a patent related to a liquid container with flexible walls, tried to pay the fees on the day it filed its petition but didn’t have enough money in its account. The Patent and Trademark Office’s electronic filing system sent a message saying that the payment hadn’t cleared, but Luv’n Care didn’t make its payment until April 11, 2017, 10 days later.

Because a petition doesn’t get a filing date until it’s filed and the full fee paid—meaning received and not just tendered—Luv’n Care’s petition wasn’t officially filed until April 11, more than a year after it was served with a complaint in district court, the board said.

Proposed Complaint Not Enough

The second decision involves Amneal Pharms. LLC’s plans to introduce a generic version of Endo Pharms Inc.’s crush-resistant opioid pill. Endo in Nov. 2012 sued Amneal for infringing other patents covering the drug but not U.S. Patent No. 8,329,216, which was the patent challenged in the IPR.

On Jan. 9, 2013, Endo asked for permission to add infringement allegations involving the ‘216 patent, and in its moving papers included a copy of the proposed new complaint. The court granted the request, and Endo filed and served Amneal the new complaint on Jan. 17, 2013. Amneal’s IPR, filed Jan. 14, 2014, was within the one-year deadline, the PTAB said.

Endo argued that the one-year deadline started when it moved to amend its complaint on Jan. 9, because it served that motion on Amneal with a copy of the proposed amended complaint. However, the PTAB rejected the argument, because the complaint wasn’t served until Jan. 17. Endo only served a proposed amended complaint on Jan. 9, and Amneal wasn’t officially sued for infringing the patent until Jan. 17, the PTAB said.

Judge Lynne H. Browne wrote the decision in Luv’n Care v. McGinley, which Judges Susan L. C. Mitchell and James J. Mayberry joined. Erickson Kernell IP LLC represented McGinley, while Nubylaw represented McGinley.

Judge Jacqueline Wright Bonilla wrote the decision in Amneal Pharms. LLC v. Endo Pharms. Inc., which Judges Toni R. Scheiner and Francisco C. Prats joined. Sterne, Kessler, Goldstein & Fox PLLC represented Amneal, while Mayer Brown LLP represented Endo.

The cases are Luv’n Care Ltd v. McGinley , P.T.A.B., No. IPR2017-01216, designated informative 1/10/18 and Amneal Pharms. LLC v. Endo Pharms. Inc. , P.T.A.B., No. IPR2014-00360, designated informative 1/10/18 .

To contact the reporter on this story: Peter Leung in Washington at pleung@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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