Alleging Infringement in Arbitration Does Not Trigger the Limitations Period for Seeking Inter Partes Review: PTAB | Practical Law

Alleging Infringement in Arbitration Does Not Trigger the Limitations Period for Seeking Inter Partes Review: PTAB | Practical Law

In Amkor Technology, Inc. v. Tessera, Inc., the US Patent Trial and Appeal Board (PTAB) held that asserting a patent infringement claim in an arbitration proceeding does not trigger the one-year statutory deadline in 35 U.S.C. § 315(b) for seeking inter partes review of the asserted patent.

Alleging Infringement in Arbitration Does Not Trigger the Limitations Period for Seeking Inter Partes Review: PTAB

by Practical Law Intellectual Property & Technology
Published on 06 Feb 2014 • USA (National/Federal)
In Amkor Technology, Inc. v. Tessera, Inc., the US Patent Trial and Appeal Board (PTAB) held that asserting a patent infringement claim in an arbitration proceeding does not trigger the one-year statutory deadline in 35 U.S.C. § 315(b) for seeking inter partes review of the asserted patent.
On January 31, 2014, in Amkor Technology, Inc. v. Tessera, Inc., the US Patent Trial and Appeal Board (PTAB) held that alleging patent infringement in an arbitration proceeding does not trigger the one-year time period under 35 U.S.C. § 315(b) for seeking inter partes review (IPR) of the patent (Case IPR2013-00242 (PTAB Jan. 31, 2014)).
The following dates are relevant to the PTAB's decision:
  • 1996: The parties, Amkor Technology (Amkor) and Tessera, enter into a 15-year license agreement granting Amkor rights to use the technology in Tessera's US Patent No. 6,046,076 ('076 patent).
  • 2009: Amkor initiates an arbitration proceeding to resolve a dispute concerning the royalty payments due under the agreement and Tessera files a counterclaim alleging that Amkor may infringe the '076 patent.
  • July 5, 2012: The arbitration tribunal finds that:
    • Amkor failed to pay Tessera appropriate royalties under the agreement; and
    • Tessera terminated the license agreement on February 17, 2011.
  • July 6, 2012: Tessera files a complaint against Amkor in the US District Court for the District of Delaware alleging infringement of the '076 patent.
  • April 9, 2013: Amkor files a petition for IPR of certain claims of the '076 patent with the USPTO and the PTAB institutes IPR on all but three of the challenged patent claims.
  • November 5, 2013: Tessera files a motion to terminate the IPR under Section 315(b) because the IPR petition was filed more than one year after Tessera alleged infringement in the arbitration proceeding.
35 U.S.C. § 315(b) precludes a party from seeking IPR of a patent more than one year after the party or its privy "is served with a complaint alleging infringement of the patent." The PTAB denied Tessera's motion to terminate the IPR and held that the one-year deadline in Section 315(b) applies only to civil actions for patent infringement under 35 U.S.C. § 271 and 35 U.S.C. § 281, not to infringement claims in arbitration proceedings. In reaching its decision, the PTAB:
  • Considered the plain language of Section 315(b) and found that:
    • the terms "complaint" and "served" ordinarily refer to a civil action, not to an arbitration proceeding;
    • the PTAB has interpreted "served with a complaint" to mean the formal delivery of a complaint in a civil action; and
    • narrowly interpreting Section 315(b) complies with the Supreme Court's decision in BP America Production Co. v. Burton, which interpreted the terms "action" and "complaint" to mean a lawsuit filed in court (549 U.S. 84 (2006)).
  • Considered the legislative history of Section 315(b) and found that:
    • nothing in the legislative history of the America Invents Act justifies departure from the plain meaning of Section 315(b); and
    • the Congressional record confirms that the triggering event under Section 315(b) is the filing of a patent infringement complaint in a civil action.
  • Emphasized that Section 315(b) is an exception to instituting an IPR and should be narrowly construed.