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).
A Patent Owner challenging a petition for failing to identify all real-parties-in-interest must provide a factual basis to support its allegation.
Summary (Precedential) :
Petitioner TRW Automotive US LLC (“TRW”) filed two separate IPR petitions challenging claims of U.S. Patent No. 8,314,689 (the ’689 Patent) on December 24, 2013, and three separate IPR petitions challenging claims of U.S. Patent No. 8,324,552 (“the ’552 Patent”) on December 26, 2013. In its Preliminary Patent Owner Responses, Patent Owner Magna Electronics, Inc. (“Magna”) argued that the petitions should be denied under the 35 U.S.C. § 315(b) one year time bar.
On June 20, 2012, Magna had filed a patent infringement suit against TRW in federal district court. On December 20, 2012, Magna filed and served a motion for leave to file a second amended complaint that alleged, for the first time, infringement of the ’689 and ’552 Patents. (Note, however, that the original and first amended complaints both alleged infringement of a patent directly related to the ’689 and ’552 Patents.) On December 26, 2012, the court granted Magna’s motion to file the second amended complaint.
The Board decided that the § 315(b) one-year time bar did not apply with respect to the ’689 and ’552 patents, because the § 315(b) clock did not begin to run until the date on which the court granted Magna’s motion to file the second amended complaint (December 26, 2012) (i.e., the § 315(b) clock did not begin on the filing date of the earlier complaints asserting related patents or when Magna filed its motion for the second amended complaint). The Board cited Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347 (1999) for the “bedrock principle” that “an entity named as a defendant is not obliged to engage in litigation unless . . . brought under a court’s authority, by formal process.”
In its petitions, TRW identified itself as the sole real party-in-interest and two co-defendants in the parallel district court litigation –TRW Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. – as “corporations related to Petitioner.” Magna argued that “[t]hese contradictory statements call into question the true identities of the real parties in interest” and that TRW Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. should have been listed as real-parties-in-interest. However, the Board denied Magna’s challenge, concluding that that Magna did not provide sufficient factual basis for the Board to conclude that the two other TRW entities were RPIs (the “related to” statement, in and of itself, did not contradict TRW’s representation that it was the sole RPI.)