By Matthew L. Cutler, Principal
In a speedy dismissal of Patent Challenger’s arguments, Accord Healthcare was deemed time-barred from bringing an inter partes review, in a case styled as Accord Healthcare, Inc., USA v. Eli Lilly & Co. (IPR2013-00356), involving U.S. Pat. No. 7,772,209.
The relevant underlying facts of this decision included the fact that the petition seeking IPR was filed by Accord on June 13, 2013. Also, two lawsuits involving the ’209 patent were filed by Patent Owner against Petitioner. The first was served on January 23, 2012 – more than one year prior to the filing of the present IPR petition – and the second was served on March 7, 2013 – less than one year prior to the filing of the present petition. In its Preliminary Response, Patent Owner argued that the petition was barred by 35 USC § 315(b), which requires that any petition seeking inter partes review be filed before the expiration of one year from the date that a complaint alleging infringement of a patent has been served.
35 USC § 315(b) – PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
Patent Challenger argued that its petition was filed less than one year after the date on which the complaint in the second action was filed and, because the two infringement actions involve distinct products, the IPR petition was timely filed. The Board rejected Petitioner’s argument, stating that the “plain language of the statute does not indicate or suggest that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a nullity.” Order at 3. Accordingly, the Board denied the Petition.