Amneal Pharmaceuticals, LLC. v. Endo Pharmaceuticals Inc.

Informative decision only: persuasive authority, not binding precedent. When a patent owner serves a motion for leave to amend its district court complaint with a proposed amended complaint attached, and the court has not yet granted leave and the amended complaint has not been filed, the petitioner has not been "served with a complaint alleging infringement of the patent" under 35 U.S.C. § 315(b), so the one-year bar does not begin on service of the motion. Nor does the order granting leave start the clock; the period began when the patent owner actually filed the amended complaint, which made the petitioner a defendant as to the newly asserted patent. No prior precedent directly addressed this issue as an informative or precedential matter; the Board followed its own earlier decision in Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 (Jan. 30, 2013), and applied Supreme Court authority. For petitioners, a motion to amend with an attached proposed complaint does not start the one-year clock, so the § 315(b) deadline can be measured from the later actual filing and service of the amended complaint. For patent owners, the argument that serving a proposed pleading triggers the bar will fail where leave was sought but not yet granted and the pleading was not yet filed. The Board relied on Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347 (1999), for the principle that a named defendant is not obliged to engage in litigation until brought under the court's authority by formal process. LEGAL TEST OR STANDARD: The Board asked whether the petitioner was "served with a complaint" alleging infringement of the patent under 35 U.S.C. § 315(b) more than one year before the petition was filed. It considered the statute, local court rules and the Federal Rules of Civil Procedure, and asked whether the petitioner was officially a defendant, brought under the court's authority by formal process, as to the patent at issue. TRIGGERING FACTS: The patent issued December 11, 2012. On January 9, 2013, the patent owner served an unopposed Rule 15(a) motion to amend with a proposed Second Amended Complaint attached as an exhibit, and the court's electronic notice went to petitioner. The court granted the motion on January 14, 2013, ordering that the complaint be filed promptly. The patent owner filed the Second Amended Complaint on January 17, 2013, and the petition was filed January 16, 2014, within one year of that filing. KEY QUOTE: "The attachment to the Motion was merely a proposed complaint, not an actual “complaint” within the meaning of § 315(b)." (Paper 15, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20, 5 (Jan. 30, 2013), on the one-year period not starting before a petitioner is officially a defendant in a lawsuit. PRACTICE TIP: Petitioners should calculate the § 315(b) date from the filing and service of the actual amended complaint, not from a motion to amend with a proposed pleading. They should document the docket dates (motion, order granting leave, filing) in the petition or briefing. Patent owners asserting the bar should show that an actual complaint was filed and served, not merely a proposed one.