TRW Auto. U.S. LLC v. Magna Elecs., Inc.

Informative decision only: persuasive authority, not binding precedent. When a patent owner serves a motion for leave to file an amended complaint with the proposed complaint attached, and the court has not yet granted leave, 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 start on that service. Separately, a petitioner's statement that other entities are "related to Petitioner" does not by itself contradict its real-party-in-interest certification, and a patent owner must supply a sufficient factual basis to show that additional real parties in interest should have been named under § 312(a)(2). No prior precedent directly addressed this issue as the decision shows; the Board relied on its own earlier Motorola Mobility decision and on Supreme Court authority. For petitioners, a motion for leave with an attached proposed amended complaint does not start the § 315(b) clock, so the bar runs from service of the actual complaint, and merely calling other entities "related" does not create a real-party-in-interest problem. For patent owners, serving a proposed amended complaint, even with the defendant's consent, will not trigger the bar, and a § 312(a)(2) challenge needs facts such as control, funding or direction of the proceeding, not speculation. 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 a court's authority by formal process, and the decision limits its holding to its facts. LEGAL TEST OR STANDARD: Section 315(b) bars institution if the petition 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 Board asked whether the attachment to a motion for leave was an actual "complaint" or merely a proposed complaint, and whether the petitioner was officially a defendant, brought under the court's authority by formal process, as to the challenged patents. For real parties in interest, § 312(a)(2) requires that "the petition identifies all real parties in interest"; the Trial Practice Guide factors include whether a non-party exercises control over, funds, or directs the petitioner's participation in the proceeding. TRIGGERING FACTS: Patent Owner sued Petitioner in W.D. Mich. in June 2012 and filed a First Amended Complaint in July 2012. On December 20, 2012, it filed and electronically served a consented motion for leave to file a Second Amended Complaint, attached as Exhibit A, adding the newly issued patents. The court granted leave on December 26, 2012, and the Clerk then filed the complaint. Petitions were filed December 24 and 26, 2013, within one year of the grant but more than one year after the motion. On real parties in interest, the petitions named only TRW Automotive US LLC but described two other defendants as "related to Petitioner," and the Patent Owner offered no facts showing control, funding or direction. KEY QUOTE: "The attachment to the Motion for Leave was merely a proposed complaint, not an actual "complaint" within the meaning of § 315(b)." (Paper 18, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Motorola Mobility LLC v. Arnouse, Case IPR2013-00010, slip op. at 5 (PTAB Jan. 30, 2013) (Paper 20), for the point that Congress did not intend the one-year period to start before a petitioner is officially a defendant, and relied on Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347 (1999). PRACTICE TIP: Patent owners seeking a § 315(b) bar should not rely on service of a motion for leave with a proposed amended complaint. They should identify the date the actual complaint was served or the amendment took effect, and, for real-party-in-interest challenges, plead concrete facts of control, funding or direction. Petitioners should still state precisely how any listed related entities relate to them, and should serve papers by a method that complies with 37 C.F.R. § 42.6(e).