LG Elecs., Inc. v. Mondis Tech. Ltd.

When a petitioner was served with a complaint alleging infringement of the patent more than one year before the petition was filed, the Board cannot institute inter partes review under 35 U.S.C. § 315(b), even though a later complaint on the same patent was served within one year; the statute's reference to "a complaint" is read per its plain language and not limited to the latest complaint. A dismissal of the earlier complaint partly with prejudice and partly without prejudice does not leave the parties as though the action had never been brought, so the earlier service still triggers the bar. The Board cites Oracle Corp. v. Click-to-Call Techs., LP (a complaint dismissed entirely without prejudice) and distinguishes it, and follows Microsoft Corp. v. Virnetx Inc. for a hybrid dismissal; the text shows no overruling. Petitioners cannot rely on a recent re-filed complaint to restart the one-year clock when an earlier complaint on the same patent was served more than a year before, and they cannot argue the bar is avoided just because part of the earlier dismissal was without prejudice. Patent owners gain a firm timing defense: the first service of a complaint alleging infringement of the patent starts the clock, and a later suit on the patent does not reopen the window. The Board relied on the statutory text of § 315(b) and on the purpose of preventing harassment through repeated litigation and administrative attacks, as stated in Loral Space & Comms., Inc., v. ViaSat, Inc.; the text cites no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 315(b), an inter partes review may not be instituted if the petition is filed more than 1 year after the date on which the petitioner, real party in interest, or privy is served with a complaint alleging infringement of the patent. The Board reads "a complaint" by its plain language, without inserting "latest" or "second". For a dismissed complaint, it asks whether the dismissal left the parties in the same legal position as if the action had never been brought. TRIGGERING FACTS: LG was served with a complaint alleging infringement of the '088 patent on January 11, 2008, and with a second complaint on October 16, 2014. The Petition was filed March 27, 2015, more than one year after the 2008 service but less than one year after the 2014 service. The 2008 action was dismissed with prejudice as to computer monitor claims and without prejudice as to remaining Unreleased Products. The parties had a settlement agreement, and the district court retained jurisdiction to enforce it. KEY QUOTE: "We decline LG’s invitation to amend § 315(b) by inserting either “latest” or “second” into the statute." (Paper 8, p. 5) PRIOR PRECEDENT AFFECTED: Follows Microsoft Corp. v. Virnetx Inc., Case IPR2014-00401, slip op. at 6–7 (PTAB July 23, 2014) (Paper 10), where a complaint dismissed both with and without prejudice triggered the bar. Distinguishes Oracle Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312, slip op. 4 (PTAB Dec. 18, 2013) (Paper 40), where the entire complaint was dismissed without prejudice. Also cites Loral Space & Comms., Inc., v. ViaSat, Inc., Case IPR2014-00236, 239, 240, slip op. at 8 (PTAB Apr. 21, 2014) (Paper 7) for the purpose of § 315(b). PRACTICE TIP: Before filing a petition, identify the date of service of every complaint alleging infringement of the patent, including old suits that were dismissed or settled, and measure the one-year period from the earliest service. Do not assume that a recent complaint or a partial dismissal without prejudice resets the clock. A patent owner should raise the earlier service date in its preliminary response.