Paper 14
`Trials@uspto.gov
`571-272-7822 Entered: July 25, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ENDO PHARMACEUTICALS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`____________
`
`
`
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 25, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ENDO PHARMACEUTICALS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`____________
`
`
`
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Amneal Pharmaceuticals, LLC filed a Petition (Paper 1,
`
`“Pet.”) requesting inter partes review of U.S. Patent No. 8,309,122 B2 (“the
`
`’122 patent”) on January 16, 2014. Patent Owner Endo Pharmaceuticals Inc.
`
`filed a Preliminary Response (Paper 7, “Prelim. Resp.”) asserting, inter alia,
`
`that the Petition is time-barred under 35 U.S.C. § 315(b), which provides
`
`that an inter partes review may not be instituted based on a petition “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.” 35 U.S.C. § 315; see Prelim. Resp. 7-11.
`
`Following a conference call on May 7, 2014, among respective
`
`counsel for Petitioner and Patent Owner, we ordered the parties to submit
`
`additional briefing to “address Patent Owner’s contention that it served
`
`Petitioner with a relevant complaint on November 20, 2012, when Patent
`
`Owner served Petitioner an amended complaint (Ex. 2002; Ex. 2003).”
`
`Paper 9, 2-3. Thereafter, Petitioner filed a Reply Brief addressing the issue
`
`(Paper 11, “Reply”), and Patent Owner filed a Surreply (Paper 13,
`
`“Surreply”).
`
`Based on the record before us, for the reasons that follow, we deny the
`
`Petition under § 315(b).
`
`II.
`
`BACKGROUND
`
`We consider arguments raised in Patent Owner’s Preliminary
`
`Response challenging whether Petitioner timely filed its Petition for inter
`
`partes review of the ’122 patent. Prelim. Resp. 1, 7-11. Patent Owner
`
`2
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`initially filed a complaint against Petitioner in the United States District
`
`Court for the Southern District of New York (C.A. No. 12-CIV-8115) on
`
`November 7, 2012, alleging infringement of two patents other than the ’122
`
`patent. Prelim. Resp. 5; Ex. 2001, 9-10. Thereafter, on November 13, 2012,
`
`the ’122 patent issued to Patent Owner. Prelim. Resp. 5.
`
`On November 14, 2012, Patent Owner filed a first amended complaint
`
`(“Amended Complaint”), adding the newly issued ’122 patent, as well as
`
`another patent, to Patent Owner’s allegations of infringement in the original
`
`complaint. Id.; Ex. 2002, 9-12. Patent Owner contends it served Petitioner
`
`with the Amended Complaint alleging infringement of the ’122 patent on
`
`November 20, 2012. Prelim. Resp. 5; Ex. 2003. Thereafter, on January 17,
`
`2013, Patent Owner filed a Second Amended Complaint, adding yet another
`
`newly issued patent (U.S. Patent No. 8,329,216) to Patent Owner’s
`
`allegations of infringement in the Amended Complaint. Prelim. Resp. 6;
`
`Ex. 2007, 10-12.
`
`III. DISCUSSION
`
`The issue before us is whether Petitioner was “served with a
`
`complaint” alleging infringement of the ’122 patent prior to January 16,
`
`2013, which would bar institution of inter partes review under 35 U.S.C.
`
`§ 315(b). Specifically, we address whether service on November 20, 2012,
`
`of Patent Owner’s Amended Complaint constituted service of a “complaint,”
`
`thereby triggering the one-year time bar under § 315(b), taking into account
`
`that Patent Owner filed a Second Amended Complaint, again alleging
`
`infringement of the ’122 patent, on January 17, 2013.
`
`3
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`The relevant portion of § 315(b) provides:
`
`(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.
`
`35 U.S.C. § 315(b) (emphasis added).
`
`Patent Owner urges us to deny the instant Petition, arguing that
`
`Petitioner is time-barred from seeking inter partes review of the ’122 patent
`
`under § 315(b), because Petitioner was served with a complaint on
`
`November 20, 2012, i.e., more than one year before the January 16, 2014,
`
`filing date of the Petition in this proceeding. Prelim. Resp. 5-11. Patent
`
`Owner contends that service of the Second Amended Complaint “has no
`
`effect on the one-year statutory window for seeking inter partes review of
`
`the ’122 patent.” Id. at 10. Patent Owner contends that the “Second
`
`Amended Complaint merely reiterated those infringement claims [in the
`
`Amended Complaint] and did not substantively change them in any way.”
`
`Id. Thus, according to Patent Owner, its filing of the Second Amended
`
`Complaint did not restart the clock in relation to the one-year bar under
`
`§ 315(b). Id. at 11.
`
`Petitioner, on the other hand, contends that the one-year time period
`
`under § 315(b) “began on January 17, 2013, the date that Patent Owner
`
`(“PO”) filed and served the Second Amended Complaint (“SAC”).” Reply
`
`1. In support, Petitioner points to an agreement between the parties in
`
`January 2013 regarding the Second Amended Complaint. Id. at 1-2.
`
`4
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`Specifically, Petitioner contends that the parties agreed that Petitioner would
`
`not oppose Patent Owner’s motion to amend the Amended Complaint
`
`(“Motion to Amend Complaint”) if Petitioner did not need to respond to the
`
`Amended Complaint and had thirty days to answer the Second Amended
`
`Complaint. Id. at 2 (citing Ex. 1026 (e-mail correspondence between
`
`counsel dated January 7, 2013)). According to Petitioner, “[t]hus, the parties
`
`agreed that no further action would be taken with respect to the Amended
`
`Complaint pending the Court’s decision on PO’s request to file the SAC.”
`
`Id. Petitioner also contends that on January 14, 2013, the district court
`
`granted the Motion to Amend Complaint, and on January 17, 2013, Patent
`
`Owner filed and served the Second Amended Complaint. Id.
`
`Petitioner further argues that the “parties’ agreement to take no action
`
`with respect to the Amended Complaint in favor of the SAC demonstrates
`
`that the Amended Complaint should have no effect.” Id. at 3. Thus,
`
`according to Petitioner, service of the Amended Complaint had no effect in
`
`relation to the § 315(b) bar. In support, Petitioner cites to federal case law,
`
`such as Washer v. Bullitt County, 110 U.S. 558, 562 (1884) (“When a
`
`petition is amended by leave of the court, the cause proceeds on the
`
`amended petition.”), and Synder v. Pascack Valley Hosp., 303 F.3d 271, 276
`
`(3rd Cir. 2002) (“An amended complaint supercedes the original version in
`
`providing the blueprint for the future course of a lawsuit.”). In addition,
`
`Petitioner cites to Macauto U.S.A. v. BOS GmbH & KG (“Macauto”),
`
`IPR2012-00004, contending that “the Board has held that a complaint
`
`dismissed without prejudice under Fed. R. Civ. P. 41(a) does not trigger the
`
`5
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`§ 315(b) statutory bar because ‘the dismissal of the earlier action . . .
`
`nullifies the effect of the alleged service of the complaint on Petitioner.’”
`
`Reply 4 (citing Macauto, Paper 18, 15-16).
`
`The cases cited by Petitioner, however, do not support the proposition
`
`that the filing of an amended complaint renders the original complaint a
`
`nullity, i.e. having no legal effect for the purposes of § 315(b). This case is
`
`unlike Macauto, for example, where our colleagues held that that a voluntary
`
`dismissal without prejudice nullified service of the complaint for purposes of
`
`§ 315(b). The panel in Macauto notes that courts have interpreted the effect
`
`of voluntary dismissals without prejudice under Fed. R. Civ. P. 41(a) as
`
`leaving the parties as though the action had never been brought. Macauto,
`
`Paper 18, 14-15; see also Apple Inc. v. Rensselaer Polytechnic Inst.
`
`(“Apple”), Case IPR2014-00319, slip op. at 4 (PTAB June 12, 2014) (Paper
`
`12).
`
`By contrast, “[a]n amended complaint is just that—a complaint that
`
`has been amended. The original complaint has been amended, and has not
`
`gone away in the same sense as a complaint dismissed without prejudice.”
`
`Loral Space & Commc’ns, Inc. v. ViaSat, Inc. (“Loral”), Case IPR2014-
`
`00236, slip op. at 7 (PTAB Apr. 21, 2014) (Paper 7); see also Apple, Paper
`
`12, 6. As noted by Patent Owner, consistent with the conclusion that service
`
`of the Amended Complaint had a “legal effect” here, Federal Rule of Civil
`
`Procedure 15(c)(1)(B) states that an amended complaint “relates back to the
`
`date of the original pleading” when the amended complaint “asserts a claim
`
`. . . in the original pleading.” Surreply 4; Fed. R. Civ. Proc. 15(c)(1)(B).
`
`6
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`Moreover, an agreement between the parties that Petitioner need not
`
`respond to the Amended Complaint and had thirty days to answer the
`
`Second Amended Complaint simply reflects an understanding of a
`
`reasonable time frame for Petitioner to respond to a yet-again-revised
`
`complaint. The Second Amended Complaint indicated the most updated
`
`version of all infringement counts necessitating a response by Petitioner,
`
`adding an additional infringement count regarding another patent, without
`
`removing the count regarding the ’122 patent added in the first Amended
`
`Complaint.
`
`In view of the record before us, we conclude that Petitioner was
`
`“served with a complaint” alleging infringement of the ’122 patent for the
`
`purposes of § 315(b) before January 16, 2013. Petitioner does not dispute
`
`that Patent Owner served its Amended Complaint, asserting infringement of
`
`the ’122 patent, on Petitioner on November 20, 2012. Because Petitioner did
`
`not file its Petition within one year of that date, we conclude that 35 U.S.C.
`
`§ 315(b) bars institution of inter partes review in this case.
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, we determine that 35 U.S.C. § 315(b) bars
`
`institution of inter partes review based on the filing date of the Petition.
`
`V. ORDER
`
`It is
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`7
`
`
`
`IPR2014-00361
`Patent 8,309,122 B2
`
`
`For PETITIONER:
`
`Eldora Ellison
`eellison-PTAB@skgf.com
`
`Dennies Varughese
`dvarughe-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Joseph A. Mahoney
`jmahoney@mayerbrown.com
`
`Erick J. Palmer
`ejpalmer@mayerbrown.com
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
