Arbitration Does Not Trigger § 315(b) Deadline for Commencing IPR

The Board denied the patent owner's motion to terminate the IPR as not timely filed under 35 U.S.C. § 315(b), and rejected the patent owner's argument that the phrase "complaint alleging infringement" includes all federal proceedings adjudicating patent infringement allegations. "We do not adopt [the patent owner's] interpretation that an allegation of infringement in an arbitration proceeding triggers the one-year time period of section 315(b). Within the context of section 315(b), the phrase 'served with a complaint alleging infringement of the patent' means a complaint in a civil action for patent infringement. What matters is that the complaint pleads a cause of action for patent infringement and is served lawfully on the accused infringer in a civil action. Once that happens, the accused infringer is subject to the time limit set forth in section 315(b) to petition for inter partes review. . . . Given the Supreme Court’s narrow interpretation of the terms 'action' and 'complaint' in [BP America Production Co. v. Burton, 549 U.S. 84 (2006)], we likewise narrowly interpret section 315(b)’s use of the same terms as limited to a judicial action."

Petition for Inter Partes Review by Amkor Technology, Inc., IPR2013-00242 (PTAB January 31, 2014, Order) (DeFranco, APJ)