Paper 15
`Trials@uspto.gov
`571-272-7822 Entered: June 27, 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 IPR2014-00360
`Patent 8,329,216 B2
`____________
`
`
`
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Service Under 35 U.S.C. § 315(b)
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 27, 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 IPR2014-00360
`Patent 8,329,216 B2
`____________
`
`
`
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Service Under 35 U.S.C. § 315(b)
`
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`INTRODUCTION
`
`Petitioner Amneal Pharmaceuticals, LLC, filed a Petition (Paper 1)
`
`requesting inter partes review of U.S. Patent No. 8,329,216 (“the ’216
`
`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.” Prelim. Resp. 6-11.
`
`Following a conference call on May 7, 2014, among respective
`
`counsel for Petitioner and Patent Owner, we ordered the parties to submit
`
`additional briefing addressing the issue “of whether Petitioner was ‘served
`
`with a complaint’ alleging infringement of the ’216 patent more than one
`
`year before the petition was filed—i.e., more than one year before January
`
`16, 2014,” under 35 U.S.C. § 315(b). Paper 9, 2-3. Thereafter, Petitioner
`
`filed a Reply Brief addressing the issue (Paper 11, “Reply”), and Patent
`
`Owner filed a Surreply (Paper 14, “Surreply”).
`
`Based on the record before us, for the reasons that follow, we do not
`
`deny the Petition under § 315(b).1
`
`
`
`1 This Decision only addresses Patent Owner’s contentions in relation to
`§ 315(b), but does not address any other issues affecting whether we will
`institute an inter partes review in this case. We will address separately
`whether to institute an inter partes review in a forthcoming decision.
`
`2
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`I. BACKGROUND
`
`We consider arguments raised in Patent Owner’s Preliminary
`
`Response challenging whether Petitioner timely filed its Petition for inter
`
`partes review of the ’216 patent. Prelim. Resp. 1, 6-11. Patent Owner
`
`initially filed a complaint against Petitioner on November 7, 2012, and then
`
`filed an amended complaint (“First Amended Complaint”) on November 14,
`
`2012, in the United States District Court for the Southern District of New
`
`York, alleging infringement of patents other than the ’216 patent. Prelim.
`
`Resp. 4-5; Ex. 2008, 14-15.
`
`On December 11, 2012, the ’216 patent issued to Patent Owner.
`
`Prelim. Resp. 5. On January 9, 2013, Patent Owner filed an “Unopposed
`
`Motion to Amend Complaint Under Rule 15(a)” (“Motion to Amend
`
`Complaint” or “Motion”). Ex. 2004; Ex. 2008, 17 (referring to “MOTION
`
`to Amend/Correct the Amended Complaint”). The Motion to Amend
`
`Complaint attached, as Exhibit 1, a copy of a Second Amended Complaint
`
`for the court’s consideration, adding the newly issued ’216 patent to Patent
`
`Owner’s allegations of infringement in the First Amended Complaint.
`
`Ex. 2004, Exhibit 1.
`
`Thereafter, on January 14, 2013, the court granted Patent Owner’s
`
`Motion. Id. at 5-6; Ex. 2006. The Order granting the Motion stated that
`
`“Plaintiff shall file the Second Amended Complaint promptly,” and that
`
`“[a]ny response to the Amended Compliant is due on February 14, 2013.”
`
`Ex. 2006. On January 17, 2013, Patent Owner filed its Second Amended
`
`Complaint. Ex. 2007.
`
`3
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`II. DISCUSSION
`
`A.
`
` 35 U.S.C. § 315(b)
`
`The issue before us is whether Petitioner was “served with a
`
`complaint” alleging infringement of the ’216 patent prior to January 16,
`
`2013, which would bar the Petition under 35 U.S.C. § 315(b). Specifically,
`
`we address whether service on January 9, 2013, of Patent Owner’s Motion to
`
`Amend Complaint, attaching a proposed “Second Amended Complaint” as
`
`an exhibit, or the district court Order granting that Motion on January 14,
`
`2013, constituted service of a “complaint,” thereby triggering the one-year
`
`time bar under § 315(b).
`
`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 ’216 patent
`
`under § 315(b), because Petitioner was served with a complaint on January
`
`9, 2013, i.e., more than one year before the January 16, 2014, filing date of
`
`the Petition in this proceeding. Prelim. Resp. 6-11.
`
`As shown in Exhibit 2005, the district court provided a Notice of
`
`Electronic Filing (“NEF”), via electronic mail, on January 9, 2013, in
`
`relation to the “MOTION to Amend/Correct the Amended Complaint.
`
`4
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`Document filed by Endo Pharmaceuticals Inc., Grunenthal GMBH,” and
`
`“Attachments,” including “# (1) Exhibit 1 Proposed Second Amended
`
`Complaint, . . . .” Prelim. Resp. 5; Ex. 2005, 1.
`
`Patent Owner points us to district court Local Rule 9.1 on electronic
`
`filing, which provides that the “[t]ransmission of the NEF constitutes service
`
`upon all Filing and Receiving Users who are listed as recipients of notice by
`
`electronic mail.” Prelim. Resp. 8 (citing Ex. 2009 (Southern District of New
`
`York “Electronic Case Filing Rules and Instructions”), 9, § 9.1). Thus,
`
`according to Patent Owner, when the district court electronically mailed the
`
`NEF regarding the Motion to Amend Complaint and Exhibit 1 attachment to
`
`Petitioner, it “effected service of the Second Amended Complaint on
`
`January 9, 2014.” Prelim. Resp. 8-9. Because § 315(b) refers to being
`
`“served,” Patent Owner contends that it does not matter that Patent Owner
`
`did not file the Second Amended Complaint until January 17, 2013. Id. at
`
`10. Rather, it only matters when Patent Owner served the Second Amended
`
`Complaint, which, according to Patent Owner, occurred on January 9, 2013.
`
`Id. at 10-11.
`
`In response, Petitioner does not dispute that on January 9, 2013,
`
`Patent Owner served its Motion to Amend Complaint and a “Proposed”
`
`Second Amended Complaint, attached as an exhibit. Reply 1. Petitioner
`
`counters, however, that the filing and service of that Motion and exhibit
`
`“cannot and did not trigger § 315(b).” Id. at 4. According to Petitioner,
`
`Patent Owner did not “have the legal right to file or serve the Second
`
`Amended Complaint (‘SAC’) until the District Court granted it leave to do
`
`5
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`so on January 14, 2013.” Id. at 1, 3. Petitioner cites Federal Rule of Civil
`
`Procedure 15(a)(2), which permits a party to file an amended pleading “once
`
`as a matter of course,” but requires that “in all other cases, a party may
`
`amend its pleading only with the opposing party’s written consent or court’s
`
`leave.” Fed. R. Civ. P. 15(a)(2). Under this rule, according to Petitioner,
`
`Patent Owner required the district court’s leave to file the SAC. Reply 3.
`
`Thus, Patent Owner filed and served the SAC on January 17, 2013, after the
`
`court granted that leave. Id. at 4. Petitioner contends the one-year period
`
`under § 315(b) did not begin until January 17, 2013, when Patent Owner
`
`actually filed and served its SAC. Id. at 2.
`
`In its Surreply, Patent Owner refers to cases from other district courts
`
`that have based “service-dependent deadlines on the date the court granted
`
`the motion to amend” a complaint, where that motion attached a “proposed”
`
`amended complaint. Surreply 2-3. Thus, according to Patent Owner, it
`
`properly served its SAC when it served a copy of the proposed amended
`
`complaint on Petitioner on January 9, 2013. Patent Owner further contends
`
`that, as of January 14, 2013, when the district court granted the Motion to
`
`Amend Complaint, “the Second Amended Complaint had legal effect
`
`because the court ordered Petitioner to respond to it by February 14, 2013,
`
`. . . despite Petitioner’s request to be given one month from the date of filing
`
`of the Second Amended Complaint to answer.” Id. at 3-4 (emphasis in
`
`original) (citing Ex. 2010, Fed. R. Civ. P. 15(a)(3)). In addition, Patent
`
`Owner argues that “Petitioner’s contention that service of the Second
`
`Amended Complaint was not authorized until it was actually filed is wrong
`
`6
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`because Petitioner expressly consented to its filing.” Id. at 4-5 (citing
`
`Fed. R. Civ. P. 15(a)(2)).
`
`
`
`We have considered the arguments and evidence provided by
`
`Petitioner and Patent Owner in view of the requirements of § 315(b), local
`
`court rules, and the Federal Rules of Civil Procedure. For example, we note
`
`that the district court’s docket sheet and NEF confirm the filing of the
`
`Motion to Amend Complaint, including its “Exhibit 1 Proposed Second
`
`Amended Complaint,” on January 9, 2013. Ex. 2008, 17; Ex. 2005. The
`
`docket sheet and other evidence also confirm that Magistrate Judge Gabriel
`
`Gorenstein granted the Motion on January 14, 2013, in an Order stating that
`
`Patent Owner “shall file the Second Amended Complaint promptly” and that
`
`Petitioner’s response “is due on February 14, 2013.” Ex. 2008, 17;
`
`Ex. 2006. The docket sheet further confirms that Patent Owner filed the
`
`Second Amended Complaint three days later, on January 17, 2013.
`
`Ex. 2008, 17-18. At that time, service of the Second Amended Complaint
`
`was accomplished via the court’s electronic filing system.2
`
`
`
`In view of the record before us, we conclude that on January 9, 2013,
`
`Patent Owner served Petitioner with a Motion to Amend Complaint seeking
`
`permission to file its Second Amended Complaint, but did not serve a
`
`“complaint” for purposes of § 315(b). On that date, Patent Owner requested
`
`that the court grant “leave to file a Second Amended Complaint for patent
`
`
`
`2 The local court rules provide that transmission of an NEF, which the court
`sends automatically by e-mail, satisfies the “service” requirement. Ex. 2009,
`9, §9.1; 5, §1.
`
`7
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`infringement (attached hereto as Exhibit 1).” Ex. 2006 (emphasis added).
`
`In other words, on January 9, Patent Owner requested, but had not obtained
`
`yet, permission to file a Second Amended Complaint. At the point of filing
`
`the Motion to Amend Complaint, the attachment to the Motion was merely a
`
`proposed complaint, and Petitioner was not yet a defendant in a lawsuit with
`
`respect to the ’216 patent.
`
`“We do not believe that the Congress intended to have the [one-year]
`
`time period start before a petitioner is officially a defendant in a law suit.”
`
`Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20, 5 (Jan. 30,
`
`2013). Moreover, as stated by the Supreme Court as “a bedrock principle,”
`
`an “entity named as a defendant is not obliged to engage in litigation unless
`
`notified of the action, and brought under a court’s authority, by formal
`
`process.” Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347
`
`(1999). Here, Petitioner was not “brought under a court’s authority, by
`
`formal process,” i.e., was not officially a defendant, in relation to the ’216
`
`patent, by virtue of the filing of the Motion to Amend Complaint on January
`
`9, 2013. Id. Patent Owner’s request for the court’s leave did not obligate
`
`Petitioner to engage in litigation in relation to that patent.
`
`In relation to Federal Rule of Civil Procedure 15(a)(2), which states in
`
`relevant part that “a party may amend its pleading only with the opposing
`
`party’s written consent or the court’s leave,” we note that it is undisputed
`
`that Patent Owner requested the court’s leave in this case.3 Thus, regardless
`
`
`
`3 We also note that Fed. R. Civ. P. 15(a)(3) states that “[u]nless the court
`8
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`of any prior “consent” by Petitioner, on January 9, 2013, Patent Owner
`
`requested leave to amend its pleading and make Petitioner a defendant with
`
`respect to the ’216 patent, which left the matter in the court’s hands to
`
`decide. The attachment to the Motion was merely a proposed complaint, not
`
`an actual “complaint” within the meaning of § 315(b).
`
`Moreover, Petitioner was not “served with a complaint” for the
`
`purposes of § 315(b) when the district court granted Patent Owner’s Motion
`
`to Amend Complaint on January 14, 2013. While the Order stated that
`
`Patent Owner “shall file the Second Amended Complaint promptly,” the
`
`Order did not indicate that the Second Amended Complaint was filed or
`
`served on Petitioner as of January 14, 2013, or retroactively on January 9,
`
`2013. Ex. 2006. Rather, the court specified the timing of the filing of the
`
`Second Amended Complaint, i.e., that it must be filed “promptly.” Id.
`
`Patent Owner then filed its complaint three days later, on January 17, 2014.
`
`Patent Owner could have filed its Second Amended Complaint earlier, for
`
`example, on January 15, 2013, but chose to file when it did. Petitioner was
`
`“brought under a court’s authority, by formal process,” and became “obliged
`
`to engage in litigation” in relation to the ’216 patent, on January 17, 2013,
`
`when Patent Owner actually filed its Second Amended Complaint, and not
`
`
`
`orders otherwise, any required response to an amended pleading must be
`made within the time remaining to respond to the original pleading or within
`14 days after service of the amended pleading, whichever is later.” Here, the
`court clearly “orders otherwise.” The court did not require a response
`“within 14 days after service” of either the Motion to Amend Complaint or
`the Second Amended Complaint, for example. Ex. 2006.
`
`9
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`beforehand. Murphy Bros., 526 U.S. at 347.
`
`In view of the record before us, we conclude that Petitioner was not
`
`“served with a complaint” alleging infringement of the ’216 patent for the
`
`purposes of § 315(b) before January 17, 2013. Because Petitioner filed its
`
`Petition within one year of that date, i.e., on January 16, 2014, we conclude
`
`that 35 U.S.C. § 315(b) does not bar institution based on the Petition in this
`
`case.
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, we determine that 35 U.S.C. § 315(b) does
`
`not bar institution based on the Petition in this case.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2014-00360
`Patent 8,329,216 B2
`
`
`For PETITIONER:
`
`Eldora Ellison
`Eellison-PTAB@skgf.com
`
`Dennies Varughese
`Dvarughe-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Joseph Mahoney
`jmahoney@mayerbrown.com
`
`Erick Palmer
`ejpalmer@mayerbrown.com
`
`
`11
`
`
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