“Complaint” in § 315(b) Includes Counterclaims

“Complaint” in § 315(b) Includes Counterclaims

Peter-SiddowayBy Peter Siddoway –

A petition for inter partes review (IPR) must be filed within one year of the petitioner being served “with a complaint alleging infringement of the patent.”  35 U.S.C. § 315(b).  On Wednesday, the PTAB held that this statutory phrase “is sufficiently broad to include a counterclaim that alleges infringement of the patent.”  IPR2013-00258, Paper 29, p. 7 (October 16, 2013).

In St. Jude Med. v. Volcano Corp., IPR2013-00258, the petitioner and the patent owner were parties to a related litigation in the District of Delaware.  In this related action, Volcano served St. Jude with a counterclaim on September 20, 2010, alleging infringement of U.S. Patent No. 7,134,994, which St. Jude timely answered.  The litigation continued for two years, concluding when the parties stipulated to a dismissal with prejudice of all claims relating to the ‘994 patent on October 21, 2012.  St. Jude then filed its IPR petition on April 30, 2013.

St. Jude attempted to address the issue in its Petition, arguing the differences between a “complaint” and a “counterclaim.” (See Paper 1, p. 1-2 (e.g., “[T]he Federal Rules of Civil Procedure (‘FRCP’) define a ‘complaint’ as the filing that commences a civil action.”) .) The Board however, was not persuaded, explaining:

A counterclaim imposes the same burdens on the parties as does a complaint.  A counterclaim alleges a cause of action, just like a complaint; confirming that equivalence, Wright and Miller explains that a counterclaim “basically is a defendant’s complaint.” 5 FED. PRAC. & PROC. CIV. § 1184 (3d ed.).  . . .  When the counterclaim alleges patent infringement, the original plaintiff becomes an accused infringer who has been sued for patent infringement.  The accused infringer must answer the counterclaim or face default.

Paper 29, at 5.  The Board further reasoned that to distinguish between an initial defendant in a litigation and a counterclaim-defendant would “lead to unjustified discrimination among otherwise similarly-situated accused infringers.”  Id., at p. 3.

The IPR papers for this case are all available through the Patent Review Processing System (PRPS).