Counterclaims Start the Clock for Inter Partes Requests

Most people are now aware of the changes by the American Invents Act to the inter partes process for reviewing patents.  There are no longer inter partes reexaminations. Instead, parties can petition for inter parties reviews.  Generally speaking, a petitioner has 1 year from the date that it is served with “a complaint alleging infringement” to file a request for inter partes review.  35 U.S.C. § 315(b).  Until the recent decision in St. Jude Medical, Cardiology Division, Inc. v. Volcano Corporation, it was unclear as to whether “a complaint” also included a counterclaim of infringement by the patent owner. Earlier this month, the Patent Trial and Appeal Board (“Board”) confirmed that it does. St. Jude Medical sued Volcano for infringement of its own patents. Volcano, in turn, counterclaimed with a charge of infringement of U.S. Patent No. 7,134,994 (“the ‘994 Patent”) in September of 2010.  Two years later, the parties dismissed all claims relating to the ‘994 Patent with prejudice. Nonetheless, in April of 2013, St. Jude Medical petitioned for an inter partes review of the ‘994 Patent.  The Board denied the petition for falling outside the 1 year time limit imposed by 35 U.S.C. § 315(b). The Board recognized Congress’ intent behind inter partes reviews, which is to “‘provid[e] quick and cost effective alternatives to litigation.’”  It found that a counterclaim was tantamount to a complaint.  More importantly, it held that that Section 315(b) applies even when a complaint is later dismissed with prejudice. Now, it is clear. If you want to petition for inter partes review, you need to stay on top of the 1 year deadline. It doesn’t matter if the counterclaim is ultimately dismissed with prejudice. The clock continues.  Companies should make sure to docket such deadlines.