Amneal Pharmaceuticals, LLCv.Endo Pharmaceuticals, Inc.

Patent Trial and Appeal Board

Jul 25, 2014

11680432 (P.T.A.B. Jul. 25, 2014)

Trials@uspto.gov Paper 14
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

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Patent 8,309,122 B2

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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
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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.
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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.
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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
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§ 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).
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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.

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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