LG Electronics v. Mondis (IPR2015-00937): The First Complaint Starts the § 315(b) Clock

The one-year bar of 35 U.S.C. § 315(b) runs from service of “a complaint alleging infringement of the patent.” LG Electronics, Inc. v. Mondis Technology Ltd., IPR2015-00937 (Paper 8, September 17, 2015), addressed a defendant that had been sued on the same patent twice, years apart. It is listed here with the Board’s precedential decisions. Designations can change, so check the USPTO’s current list of precedential and informative decisions.

The petition challenged claims 3 and 4 of Mondis’s U.S. Patent No. 6,513,088, which had been asserted in several district court actions and had been through inter partes reexamination. LG had also requested ex parte reexamination of the patent.

Background

Mondis served LG with a complaint alleging infringement of the ‘088 patent on January 11, 2008. That case ended in a settlement: the district court dismissed with prejudice the claims relating to computer monitors, dismissed without prejudice the claims relating to products the settlement left unreleased, and retained jurisdiction to enforce the settlement agreement. Mondis later sued LG again, serving a second complaint on October 16, 2014. LG filed its petition on March 27, 2015, within a year of the second complaint but more than seven years after the first.

LG made three arguments: the statute speaks of “a complaint,” so the 2014 complaint should count; the partial dismissal without prejudice put the parties back where they started for the unreleased products, relying on Oracle v. Click-to-Call; and equity and settlement policy favored a broad reading of § 315(b).

What the Board decided

The Board denied institution on all three points.

• “A complaint” means any complaint. The Board declined to read “latest” or “second” into the statute. Service of the 2008 complaint was service of a complaint alleging infringement of the patent, and the petition came more than a year later.
• The dismissal did not erase the first suit. The Board distinguished Oracle, where the whole complaint had been dismissed without prejudice. Here the dismissal was a hybrid, and it followed a 2014 Board decision in Microsoft v. VirnetX treating a partly-with-prejudice dismissal as triggering the bar. The parties were not as if the first action had never been brought, because the monitor claims were finally resolved and the parties remained bound by a settlement the district court could enforce.
• Equity did not change the result. Citing the purpose of § 315(b) to prevent IPR from being used for harassment through repeated litigation and administrative attacks, the Board noted that LG had negotiated a settlement that left some products unreleased and that ex parte reexamination remained available to it, as LG had already used.

Why it matters

The decision confirms that the § 315(b) clock starts with the first qualifying service and does not reset because the patent owner sues again. For a defendant, the safe assumption is that the earliest complaint controls. Settlements that leave some products open to future suits do not reopen the IPR window.

It also shows that ex parte reexamination remains an option when an IPR is barred, though it is a very different proceeding; see ex parte reexamination. For how the bar interacts with discovery and timing, see discovery and the one-year time period.

Later developments

The part of Oracle that LG relied on, treating a dismissal without prejudice as erasing service, has since been rejected. The Federal Circuit, sitting en banc on the issue in Click-to-Call Technologies, LP v. Ingenio, Inc. (Fed. Cir. 2018), held that service of a complaint triggers the bar even if the action is later voluntarily dismissed without prejudice, which reinforces the result here. In Thryv, Inc. v. Click-to-Call Technologies, LP (2020), the Supreme Court held that the Board’s § 315(b) rulings are not appealable. See the note on Oracle v. Click-to-Call.

Key takeaways

• Service of any complaint alleging infringement of the patent starts the one-year § 315(b) clock; a later complaint does not restart it.
• A settlement dismissal partly with prejudice, with court-retained jurisdiction, does not leave the parties as if the suit never happened.
• Equitable and settlement-policy arguments did not override the statutory text.
• Later Federal Circuit law treats even full dismissals without prejudice as triggering the bar.