LG Electronics, Inc. v. Mondis Technology LTD.

Paper 8, September 17, 2015

IPR2015-00937 (Patent 6,513,088 B2)

[An IPR will not be instituted if petition is filed more than a year after the petitioner is served with any complaint alleging infringement of the relevant patent and not merely the most recent complaint]

FACTS

Patent Owner, Mondis Technology LTD (“Mondis”), filed its first complaint against Petitioner, LG Electronics, Inc. (“LG”), alleging infringement of the 6,513,088 B2 patent (“the ‘088 patent”) in 2008. That complaint was dismissed with prejudice as to some claims and without prejudice as to others. As a result of that complaint, the parties negotiated a settlement that excluded claims as to unreleased products. In 2014, Mondis filed its second complaint against LG alleging infringement of the same patent. Within a year of being served with the second complaint, LG petitioned for an IPR.

HOLDING

The Board held that LG’s petition was barred by 35 USC § 315(b), which provides that an IPR may not be instituted if the petition is filed more than a year after the date on which the petitioner is served with a complaint alleging infringement of the patent at issue. The Board held that “a complaint” means any complaint and not the most recent complaint.

The Board rejected LG’s arguments that after the dismissal of the first complaint, the parties were left in the same legal position as though the complaint was never served. The Board noted that some claims in the 2008 complaint were dismissed with prejudice and that the parties were also now bound by the settlement agreement reached as a result of the 2008 complaint. Therefore, the Board concluded that the parties were not left in the same position they had been prior to the dismissal of the 2008 complaint.

The Board also rejected LG’s argument that because Mondis was free to continue to assert its ‘088 patent against LG, the latter should be allowed to petition for an IPR of the patent as a matter of equity. The Board noted that LG chose to negotiate a settlement that excluded the unreleased products, and that LG was still free to file for an ex parte reexamination, which it did twice.

Accordingly, the Board denied LG’s petition for an IPR.

TAKEAWAY

35 USC § 315(b) bars institution of an IPR if petition is filed more than a year after the petitioner is served with the first complaint alleging infringement of the patent at issue, unless that complaint is dismissed without prejudice in its entirety, such that the parties are left in the same legal position as though the complaint was never filed.

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