PTAB Designates Decision in LG Electronics v. Mondis Tech IPR as Precedential

Written by Joshua Griswold

As a follow-up to our Alert yesterday, the Board alsodesignated their decision in LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB September 17, 2015) as precedential, a decision explaining the one-year bar to filing an Inter Partes Review imposed by 35 U.S.C. 315(b). In particular, LG had been sued and served on two occasions, once within one year of their petition filing and once more than one year prior. LG argued that "served with a complaint" in 315(b) should not be interpreted as the earlier complaint, because the statute does not explicitly require the complaint to be the "first" complaint. The Board disagreed, holding that the earlier complaint was, indeed, "a complaint" triggering the one-year bar. Additionally, the earlier complaint had been dismissed partially with prejudice and partially without. The Board held that the earlier complaint still triggered the bar, because its dismissal was in-part prejudicial and "it did not leave the parties as though the action had never been brought." Imposing the bar, explained the Board, is an equitable result, because LG chose to negotiate a partially prejudicial settlement of the first suit, and the bar does not foreclose LG from challenging Mondis' patent, for example, in ex parte reexamination.