Dentons' Silicon Valley Intellectual Property and Technology principal Lissi Mojica and counsel Kevin Greenleaf successfully secured a favorable ruling on behalf of client Amkor Technology Inc., persuading the US Patent and Trademark Office (USPTO)’s Patent Trial and Appeal Board to deny  the opposing party’s motion to terminate an inter partes review. The ruling allows the review, as initiated by Amkor, to proceed and has significant implications for other inter partes filings before the USPTO.

Tessera Inc., the opposing party, had argued that since its counterclaim filed in an arbitration was an infringement complaint, the statutory one-year time limit for filing a petition with the USPTO had been invoked. The USPTO rejected this argument, clarifying that under the America Invents Act (AIA), the time limit for filing an inter partes review begins only when a complaint is made in court, not in arbitration. The clock had therefore begun when Tessera sued Amkor in Delaware court in 2012, safely encompassing the period of Amkor’s inter partes review filing.

The Patent Trial and Appeal Board based its reasoning on an interpretation of congressional intent, finding that the AIA’s language stipulating the triggering of the time limit when a party is “served with a complaint” was meant to refer only to complaints in district court. The board wrote that extending the definition to include arbitration would contradict the entire purpose of inter partes review, which is to provide an alternative to expensive litigation for accused patent infringers.

The decision has significant implications for other patent infringement cases, providing assurance to parties accused of infringement that inter partes review is not removed as an option for resolving patent disputes in lieu of costly litigation, even if a court filing is preceded by arbitration proceedings.

Lissi and Kevin recently joined the firm's Silicon Valley office, bringing significant experience in the USPTO conducting inter partes reviews and reexaminations of patents. Their addition marked a further expansion of Dentons' formidable Intellectual Property Group, a top-tier practice consisting of more than 100 lawyers and technically trained professionals.