The Patent Trial and Appeal Board issued two precedential opinions relating to the time for filing petitions for inter partes patent reviews.
While the AIA permits challengers to file a request for inter partes review of a patent at the USPTO, 35 U.S.C. § 315(a)(1) provides that such a review “may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Further, 35 U.S.C. § 315(b) provides that “[a]n 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 . . .”
In the case of Cisco Systems Inc. v. Chrimar Systems, Inc., (Case IPR2018-01511; decision August 29, 2019), the PTAB held that the bar to a petition for inter partes review applies even when a civil action is filed but is dismissed without prejudice – e.g. that there mere filing of a complaint even without any substantive litigation of the issues raised therein in the civil action, bars the inter partes petition.
In the case of GoPRO, Inc. v. 360Heros, Inc. (Case IPR2018-01754; decision August 23, 2019), the PTAB held that “service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b), even where the serving party lacks standing to sue or where the pleading is otherwise deficient.” Thus, parties should ensure that they file IPR petitions within one year of being served with a complaint.