Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that patent. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.
315(b) went into effect on September 16, 2012. As written, the statute was understood to be retroactive, and immediately foreclosed IPR as an option for many late stage litigants. For this reason, there was an unprecedented surge of inter partes patent reexamination filings in the weeks leading up to September 16, 2012. Still, there were some open questions as to the flexibility of the 12 month window. How would repeated assertions of the same patent be treated by the PTAB, did the window reset? What about patents that had been reexamined and included new claims? Read the rest of this entry »