Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a)
Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.” To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint. These provisions are designed to control PTAB filings concurrent with civil complaints.
In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.”
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