Patent owner’s preliminary response in inter partes review: statutory bars – part one

International Law Office
February 2014

This article provides patent owners with guidance, based on a review of decisions issued by the PTAB, on whether to file a preliminary response asserting a statutory bar in inter partes reviews. A patent owner should always file a preliminary response if it believes that the petitioner is statutorily time-barred against filing a petition because of previous related civil actions. The statute has two such time-bars. First, under 35 U.S.C. § 315(a)(1), an inter partes review may not be instituted if the petitioner had “filed a civil action challenging the validity of a claim of the patent” at issue in the petition before filing the petition. Second, under 35 U.S.C. § 315(b), an inter partes review may not be instituted if the petition is filed one year after the petitioner is “served with a complaint alleging infringement of the patent” at issue in the petition. The PTAB decisions have made clear that the requirements set forth in § 315(a) are significantly different than those of § 315(b). The article discusses these differences as well as other significant PTAB decisions on the statutory bars in detail.

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