August 04, 2014 Articles

Is That a Complaint? The Grey Area of 35 U.S.C. Sec. 315(b)

A look at notable decisions that provide guidance on avoiding the statutory bar of 35 U.S.C. Sec. 315(b) to filing inter partes review petitions

By Herbert D. Hart III, Malaika D. Tyson, and Robert F. Kappers

With the creation of inter partesreview under the America Invents Act (AIA), Congress enacted a statutory bar, 35 U.S.C. § 315(b), limiting the time within which a petition for inter partesreview (IPR) may be filed.

35 U.S.C. § 315(b) states 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.

The plain language of the statute seems to suggest that Congress made it clear for a potential petitioner that the one-year clock starts running as soon as it is served with a complaint. However, what if the petitioner was the recipient of counterclaims? Or what if the complaint was voluntarily dismissed, service was improper, claims were amended, or the petitioner received multiple complaints?

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