A. Introduction

The intersection of traditional patent litigation and inter partes review (IPR) trial practice has continually evolved since the Leahy–Smith America Invents Act (AIA) first introduced administrative trial proceedings before the Patent Trial and Appeal Board (PTAB). When a patent owner files a complaint for patent infringement in district court or at the International Trade Commission (ITC), almost any accused infringer will immediately consider the possibility of filing a petition for IPR. Two critical components to that inquiry are when to file the IPR petition and how the IPR process will impact the parallel litigation. This article discusses the latest developments at the cross-roads of traditional patent litigation and IPR trial practice, addressing considerations for litigants in district court and at the ITC.

B. Applicability of the One-Year Bar

In district court, service of a complaint for patent infringement triggers § 315(b) of the AIA, which includes a statutorily imposed time restriction for filing an IPR petition. The restriction, generally known as the one-year bar, states: "An 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."1 Over the last several years, there have been several notable developments with respect to the scope and applicability of the one-year bar

For example, although the statutory language does not explicitly distinguish between a district court complaint and an ITC complaint, non-precedential PTAB panels have consistently interpreted § 315(b) as limited to district court complaints, such that an ITC complaint does not trigger the one-year bar.2

On the issue of privity, the PTAB determined in a precedential opinion that a petitioner's customer can be its privy, subjecting the petitioner to the one-year bar based on a complaint alleging infringement that was served on that privy more than one year to the petitioner's filing date.3 In mid-2019, the Federal Circuit held that a privity or real party in interest relationship invoking the oneyear bar can arise after the date on which the district court complaint is served.4

In 2018, after a series of appeals that initially turned on the issue of appellate jurisdiction, the Federal Circuit determined in Click-to-Call Technologies v. Ingenio Inc. that the one-year bar applies even if the patent owner voluntarily dismisses the underlying litigation without prejudice.5 Prior to the Federal Circuit decision in Click-to-Call, non-precedential PTAB panels had reached the opposite conclusion, finding that the oneyear bar did not apply when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.6 Following the Federal Circuit Click-to-Call decision, there has been a growing body of determinations applying the oneyear bar regardless of whether the complaint is legally sound. For instance, the PTAB has determined in precedential decisions that the one-year bar applies even if the complaint is dismissed for lack of personal jurisdiction7 or if the complaint is legally deficient for lack of standing.8

Most recently, however, the Supreme Court vacated the Federal Circuit decision in Click-to-Call after ruling that the PTAB's application of § 315(b) is a final and nonappealable administrative decision.9 The Supreme Court noted that any other interpretation of the relevant statutory provisions (§ 315(b) and § 314(d)) would undermine the AIA's objective to "weed out bad patent claims efficiently" because allowing § 315(b) appeals would "wast[e] the resources spent resolving patentability and leav[e] bad patents enforceable."10

The Supreme Court's decision in Click-to-Call potentially abrogates all prior Federal Circuit decisions interpreting § 315(b), creating the possibility for the PTAB to reconsider the proper interpretation of the one-year bar. Already, petitioners are urging the PTAB to do exactly that. For instance, in Roku, Inc. v. Universal Electronics, the petitioner argued that the Supreme Court's decision in Click-to-Call "constructively abrogates" the Federal Circuit's decision in Facebook, Inc. v. Windy City Innovations, which issued in March 2020.11 The PTAB did not reach the issue, and instead based its conclusion on alternate reasoning. Petitioners are likely to continue raising these arguments until the PTAB takes a position on how, if at all, the Supreme Court Click-to-Call decision will impact the PTAB's treatment of the Federal Circuit's past interpretation of § 315(b).

C. Timing Considerations for District Court Litigants

For district court litigants, there are several factors that impact the defendant's evaluation of the "best" time to file an IPR, and there are considerations that a patent owner can take into account to counteract those factors

The One-Year Bar. One driving factor relevant to the timing of a defendant's IPR petition is the § 315(b) oneyear bar discussed above. Because the defendant in a district court lawsuit must file an IPR within one year of service of the complaint on itself or any of its privies, one of the first steps that a defendant can and should take is determining the date of the one-year bar. A defendant should examine the asserted patent to determine whether it has been asserted in prior litigation and, if so, whether any of the earlier accused infringers could be considered a privy. A proactive approach that allows potential petitioners to make an informed decision at the earliest possible juncture is to monitor companies likely to be considered a privy and stay abreast of patent infringement lawsuits filed against those companies

The Status of the Litigation. The status of district court litigation influences IPR timing in a variety of ways

At the PTAB, filing an IPR petition when district court litigation is at "an advanced state" increases the risk that the PTAB will rely on its discretion under 35 U.S.C. § 314(a) to deny institution.12 This is in stark contrast to how the PTAB treats ITC investigations. Although ITC investigations generally conclude well before a related IPR will reach a final written decision, the PTAB routinely declines to exercise its discretion to deny institution, often relying at least in part on the fact that "the ITC does not have the power to cancel a patent claim, even if that claim is demonstrated to be invalid."13


1 35 U.S.C. § 315(b).

2 See, e.g., Robert Bosch Tool Corp. v. SD3, LLC, IPR2016-01751, Paper No. 15 (Institution Decision), 13–14 (PTAB Mar. 22, 2017).

3 Ventex Co., Ltd. v. Columbia Sportswear, IPR2017-00651, Paper No. 148, 15–16 (Jan. 24, 2019) (Precedential).

4 Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1315 (Fed. Cir. June 13, 2019).

5 Click-to-Call Techs. v. Ingenio, Inc., 899 F.3d 1321, 1336 (Fed. Cir. 2018) (en banc), vacated and remanded sub nom. Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020).

6 Oracle Corp. v. Click-to-Call Technologies, LP, IPR2013-00312, Paper 52 (Final Written Decision), 12–13 (PTAB Oct. 28, 2014).

7 Infiltrator Water Techs., LLC v. Presby Patent Trust, IPR2018-00224, Paper 18, 7 (PTAB Oct. 1, 2018) (Precedential).

8 GoPro Inc. v. 360Heroes Inc., IPR2018-01754, Paper No. 38, 13–14 (Aug. 23, 2019) (Precedential).

9 Click-to-Call Techs., LP, 140 S. Ct. at 1373–74 (2020).

10 Id. at 1374.

11 Roku, Inc. v. Universal Electronics, Inc., IPR2019-01612, Paper 10, 3 (PTAB May 5, 2020) (discussing Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020)).

12 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., Case IPR2018-00752, Paper 8, 19–20 (Sept. 12, 2018) (precedential); see also Intel Corp. v. VLSI Tech., IPR2020-00158, Paper No. 16 (Institution Decision), 8 (PTAB May 20, 2020).

13 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper No. 12 (Institution Decision), 33–34 (May 26, 2020); see also Nichia Corp. v. Lighting Science Grp. Corp., IPR2019-01259, Paper No. 21 (Institution Decision), 27–28 (PTAB Jan. 15., 2020) ("As noted by Petitioner, the ITC does not have the authority to invalidate a patent in a way that is applicable to other forums, and thus ITC decisions do not preempt issues addressed in an inter partes review proceeding.").

To read the full article click here

Originally published 04 August, 2020

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.