Overturning prior PTAB precedent, the Federal Circuit has now
held that post-facto business mergers that create a new
real-party-in-interest ("RPI") trigger the one-year bar
date for filing IPR petitions on patents asserted in litigation
against the new RPI.
PTAB Precedent
It is well-known that 35 U.S.C. § 315(b) precludes institution
when an IPR petition is filed more than one year after the
petitioner, an RPI, or a privy has been served with an infringement
complaint. The PTAB had held that this prohibition is only
triggered when the sued party is an RPI or privy as of the date the
petition is filed. ARRIS Grp., Inc. v. TQ Delta LLC,
No. IPR2016-00430, Paper 9 at 6 (P.T.A.B. July 1, 2016)
("§ 315(b) is concerned with privity relationships up
until the time a petition is filed."); Synopsys, Inc. v.
Mentor Graphics Corp., No. IPR2012-00042, Paper 60 at 12
(P.T.A.B. Feb. 19, 2014) ("This rule makes clear that it is
only privity relationships up until the time a
