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ARTICLE · 26 NOVEMBER 2019

Precedential Decisions Offer Guidance On Bars To Institution

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An inter partes review may not be instituted if, before the date on which the petition is filed, the petitioner or real party in interest filed a civil action challenging the validity of a ...

United StatesIntellectual Property
Mythili Markowski
Mythili Markowski
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An inter partes review may not be instituted if, before the date on which the petition is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the challenged patent. See 35 U.S.C. § 315(a). Likewise, an inter parties 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 is served with a complaint alleging infringement of the challenged patent. See 35 U.S.C. § 315(b). Three decisions recently designated as precedential by the PTAB provide further guidance on such bars to institution.

In Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019), the Petitioner had filed a civil action challenging the validity of a claim of the challenged patent before the date on which the Petition was filed. Id. at 2. The Petitioner argued that § 315(a)(1) did not bar institution of

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