Authored by Michelle Carniaux and Michael E. Sander
In addition to substantively attacking invalidity grounds raised in petitions for inter partes review (“IPR”), patent owners have attempted to prevent the initiation of IPRs based on procedural grounds. One such tactic is to take advantage of the bar against instituting an IPR of a patent if the petition requesting the IPR is filed more than 1 year after the IPR petitioner is served with a complaint alleging infringement of the patent. See 35 U.S.C. § 315(b). The one year bar applies not only to situations in which the petitioner was served with a complaint more than 1 year before filing the petition, but also to situations where the “real party in interest, or privy of the petitioner” was served with a complaint. Id. Thus, in some preliminary responses to petitions for IPR, patent owners have argued that an IPR should not be instituted since a real party interest, or privy to the petitioner (a party not named as a participant in the proceeding) was served with a complaint alleging infringement of the patent in issue more than 1 year before the IPR petition was filed.