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the statutory language does not explicitly distinguish between a district court complaint and an ITC complaint, non-precedential PTAB panels have consistently interpreted ' 315(b) as limited to district court complaints, such that an ITC complaint does not trigger the one-year bar.2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