(1) Inter partes review barred by civil action.— An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
(2) Stay of civil action.— If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either—
(A)the patent owner moves the court to lift the stay;
(B)the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or
(C)the petitioner or real party in interest moves the court to dismiss the civil action.
(3) Treatment of counterclaim.— A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.
(b) Patent Owner’s Action.— 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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section
311 that the Director, after receiving a preliminary response under section
313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section
(d) Multiple Proceedings.— Notwithstanding sections
252, and chapter 30sections
252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.
(1) Proceedings before the office.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section
318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(2) Civil actions and other proceedings.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section
318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section
1338 of title
28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Subsec. (b). Pub. L. 107–273, § 13106(a), reenacted heading without change and amended text generally. Prior to amendment, text read as follows: “A third-party requester may—
“(1) appeal under the provisions of section
134 with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; or
“(2) be a party to any appeal taken by the patent owner under the provisions of section
134, subject to subsection (c).”
Subsec. (c). Pub. L. 107–273, § 13202(a)(4), struck out “United States Code,” after “title 28,”.
Effective Date of 2011 Amendment
Amendment by Pub. L. 112–29effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) ofPub. L. 112–29, set out as a note under section
311 of this title.
Effective Date of 2002 Amendment
Amendment by section 13106(a) ofPub. L. 107–273applicable with respect to any reexamination proceeding commenced on or after Nov. 2, 2002, see section 13106(d) ofPub. L. 107–273, set out as a note under section
134 of this title.
Estoppel Effect of Reexamination
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle F, § 4607], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, provided for estoppel from challenging certain facts determined during inter partes reexamination under former section
311 of this title and contained a severability provision.
The table below lists the classification updates, since Jan. 3, 2012, for this section. Updates to a broader range of sections may be found at the update page for containing chapter, title, etc.
The most recent Classification Table update that we have noticed was Tuesday, August 13, 2013
An empty table indicates that we see no relevant changes listed in the classification tables. If you suspect that our system may be missing something, please double-check with the Office of the Law Revision Counsel.