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Do you have any questions about Inter Partes Review or Post Grant Review practice?  Please feel free to call or email:

Matthew Cutler – mcutler@hdp.com; 314-726-7522

Glenn Forbis – gforbis@hdp.com; 248-641-1249

Doug Robinson – drobinson@hdp.com; 314-446-7683

Andrew Waxman – awaxman@hdp.com; 703-668-8024

4 comments

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  1. Andy

    A patentee brings suit in district court on day 1, based on a patent that issued several years earlier, and serves the complaint the same day.
    During litigation, patentee petitions for reissue of the patent.
    The patent reissues two years after the complaint was served, with narrower and different claims.
    Six monthslater, defendant wants to file an IPR against the reissue patent. It is clearly too late to file IPR against the original patent.

    Does reissue of the patent toll the statute for filing IPR one year after the complaint is served?
    In other words, is the reissue patent a “new” patent for purposes of IPR and/or does reissue of the old patent reset the clock for seeking IPR?

    Thanks for any suggestions.

    1. Matt Cutler

      Andy, I have not seen this specific issue addressed by the Board, but I do not believe the IPR against the reissued patent will be deemed “too late.” It is my strong belief that the reissued patent will be a “new” patent for purposes of IPR and resets the clock for seeking an IPR. Stated another way, in any pending litigation involving the original patent, an amended complaint will have to be filed alleging infringement of the reissued patent. That complaint will have to be served and that will, in my opinion, be the new start for the 1 year time bar of 315(b). I hope this helps, Matt.

  2. Ray

    Matt, I saw you deliver a presentation on IPR a few years ago now and you were great. I was wondering if you ever seen a race to the patent office in which a patentee wants to initiate ex parte reexam and an alleged infringer wants to initiate IPR on the same patent? Under 35 USC 315(D), the PTAB appears to have the power to cancel either proceeding or let them both continue. Thanks for any input you can provide.

    1. Matt Cutler

      Hi Ray,

      Thanks for the nice comment. There have been several instances in which an ex parte reexamination has taken place concurrently with an IPR. In those cases, the Petitioner will often ask that the Board stay the reexamination. Most of the time, the Board has done so, to prevent inconsistent actions by the office. There have been instances, however, where the Board has allowed both to go forward concurrently, at least temporarily.

      I hope this helps. Please feel free to reach out with any other questions you may have.

      Matt

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