C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart B—Inter Partes Review

37 C.F.R. § 42.101

Who may petition for inter partes review

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A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless:

(a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent;

(b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or

(c) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

Notes of Decisions
Cited in 5 cases, 2014–2019 · leading case: Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).
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Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). · cites it 6× “Response on August 30, 2013, contending, among other things, that § 315(b) statutorily barred institution of IPR proceedings, and that Ingenio lacked standing under 37 C.F.R. § 42.101 (b). In its Preliminary Response, CTC presented evidence that Ingenio was served with a com-…”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 2× “The Board found that the § 315(b) bar is measured as of the filing date of the petition, pursuant to its regulation interpreting this section, 37 C.F.R. § 42.101 (b), which states that a petition is barred only if “[t]he petition requesting the proceeding 6 SYNOPSYS, INC.”
Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306 (Fed. Cir. 2019). · cites it 3× “11-12 ("Panels of the Board have interpreted [§] 315(b) (and our associated rule 37 C.F.R. § 42.101 (b) ) to mean that 'it is only privity relationships up until the time a petition is filed that matter.”
Intellectual Ventures II LLC v. Jpmorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015). · cites it 2× “”) with 37 C.F.R. § 42.101 (b) (“The petition requesting the proceeding .”
Target Training Int'l, Ltd. v. Lee, 1 F. Supp. 3d 927 (N.D. Iowa 2014). “37 C.F.R. § 42.101 Endotach, L.L.C. v. Cook Medical, Inc.”
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