35 U.S.C. § 315

Relation to other proceedings or actions

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(a)Infringer’s Civil Action.—(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 314.(d)Multiple Proceedings.—Notwithstanding sections 135(a), 251, and 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.(e)Estoppel.—(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.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–569; amended Pub. L. 107–273, div. C, title III, §§ 13106(a), 13202(a)(4), (c)(1), Nov. 2, 2002, 116 Stat. 1900–1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 300.)Editorial NotesReferences in Text

Section 337 of the Tariff Act of 1930, referred to in subsec. (e)(2), is classified to section 1337 of Title 19, Customs Duties.

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to appeals.

2002—Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section.

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,”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective 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) of Pub. L. 112–29, set out as a note under section 311 of this title.

Effective Date of 2002 Amendment

Amendment by section 13106(a) of Pub. L. 107–273 applicable with respect to any reexamination proceeding commenced on or after Nov. 2, 2002, see section 13106(d) of Pub. L. 107–273, set out as a note under section 134 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 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.

Notes of Decisions

Cited in 314 cases (143 in the last 5 years), 2007–2026 · leading case: Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).

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Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016). · cites it 12× “Within one year of service of the complaint, see 35 U.S.C. § 315 (b), Shaw petitioned for IPR of all twenty-one of the ’360 patent claims.”

Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). · cites it 16× “This long-marooned case returns to us after a voyage alongside two others interpreting the scope of 35 U.”

Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 8× “3d at 1316 ; see also 35 U.S.C. § 315 (e)(2) (IPR estoppel provision applicable to subsequent civil actions).”

Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). · cites it 12× “35 U.S.C. § 315 (b). Congress also provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.”

Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011). · cites it 12× “When the examiner issued the Right of Appeal Notice, Bettcher requested that the district court exclude certain of Bunzl's invalidity references under 35 U.S.C. § 315 (c) on the ground that the examiner had already determined that they did not invalidate the claims of the '325…”

Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). · cites it 13× “See 35 U.S.C. § 315 (b). On July 24, 2015, Facebook filed a motion to dismiss, arguing that the complaint did not provide adequate notice of Windy City’s infringement allegations because it did not identify which claims were asserted against which Face- book products.”

Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018). · cites it 12× “2015-1945 and 2015-1946 that related to the merits of Wi-Fi’s appeals. The panel now reaffirms the portions of its three prior decisions that were left unaffected by the en banc court’s decision.”

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 6× “Mentor argued that the petition for inter partes review was time-barred under 35 U.S.C. § 315 (b), which states that “[a]n 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…”

Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). · cites it 6× “See 35 U.S.C. § 315 (e). We have interpreted § 554(b)(3) in the context of IPR proceedings to mean that “‘an agency may not change theories in midstream without giving respondents rea- sonable notice of the change’ and ‘the opportunity to present argument under the new theory.”

Westerngeco LLC v. Ion Geophysical Corp. (In Re Westerngeco LLC), 889 F.3d 1308 (Fed. Cir. 2018). · cites it 9× “(together, ION) moved, under 35 U.S.C. § 315 (c), to join those IPRs. The Board granted ION's request but restricted its involvement to receiving notification of filings and attending, rather than actively participating in, depositions and oral hearings.”

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013 (Fed. Cir. 2017). · cites it 10× “At the same time, Broad Ocean requested that the Board join the Second Petition with Broad Ocean’s already-instituted IPR involving the First Petition pursuant to 35 U.S.C. § 315 (c) (allowing for joinder in an IPR at the discretion of the Director of the United States Patent…”

Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). · cites it 4× “35 U.S.C. § 315 (e). This provision is only consistent with the remainder of the AIA if the petitioner bears the burden to prove all propositions of unpatentability.”

Show all 314 citing cases →

— 35 U.S.C. § 315(e) — 1 case

Sioux Steel Co. v. Prairie Land Millwright Servs., Inc. (N.D. Ill. 2022).

— 35 U.S.C. § 315(e)(2) — 2 cases

Cellwitch Inc. v. Tile, Inc. (N.D. Cal. 2023).

SRAM, LLC v. Princeton Carbon Works Inc. (S.D. Fla. 2023).

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