U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 32— POST-GRANT REVIEW

35 U.S.C. § 325

Relation to other proceedings or actions

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(a)Infringer’s Civil Action.—(1)Post-grant review barred by civil action.—A post-grant review may not be instituted under this chapter 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 post-grant 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)Preliminary Injunctions.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter.(c)Joinder.—If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.(d)Multiple Proceedings.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.(e)Estoppel.—(1)Proceedings before the office.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.(2)Civil actions and other proceedings.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.(f)Reissue Patents.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(c) would bar filing a petition for a post-grant review for such original patent.(Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 307.)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.

Statutory Notes and Related SubsidiariesEffective Date

Section effective upon the expiration of the 1-year period beginning Sept. 16, 2011, and applicable only to patents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limitations, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title.

Notes of Decisions
Cited in 36 cases (19 in the last 5 years), 2014–2026 · leading case: Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 24× “CAC appeals the Board’s determi- nation that the petitioner, Westlake Services, LLC (“Westlake”), was not estopped from maintaining CBM review of those claims under 35 U.S.C. § 325 (e)(1). CAC also appeals the Board’s § 101 determination.”
Altaire Pharm., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274 (Fed. Cir. 2018). · cites it 4× “Pursuant to the estoppel provision in 35 U.S.C. § 325 (e)(2), “[t]he petitioner in a post-grant re- view .”
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). · cites it 2× “§ 324 (e), does not preclude our review of an estoppel determination under 35 U.S.C. § 325 (e)(1)). Accordingly, our review of the statutory language and the statutory scheme reveals no clear and convincing indica- tion of Congress’s intent to bar judicial review of § 315(b)…”
Senju Pharm. Co. v. Metrics, Inc., 96 F. Supp. 3d 428 (D.N.J. 2015). · cites it 3× “Plaintiffs seek to enjoin Defendants from participating in the IPR proceeding under the novel argument that 35 U.S.C. § 325 (a)(1), which governs the filing of IPR petitions, bars Defendants from seeking IPR because they already filed a “civil action” challenging the validity of…”
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). “§ 314 (a) ; see 35 U.S.C. § 325 (d). "The decision whether to institute inter partes review is committed to the Director's discretion.”
alarm.com Inc. v. Hirshfeld, 26 F.4th 1348 (Fed. Cir. 2022). · cites it 2× “com asserted that the Director’s three decisions va- cating each ex parte reexamination proceeding were final agency actions and were unlawful and should be set aside 2 The regulation also requires certification regarding 35 U.S.C. § 325 (e)(1), which is the estoppel provision…”
Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). “See 35 U.S.C. § 325 (c) (“If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under sec- tion 324, the…”
Intellectual Ventures II LLC v. Jpmorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015). · cites it 2× “, 35 U.S.C. § 325 (d) (“In determining whether to institute or order a proceeding under this chapter, .”
Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382 (Fed. Cir. 2016). “There the Board similarly vacated its initial institution decisions because a prior civil action barred the party from seeking review under 35 U.S.C. § 325 (a)(1). 789 F.3d at 1311 .”
Gtnx, Inc. v. Inttra, Inc., 789 F.3d 1309 (Fed. Cir. 2015). “Of relevance to this case, 35 U.S.C. § 325 (a)(1) declares that “review may not be instituted .”
Synopsys, Inc. v. Matal, 280 F. Supp. 3d 823 (E.D. Va. 2017). “§ 315 (e)(1) or 35 U.S.C. § 325 (e)(1) do not prohibit the requester from filing the ex parte reexamination request.”
GEA Process Eng'g, Inc. v. Steuben Foods, Inc., 618 F. App'x 667 (Fed. Cir. 2015). “The Board initially instituted proceedings but subsequently vacated the institution decision and terminated proceedings after it was determined that the petitioner had previously filed a declaratory judgment action that barred review under 35 U.S.C. § 325 (a)(1). See id. The…”
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— 35 U.S.C. § 325(e)(1) — 1 case
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). “CAC appeals the Board’s determi- nation that the petitioner, Westlake Services, LLC (“Westlake”), was not estopped from maintaining CBM review of those claims under 35 U.S.C. § 325 (e)(1). CAC also appeals the Board’s § 101 determination.”
— 35 U.S.C. § 325(e)(2) — 2 cases
Gree, Inc v. Supercell Oy (E.D. Tex. 2019).
Benefit Funding Sys. v. Advance Am. Cash (Fed. Cir. 2014).
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