Ten designated rulings test what starts the inter partes review deadline, what stops it, and when a petition counts as filed. Seven went against the petitioner. The three that went its way each turned on a specific document: a missing summons, a motion that wasn’t a complaint, a bank confirmation.
Before you read
An infringement complaint is served without a summons. Does the one-year IPR clock start?
No. In Motorola v. Arnouse, the petitioner “must be served with a summons before the one-year time period” begins.
Part 1 of 6
Luv N’ Care was served with an infringement complaint on March 31, 2016. On March 30, 2017, with a day to spare, it uploaded its IPR petition. The deposit account didn’t have enough money, and the receipt warned that payment had not cleared. Funds went in the next day. Payment wasn’t made until April 11, 2017, and that became the filing date.
Source
The Board accorded the April 11 date and denied institution. Adding money to the account was not the same as paying.
Part 2 of 6
The IPR statute closes the door three ways. A petition “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” can’t be instituted.
| What triggers it | Statute | |
|---|---|---|
| The one-year bar | Service of an infringement complaint on the petitioner, its real party in interest or a privy | § 315(b) |
| The petitioner’s own suit | An earlier civil action by the petitioner or its real party in interest challenging validity | § 315(a)(1); § 325(a)(1) for PGR and CBM review |
| The filing date itself | A petition isn’t complete without the fee; if payment fails, the date can move past the deadline | § 312(a)(1) |
A real party in interest is the party actually directing or funding the petition; a privy is a party legally tied to the petitioner.
Part 3 of 6
Each card gives the facts the Board relied on. Guess, then tap.
Part 4 of 6
10 designated decisions, 2013 to 2022
Tap a segment to see the rulings.
Excludes Oracle v. Click-to-Call, de-designated in May 2020. Before that de-designation it was precedential only as to § III.A.
The three wins turned on narrow, documented facts, not on any broad exception. And winning the timing question isn’t the same as getting a trial: Toshiba won it and was still denied.
Part 5 of 6
Choose your side.
0 of 6 reviewed
Part 6 of 6
Two of the precedential decisions, GoPro and Infiltrator, rest on a Federal Circuit judgment, Click-to-Call v. Ingenio (2018), that the Supreme Court later vacated on reviewability grounds in Thryv v. Click-to-Call (2020), without reaching the one-year-bar question. How the Board has treated GoPro and Infiltrator since Thryv has not been checked.
Solid
Check before relying
Four of the ten are informative and don’t bind. Several date from 2013 to 2019, and the Office’s fee and filing systems have changed since. Oracle v. Click-to-Call, once designated precedential only as to § III.A, was de-designated in May 2020 and isn’t counted.
The takeaway
Before you report the petition filed, read the confirmation and check the filing date the Office gave it.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.