Patent Owner’s Preliminary Response In Inter Partes Review: Statutory Bars (Part 2)

In this follow-up to her earlier article, Chandrika Vira provides patent owners in inter partes reviews with guidance on filing a preliminary response asserting a statutory bar in cases where a civil action served on or filed by a non-party to the petition might bar a petition under § 315(a) or § 315(b) if that party can be considered a real party in interest or privy of the petitioner. This article also provides guidance in petitions where a petitioner attempts to circumvent the § 315(b) statutory bar by applying for joinder of otherwise time-barred petitions to an earlier filed petition seeking to invalidate the same patent.