PTAB: Reexamination Does Not Reset the One-Year Deadline For Filing a Petition for Inter Partes Review

Jun 5, 2019

Reading Time : 2 min

On October 2, 2014, Patent Owner filed a lawsuit in district court accusing Petitioner of infringing several claims of U.S. Patent No. 7,039,033 (the “’033 Patent”). In response, Petitioner filed an IPR (the “original IPR”) challenging the validity of the claims that Patent Owner had asserted against it in district court. The Board instituted the original IPR and ultimately held that all of the challenged claims were unpatentable. The Federal Circuit upheld the Board’s determination and thereafter the Board issued a certification cancelling all claims of the ’033 Patent challenged in the original IPR. Notably, while the Federal Circuit appeal was pending, Patent Owner sought ex parte reexamination of the ’033 Patent. The Patent Office granted the reexamination request and issued a reexamination certificate adding 68 new claims to the ’033 Patent. On November 18, 2018, within one year of the reexamination certificate being granted, Petitioner filed six IPRs (the “present IPRs”) challenging the validity of the new claims that were added to the ’033 Patent during reexamination.

The Board, however, declined institution of these IPRs because it found they were filed more than one year after the Petitioner was served with the district court complaint on October 2, 2014. These petitions were, therefore, time-barred under § 315(b). In reaching its decision, the Board rejected Petitioner’s argument that § 315(b)’s one-year time bar did not apply because Patent Owner’s ex parte reexamination certificate adding new claims created a new, materially different patent. The Board found that the Federal Circuit in Click-to-Call Technologies, LP v. Ingenio Inc. considered and rejected Petitioner’s argument, explaining that “reexamination does not result in the issuance of a new patent for purposes of § 315(b), regardless of claim scope.” Interestingly, the Board acknowledged that while its decision potentially forecloses the use of IPR for challenging reexamined claims, “Congress could have included in . . . [§] 315(b) language regarding the effect of reexamination on the deadline to file an IPR[,]” but chose not to do so.

The Board also denied Petitioner’s attempt to circumvent the § 315(b) time bar by joining the present IPRs to the original IPR. The Board first noted that the present IPRs were filed more than 34 months after the original IPR was instituted. Accordingly, Petitioner’s motion requesting joinder was filed several years after the one-month (post-institution) deadline set by the joinder rule and was therefore untimely. The Board further noted that even if the rules provide for joinder within one month of the issuance of a reexamination certificate, which they do not expressly do, Petitioner’s request was still several months late. Notwithstanding the joinder deadline, the Board also found that the original IPR was no longer pending before the Board and, therefore, it “cannot serve as a base proceeding to which [the present IPRs] may be joined.” Thus, the Board held that joinder was inappropriate for the independent reason that there was nothing for the present IPRs to join.

Practice Tip: Based on the Board’s current practice, a patent owner whose claims are found to be unpatentable in an IPR proceeding should consider—during the pendency of the proceeding, including an appeal of the Board’s determination—whether it could get new claims through ex parte reexamination. Any new claims that issue through reexamination may be immune from an IPR if the patent owner previously asserted the patent against the petitioner. Such consideration should also take into account any potential ramifications of intervening rights.

Apple Inc., v. IXI IP, LLC, IPR2019-00124, -00125, -00139, -00140, -00141, -00181 (PTAB June 3, 2019) (Tierney)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.