Calculating the One-Year Time Bar for an IPR Petition

The one-year time bar is the deadline that most often decides whether an accused infringer can use inter partes review. It is short, it is strictly applied, and the Board’s decision that a petition is time-barred is not appealable. This post sets out how the deadline is calculated and the points at which petitioners most often miscalculate it.

The Statutory Rule

Section 315(b) of title 35 provides that an inter partes review may not be instituted if the petition is filed more than one year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent. The last sentence of § 315(b) provides that the time limit does not apply to a request for joinder under § 315(c).

Three elements control the calculation: what counts as service, which complaint starts the period, and whose service counts.

What Counts as Service

The period runs from service of a complaint, not from filing, notice or informal delivery. In Motorola Mobility LLC v. Arnouse, IPR2013-00010, the Board held that receiving a copy of a complaint without formal service under the governing rules did not start the period. See the note on Motorola v. Arnouse.

A proposed amended complaint attached to a motion for leave to amend has also been held not to start the period, because it is not yet an operative pleading that has been served. See the notes on Amneal v. Endo and TRW v. Magna.

Which Complaint Starts the Period

When a patent owner sues more than once, the first service of a complaint alleging infringement of the patent starts the one-year period. A later complaint asserting the same patent does not restart it. See the note on LG Electronics v. Mondis.

Dismissal does not reset the period either. The Board’s early view that a complaint dismissed without prejudice did not count, applied in Oracle v. Click-to-Call, was rejected by the Federal Circuit in Click-to-Call Technologies, LP v. Ingenio, Inc. (Fed. Cir. 2018). In Thryv, Inc. v. Click-to-Call Technologies, LP (2020), the Supreme Court held that the Board’s application of § 315(b) at institution is not subject to judicial review.

Whose Service Counts

The bar applies if the petitioner, its real party in interest or its privy was served more than a year before the petition. A petitioner that has never been sued may still be barred because an affiliate, customer or other related party was served. Two consequences follow:

• Disclosure. The petition must identify all real parties in interest (35 U.S.C. § 312(a)(2)). An omitted real party in interest that was served more than a year earlier can end the proceeding, as in GEA v. Steuben Foods.
• Relationships. Privity is assessed flexibly and can reach parties with a close legal relationship to a defendant. See Who Is the Real Party in Interest and Defining Privy.

Question	Rule	Where to read more
What starts the period?	Formal service of a complaint alleging infringement	Motorola v. Arnouse
Does a later complaint restart it?	No; the first service controls	LG v. Mondis
Does dismissal reset it?	No (Click-to-Call, Fed. Cir. 2018)	Oracle v. Click-to-Call
Whose service counts?	Petitioner, real party in interest, privy	Defining Privy
Does it apply to joinder?	No; § 315(b) excepts joinder requests	Microsoft v. Proxyconn

Securing a Timely Filing Date

The relevant date is the filing date the Board accords to the petition. Under 37 C.F.R. § 42.106(a), a petition is accorded a filing date only when it is complete, including the required fee and service on the patent owner. A petition filed on time but without effective payment can receive a later filing date that falls outside the one-year period, as in Luv N’ Care v. McGinley. For the elements of a complete petition, see The Basics of an Inter Partes Review Petition.

Joinder After the Deadline

Because § 315(b) does not apply to a request for joinder, a time-barred party may sometimes join an instituted proceeding brought by another petitioner. In Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020), the Federal Circuit held that § 315(c) does not authorize a party to join a proceeding to which it is already a party or to add new issues through joinder. Joinder therefore permits a time-barred party to participate in an existing review, not to bring new grounds.

Key Takeaways

• The one-year period under 35 U.S.C. § 315(b) runs from formal service of the first complaint alleging infringement of the patent.
• Later complaints do not restart the period, and voluntary dismissal does not reset it.
• Service on a real party in interest or privy counts against the petitioner, so relationships must be identified before filing.
• The petition must be complete, including the fee, to receive a filing date within the period.
• Joinder under § 315(c) is excepted from the bar but does not allow new issues to be added.