Federal Circuit Clarifies Timing for Determination of Privity as Basis to Deny Patent Challenges in Inter Partes Review

Patent challenges by inter partes review (IPR) at the U.S. Patent and Trademark Office must be initiated within one year following a patent infringement lawsuit under 35 U.S.C. Section 315(b). This one-year window applies to “the petitioner, real party in interest [(RPI)], or privy of the petitioner.” The Patent Trial and Appeal Board (PTAB), who oversees IPR proceedings, has based prior decisions on the status of privies and RPIs using the filing date of an IPR petition as a reference point. However, the U.S. Court of Appeals for the Federal Circuit held that the status of an RPI or privy should be determined at the institution stage of an IPR proceeding, rather than at the filing stage, in its recent decision in Power Integrations, Inc. v. Semiconductor Components Industries, LLC, DBA ON Semiconductor, Case No. 2018-1607 (Fed. Cir. June 13, 2019).