Under 35 U.S.C. § 315(b), an inter partes review petition will not be instituted “if the petition requesting the proceeding is 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” (emphasis added).

In a recent Board decision, Eizo Corporation v. Barco N.V., IPR2014-00358, Paper 21 (July 14, 2015), the Board held that an inter partes review request on a reissued patent was not time barred when a complaint of patent infringement for the original patent was served more than two years prior to the filing date of the IPR petition for the reissued patent.

In Eizo, patent owner served a complaint alleging patent infringement of U.S. Patent No. 7,639,849 (“the ‘849 patent”), on October 7, 2011. On October 2, 2012, the ‘849 patent was reissued as U.S. Patent No. RE43,707 (“the ‘707 patent”). Petitioner filed a request for inter partes review of the ‘707 patent on January 17, 2014.

Here the Board held that “[t]he reissuance of the '849 patent as the '707 patent did not continue the '849 patent, but rather resulted in the surrender of the '849 patent and the issuance of a new patent, the '707 patent.” See Eizo at Page 8. Thus, the complaint alleging infringement of the ‘849 patent did not apply to the new ‘707 patent because the petitioner was not served a complaint “of the patent.”

Further, patent owner served an amended complaint alleging infringement of the ‘707 patent on January 17, 2013, which was exactly one-year prior to the filing date of the inter partes review request of the ‘707 patent. Thus, the petition was timely filed.

Patent owner attempted to argue that the reissued patent was “substantially identical” to the original patent, and thus, a continuation of the original patent under 35 U.S.C. § 252. However, the Board was not persuaded that the claims were substantially identical.

Similar to the Federal Circuit’s holding in Accord Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,1341-42 (Fed. Cir. 2012), the Board has distinguished between a reissued patent and a reexamination patent, and has differentiated these types of patents with respect to the one-year statutory bar under 35 U.S.C. § 315(b). For example, in BioDelivery Sciences International, Inc. v. MonoSol Rx, LLC, IPR2013-00315 (Paper 31) (November 13, 2013), the Board held that a reexamination does not result in a new patent. Instead, “a reexamination certificate merely incorporat[es] in the patent any proposed amended or new claim determined to be patentable.'” See BioDelivery at Page 3-4 (citing 35 U.S.C. 307(a)).