Can Patent Invalidity Counterclaims Bypass Bar On IPR?

By Sarine Hagopian and Eligio Pimentel (June 8, 2020, 5:00 PM EDT) -- Congress enacted inter partes review as a mechanism for resolving validity issues in a streamlined, expedited and cost-effective manner.

The controlling statutory framework restricts a patent challenger's ability to seek IPR in two important ways. First, IPR is unavailable where a civil action challenging patent validity is filed prior to the filing of the IPR petition.[1] Second, IPR is unavailable if the petition is filed more than one year after the filing of a complaint for patent infringement.[2]

Thus, prior to being challenged with a patent infringement lawsuit, an accused infringer has two options: It can challenge patent validity in district...

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