Patent Infringement Suit Against Indemnitee Forecloses IPR Petition by Indemnitor

May 29, 2024Inter Partes Review, 35 U.S.C. § 315(b)

The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent infringement against a seller of accused lighting products. The PTAB concluded that the seller was a real party in interest (RPI) to petitioner based on an indemnification relationship between the two entities. Therefore, institution of the petition was time-barred because petitioner filed the petition more than a year after an RPI had been served with a complaint.

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