35 U.S.C. § 324 — Institution of post-grant review

Page 132 TITLE 35—PATENTS § 322 not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the Inter- national Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding. ‘‘(E) The Director may institute a transitional proceeding only for a patent that is a covered busi- ness method patent. ‘‘(2) EFFECTIVE DATE.—The regulations issued under paragraph (1) shall take effect upon the expiration of the 1-year period beginning on the date of the enact- ment of this Act [Sept. 16, 2011] and shall apply to any covered business method patent issued before, on, or after that effective date, except that the regula- tions shall not apply to a patent described in section 6(f)(2)(A) of this Act [set out as a note above] during the period in which a petition for post-grant review of that patent would satisfy the requirements of section 321(c) of title 35, United States Code. ‘‘(3) SUNSET.— ‘‘(A) IN GENERAL.—This subsection, and the regu- lations issued under this subsection, are repealed effective upon the expiration of the 8-year period beginning on the date that the regulations issued under to [sic] paragraph (1) take effect [Regulations effective Sept. 16, 2012, see 77 F.R. 48680.]. ‘‘(B) APPLICABILITY.—Notwithstanding subpara- graph (A), this subsection and the regulations issued under this subsection shall continue to apply, after the date of the repeal under subpara- graph (A), to any petition for a transitional pro- ceeding that is filed before the date of such repeal. ‘‘(b) REQUEST FOR STAY.— ‘‘(1) IN GENERAL.—If a party seeks a stay of a civil action alleging infringement of a patent under sec- tion 281 of title 35, United States Code, relating to a transitional proceeding for that patent, the court shall decide whether to enter a stay based on— ‘‘(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial; ‘‘(B) whether discovery is complete and whether a trial date has been set; ‘‘(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and ‘‘(D) whether a stay, or the denial thereof, will re- duce the burden of litigation on the parties and on the court. ‘‘(2) REVIEW.—A party may take an immediate in- terlocutory appeal from a district court’s decision under paragraph (1). The United States Court of Ap- peals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo. ‘‘(c) ATM EXEMPTION FOR VENUE PURPOSES.—In an ac- tion for infringement under section 281 of title 35, United States Code, of a covered business method pat- ent, an automated teller machine shall not be deemed to be a regular and established place of business for purposes of section 1400(b) of title 28, United States Code. ‘‘(d) DEFINITION.— ‘‘(1) IN GENERAL.—For purposes of this section, the term ‘covered business method patent’ means a pat- ent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. ‘‘(2) REGULATIONS.—To assist in implementing the transitional proceeding authorized by this section, the Director shall issue regulations for determining whether a patent is for a technological invention. ‘‘(e) RULE OF CONSTRUCTION.—Nothing in this section shall be construed as amending or interpreting cat- egories of patent-eligible subject matter set forth under section 101 of title 35, United States Code.’’ § 322. Petitions (a) REQUIREMENTS OF PETITION.—A petition filed under section 321 may be considered only if— (1) the petition is accompanied by payment of the fee established by the Director under section 321; (2) the petition identifies all real parties in interest; (3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, in- cluding— (A) copies of patents and printed publica- tions that the petitioner relies upon in sup- port of the petition; and (B) affidavits or declarations of supporting evidence and opinions, if the petitioner re- lies on other factual evidence or on expert opinions; (4) the petition provides such other informa- tion as the Director may require by regula- tion; and (5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applica- ble, the designated representative of the pat- ent owner. (b) PUBLIC AVAILABILITY.—As soon as prac- ticable after the receipt of a petition under sec- tion 321, the Director shall make the petition available to the public. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 306.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title. § 323. Preliminary response to petition If a post-grant review petition is filed under section 321, the patent owner shall have the right to file a preliminary response to the peti- tion, within a time period set by the Director, that sets forth reasons why no post-grant review should be instituted based upon the failure of the petition to meet any requirement of this chapter. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 306.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title. § 324. Institution of post-grant review (a) THRESHOLD.—The Director may not author- ize a post-grant review to be instituted unless Page 133 TITLE 35—PATENTS § 325 the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would dem- onstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. (b) ADDITIONAL GROUNDS.—The determination required under subsection (a) may also be satis- fied by a showing that the petition raises a novel or unsettled legal question that is impor- tant to other patents or patent applications. (c) TIMING.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 months after— (1) receiving a preliminary response to the petition under section 323; or (2) if no such preliminary response is filed, the last date on which such response may be filed. (d) NOTICE.—The Director shall notify the peti- tioner and patent owner, in writing, of the Di- rector’s determination under subsection (a) or (b), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence. (e) NO APPEAL.—The determination by the Di- rector whether to institute a post-grant review under this section shall be final and nonappeal- able. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 306.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title. § 325. Relation to other proceedings or actions (a) INFRINGER’S CIVIL ACTION.— (1) POST-GRANT REVIEW BARRED BY CIVIL AC- TION.—A post-grant review may not be insti- tuted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. (2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the pat- ent on or after the date on which the peti- tioner files a petition for post-grant review of the patent, that civil action shall be auto- matically stayed until either— (A) the patent owner moves the court to lift the stay; (B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the pat- ent; or (C) the petitioner or real party in interest moves the court to dismiss the civil action. (3) TREATMENT OF COUNTERCLAIM.—A coun- terclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. (b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consider- ation of the patent owner’s motion for a prelimi- nary injunction against infringement of the pat- ent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter. (c) JOINDER.—If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review. (d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, dur- ing the pendency of any post-grant review under this chapter, if another proceeding or matter in- volving the patent is before the Office, the Di- rector may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Direc- tor may take into account whether, and reject the petition or request because, the same or sub- stantially the same prior art or arguments pre- viously were presented to the Office. (e) ESTOPPEL.— (1) PROCEEDINGS BEFORE THE OFFICE.—The pe- titioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the peti- tioner, may not request or maintain a pro- ceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review. (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that re- sults in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under sec- tion 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the peti- tioner raised or reasonably could have raised during that post-grant review. (f) REISSUE PATENTS.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a re- issue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limi- tations in section 321(c) would bar filing a peti- tion for a post-grant review for such original patent. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 307.)