Lawsuit Dismissed Under 35 U.S.C. § 1498 Does Not Trigger 35 U.S.C. § 315(b) Time Bar for IPR Initiated by the U.S. Government

The Board partly granted institution of inter partes review of a patent directed to an improved airport security system under 35 U.S.C. § 103(a), and rejected the patent owner's argument that the petition should be denied under 35 U.S.C. § 315(b). "[Defendant in the earlier lawsuit] moved for dismissal . . . arguing . . . that Patent Owner’s 'exclusive remedy is an action against the United States under 28 U.S.C. § 1498(a).' . . . The district court granted [defendant's] motion . . . . [T]he United States’] mere participation in [that] litigation and assumption of liability do not, without more, make a party a real party in interest. . . . [W]hile Patent Owner’s argument that the United States 'directed and controlled the allegedly infringing activity' is not without relevance, it does not bear directly on the categories identified by the Supreme Court in [Taylor v. Sturgell, 553 U.S. 880 (2008)], and which the Board has applied in considering whether third parties are real parties in interest. . . . Essentially, Patent Owner sued the wrong defendant in the [patent infringement] litigation. When it sued the correct defendant in the Court of Federal Claims litigation, the defendant responded by filing a petition for inter partes review within the one-year window provided by § 315(b). . . . [W]e are not persuaded that the statutory bar applies against the correct defendant under such a scenario, even considering the specific facts of Petitioner’s involvement with the [patent infringement] litigation as set forth on the record before us."

Petition for Inter Partes Review by The United States Department of Justice, IPR2016-00497 (PTAB July 25, 2016, Order) (Boucher, APJ)