An IPR, CBM or PGR proceeding may not be instituted if the petitioner or real party-in-interest of the petitioner filed a civil action challenging the validity of a claim of the patent before filing the petition. See 35 U.S.C. § 315(a)(1) (IPR proceedings) and 35 U.S.C. § 325(a)(1) (CBM and PGR proceedings).
CyanoTech Corp. v. Board of Trustees of the Univ. of Illinois, IPR2013-00401, Paper 17 (PTAB Dec. 9, 2013). The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1) because petitioner’s earlier declaratory judgment action was dismissed without prejudice. Since the prior civil action was dismissed without prejudice, it is a nullity and the parties are left in the same legal position as if the action was never filed. Therefore, in the context of § 315(a)(1), the prior action was never filed. As such, petitioner is not barred under § 315(a)(1).
Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166 slip op. at 14 (PTAB Sept. 2, 2014). Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be instituted 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.” A civil action for a declaratory judgment of non-infringement is not “a civil action challenging the validity of a patent” under §315(a)(1). Moreover, asserting an affirmative defense of invalidity is treated differently than a counterclaim for invalidity, and thus for the purposes of § 315(a)(1) cannot be considered a filing of a civil action for invalidity.
SecureBuy LLC v. Cardinal Commerce Corp., CBM2014-00035, Paper 12 (Apr. 25, 2014) (precedential). The Board held that the estoppel provisions of 35 U.S.C. § 325(a)(1) apply to CBM reviews. § 325(a)(1) provides that “[a] post-grant review may not be instituted 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.” AIA § 18(a)(1) provides that CBM review proceedings shall employ all the statutory standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321-329) except for those expressly included (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)). § 325(a)(1) therefore applies to CBM reviews. Prior to filing its CBM petition, petitioner filed a declaratory judgment for invalidity. Under § 325(a)(1), the Board was therefore prevented from instituting based on petitioner’s prior civil action.
CQG, Inc. v. Trading Techs. Int’l, Inc., CBM2015-00057, Paper 12 (PTAB July 10, 2015). The Board denied institution on the basis that petitioner was barred from seeking review under 35 U.S.C. § 325(a)(1) because petitioner had filed a declaratory judgment (DJ) action prior to filing the petition. § 325(a)(1) applies to CBM proceedings (citing SecureBuy, CBM2014-00035, Paper 12 (Apr. 25, 2014)). Petitioner filed the DJ action in Colorado, while patent owner filed an infringement complaint in Illinois. The Colorado DJ action was dismissed without prejudice and transferred to Illinois. The Board determined that, although the Colorado DJ action was dismissed without prejudice, it was done so by agreement of the parties and transferred to the Illinois infringement action, effectively joining both actions. The legal positions of petitioner continued in the Illinois action, and therefore petitioner’s DJ action prior to filing the petition bars consideration of the petition.
Tristar Prods., Inc. v. Choon’s Design, LLC, IPR2015-01883, Paper 6 (Mar. 9, 2016). The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1) because petitioner’s earlier declaratory judgment action was dismissed without prejudice. Because the effect of a voluntary dismissal without prejudice is to render the prior action a nullity, such actions cannot give rise to a statutory bar under § 315(a)(1). Patent owner argued that, although the declaratory judgment action was dismissed without prejudice, the statutory bar should still apply because petitioner did not let the claims from the declaratory judgement action rest, but instead brought its claims as affirmative defenses and counterclaims of invalidity in the related district court litigation. The Board disagreed, noting that the declaratory judgement was dismissed voluntarily and was not consolidated with the district court litigation, and that petitioner raised new and separate affirmative defenses and counterclaims in the related district court litigation. Further, § 315(a)(3) explicitly states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of patent for purposes of this subsection.”
Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 37 (PTAB Apr. 19, 2016). The Board denied patent owner’s request to rehear its argument that petitioner should have been barred from pursuing CBM review because it filed a civil action before filing the CBM petition. Petitioner’s filing of a civil action before the petition did not trigger the statutory bar of 35 U.S.C. 325(a)(1), because the civil action was dismissed without prejudice.
Xilinx, Inc. v. Papst Licensing GmbH & Co., KG, IPR2016-00104, Paper 8 (PTAB May 6, 2016). The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1). Prior to filing the petition, petitioner filed an action in district court seeking declaratory judgment of invalidity and non-infringement of the patent. The district court dismissed the action without prejudice for lack of personal jurisdiction prior to the filing date of the petition. Petitioner has appealed to the Federal Circuit the dismissal as to non-infringement, but petitioner has not appealed the dismissal as to invalidity. The federal courts have consistently interpreted the effect of dismissal without prejudice as leaving the parties as though the action had never been brought. Since petitioner has not appealed the dismissal as to invalidity, the appellate court lacks jurisdiction over issues not appealed. Accordingly, the dismissal as to invalidity is final, and the parties are in the same position as though the action challenging validity never existed.