PTAB Designates As Precedential Decision Barring IPR Filed More Than One Year After Patent Challenger Filed District Court Action That Was Dismissed Without Prejudice
On August 29, 2019, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) designated as precedential a January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11). The PTAB found that 35 U.S.C. § 315(a) bars a patent challenger from challenging a patent at the PTAB more than one year after filing a declaratory judgement (“DJ”) action in district court challenging the same patent, even if the patent challenger voluntarily withdrew the DJ action without prejudice.
Prior to filing the inter partes review (“IPR”) in the current action, Cisco challenged the validity of the patent-at-issue in the IPR in district court, then voluntarily dismissed the district action without prejudice.
35 U.S.C. § 315(a)(1) provides that “[a]n IPR may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent” (emphasis added). Cisco argued that 35 U.S.C. § 315(a)(1) does not apply to district court actions that were dismissed without prejudice, and further requires that the patent challenger engage in substantive district court litigation.
The PTAB rejected Cisco’s arguments on several grounds. First, the PTAB found that the term “filed a civil action,” as recited in 35 U.S.C. § 315(a)(1), is implicated once a party commences the litigation, “irrespective of subsequent events.” Second, the legislative history contemplated that the time-bar apply when the “challenger seeks a declaratory judgment that a patent is invalid.” Slip Op. at 7, quoting 157 Cong. Rec. S1041 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl). Finally, relying on the Federal Circuit’s recent en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc), the PTAB held that a dismissal of the district court action without prejudice does not nullify the act of filing the action. As such, Cisco’s IPR was time-barred under 35 U.S.C. § 315(a)(1).