The United States Patent Trial and Appeal Board Determines That a Civil Action Dismissed Without Prejudice Does Not Bar a Petition for Inter Partes Review Under 35 U.S.C. § 315 (a)(1)

We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board (“PTAB”) determined that a “complaint alleging infringement of the patent” does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b).

This week, the PTAB also determined what constitutes a bar to filing an inter partes review petition under 35 U.S.C. § 315 (a)(1); specifically whether a civil action filed before a petition for an inter partes review that is subsequently dismissed without prejudice is a bar to the petition under 35 U.S.C. § 315 (a)(1). The PTAB held that it is not.

Title 35, section 315, part a, subsection 1 of the United States Code provides:

Inter partes review barred by civil action — An 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.

The Procter and Gamble Company (“P&G”), patent owner of U.S. Patent Number 5,894,017 (“the ‘017 patent”), requested a rehearing of the PTAB’s decision to institute inter partes review, contending that 35 U.S.C. § 315 (a)(1) bars the inter partes review due to Petitioner Clio USA, Inc. (“Petitioner”) having previously filed a declaratory judgment action challenging the validity of the ‘017 patent.

The PTAB rejected all three of P&G’s arguments and concluded that P&G did not show an abuse of discretion. First, P&G argued that the Board committed legal error because the language of 35 U.S.C. § 315 (a)(1) is plain and unambiguous and Petitioner’s filing of the declaratory judgment action for invalidity barred the issue. The Board noted that it had already rejected these arguments in its decision. Second, P&G argued that the cases cited in the Board’s Decision to guide the Board’s interpretation of the term “filed” did not construe that term and are therefore, irrelevant. The Board again disagreed and said that these cases demonstrated that Courts “treat dismissals without prejudice as if the actions were never filed.” Last, P&G argued that the Board misinterpreted the holding in Anova Food, LLC v. Sandau, IPR2013-00114 and the Board again disagreed by saying that it had distinguished Anova because Anova involved a previously-filed declaratory judgment action that had been dismissed with prejudice. In conclusion, the PTAB found that P&G had not shown an abuse of discretion and denied P&G’s request for Rehearing of the Decision to institute inter partes review. See PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (The Board cites an abuse of discretion as when a “decision was based on an erroneous conclusion on law or clearly erroneous factual findings, or . . . a clear error of judgment.”).

Gibbons will continue to track future developments regarding procedural limitations impacting inter partes reviews.

Charles H. Chevalier is an Associate in the Gibbons Intellectual Property Department. Jillian A. Centanni, a former Associate in the Gibbons Intellectual Property Department, co-authored this post.
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