Histologics, LLCv.CDx Diagnostics, Inc.

Patent Trial and Appeal Board

Sep 12, 2014

09360425 (P.T.A.B. Sep. 12, 2014)

Trials@uspto.gov Paper No. 6
571-272-7822 Entered: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HISTOLOGICS, LLC,
Petitioner,

v.

CDX DIAGNOSTICS, INC. and
SHARED MEDICAL RESOURCES, LLC,
Patent Owners.
____________

Case IPR2014-00779
Patent 6,258,044 B1
____________

Before PHILIP J. KAUFFMAN, SCOTT E. KAMHOLZ, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Patent 6,258,044 B1

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I. INTRODUCTION
Histologics, LLC (“Histologics”) filed a Petition (Paper 2, “Pet.”) on
May 23, 2014, requesting institution of an inter partes review of claims 1-39
of U.S. Patent No. 6,258,044 B1 (“the ’044 patent”). Patent Owners CDx
Diagnostics, Inc. (“CDx”) and Shared Medical Resources, LLC (“SMR”)
filed a Preliminary Response (Paper 5, “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314.
We deny the petition because institution is barred under
35 U.S.C. § 315(b).
II. DISCUSSION
A. Facts
SMR filed a civil action for infringement of the ’044 patent against
Histologics, among other defendants, on April 19, 2012 in the U.S. District
Court for the Central District of California (“California Court”). Pet. 6. The
case was captioned Shared Medical Resources LLC v. Histologics, LLC and
assigned case number 8:12-cv-00612 (“the ’612 action”). Id. (citing Ex.
1017). The record in this proceeding does not reflect the date on which
Histologics was served with the complaint in the ’612 action, but Histologics
does not dispute that it was served soon after the complaint was filed.
Histologics moved to dismiss the ’612 action on the basis that SMR
lacked standing to bring the case alone and without the co-owner of the
’044 patent, CDx. Pet. 6. SMR explained that CDx did not to join as a
plaintiff in the ’612 action because CDx was subject to an automatic stay in
bankruptcy. Prelim. Resp. 3; see also Ex. 1018, 5 (the California Court in
the ’612 action acknowledging that SMR could not cure the lack of
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prudential standing until CDx’s bankruptcy proceedings were resolved).
Although the California Court granted Histologics’s motion and ordered the
’612 action dismissed without prejudice, the ’612 action was stayed pending
the outcome of CDx’s bankruptcy proceeding. Ex. 1018, 5; see also Pet. 6
(acknowledging that the ’612 action was stayed).
On May 24, 2013, Histologics was served with a second complaint for
infringement of the ’044 patent. Pet. 7 (citing Exs. 1019, 1020). This
complaint was filed by CMx and SMR, jointly, in the U.S. District Court for
the Southern District of New York (“New York Court”). Id.; Ex. 1019.
Histologics requested dismissal of the New York action or transfer to the
U.S. District Court for the Central District of California in favor of the ’612
action, which Histologics characterized in its request as “not . . . dismissed”
and as “currently pending.” Pet. 7; Prelim. Resp. 3 (citing Ex. C appended
thereto).
On June 14, 2013, Histologics informed the California Court in the
’612 action that CDx had emerged from bankruptcy. Pet. 7; Prelim. Resp. 3.
On June 17, 2013, Histologics filed declaratory judgment counterclaims in
the ’612 action. Pet. 7; Prelim. Resp. 3; Prelim. Resp. Ex. A, 9 (docket
entry 76 in ’612 action). On July 3, 2013, the California Court issued an
order (docket entry 78 in the ’612 action) lifting the stay on the ’612 action
and “restor[ing] this case to its active caseload.” Prelim. Resp. 3-4 (citing
Ex. A); Prelim. Resp. Ex. A, 9 (docket entry 78); Ex. 3001 (copy of docket
entry 78, “Order Lifting Stay”).
*
The California Court did not refer to the

*
The paper entered as Exhibit 3001 was retrieved via PACER.
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dismissal of the ’612 action in its order reactivating the ’612 action.
Ex. 3001.
On October 25, 2013, the New York Court ordered the New York
action transferred to the U.S. District Court for the Central District of
California. Pet. 7. The transferred case was entitled CDx Diagnostics, Inc.
& Shared Medical Resources, LLC v. Histologics LLC and assigned case
number 2:13-cv-07909 in the California Court (“the ’909 action”). Pet. 7;
Prelim. Resp. 4. On February 11, 2014, the California Court consolidated
the ’612 action with the ’909 action and dismissed the ’612 action. Pet. 7
(citing Ex. 1022). The order dismissing the ’612 action did not specify
whether the dismissal was with prejudice or without prejudice. Ex. 1022.
B. Analysis
Section 315(b) of Title 35 of the United States Code provides:
(b) PATENT OWNER’S ACTION.—An inter
partes review may not be instituted if the petition
requesting the proceeding is filed more than 1 year
after the date on which the petitioner, real party in
interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. The
time limitation set forth in the preceding sentence
shall not apply to a request for joinder under
subsection (c).
Histologics argues that its Petition is timely because it was filed not
more than one year after the date it was served with a “non-jurisdictionally-
deficient” complaint alleging infringement of the ’044 patent. Pet. 8.
Histologics argues that the ’612 action was dismissed without prejudice and
that, as a result, service of the complaint in that action was nullified and does
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not trigger the time bar under 35 U.S.C. § 315(b). Id. (citing InVue Sec.
Prods. Inc. v. Merch. Techs., Inc., Case IPR2013-00122 (PTAB 2013)
(Paper 17) (citing Macauto USA v. Bos GmbH, Case IPR2012-00004 (PTAB
2013) (Paper 18, 15-16))).
CDx and SMR argue that the ’612 action was not dismissed but,
rather, consolidated into the ’909 action, and that it remains a “viable and
active case” through the vehicle of the ’909 action. Prelim. Resp. 4.
Upon consideration of the parties’ arguments and evidence, we
determine that the ’612 action bars inter partes review on Histologics’s
Petition. Histologics was served with a complaint alleging infringement of
the ’044 patent more than one year before it filed its Petition. It remains
involved in litigation stemming from that complaint. The allegation of
patent infringement in the ’612 action was consolidated into the ’909 action,
as were Histologics’s counterclaims filed in the ’612 action. To the extent
that the ’612 action was dismissed, it did not render service of the complaint
in the ’612 action a nullity, because Histologics remains answerable to the
U.S. District Court for the Central District of California for the allegations
made in that complaint. The parties are not left in the same legal position as
if the ’612 action had never been filed.
Histologics’s reliance on InVue is misplaced, because that case dealt
with the effect of dismissal of a declaratory judgment action for invalidity
under 35 U.S.C. § 315(a), not the effect of dismissal of an infringement
action under § 315(b). InVue, Paper 17 at 9. The present case also is
distinguishable from Macauto, because the effect of the dismissal there had
been to leave the parties in the same legal positions as if the action had not
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been filed. Macauto, Paper 18 at 15. Here, the parties remain engaged in a
dispute first raised in the complaint of the ’612 action, a dispute that has
been pending continuously since that complaint was filed.
To the extent that Histologics argues that the earlier dismissal of the
’612 action for lack of standing nullified the effect of service, we disagree.
Although the Court characterized the disposition of the case as a dismissal
without prejudice, the actions of both the Court and Histologics demonstrate
that the case was merely stayed, not dismissed. The Court expressly stayed
the ’612 action at the same time as it ordered dismissal. The Court later
lifted the stay and “restore[d] this case to its active caseload”—in effect
vacating the dismissal. Ex. 3001. Histologics, similarly, treated the ’612
action as not dismissed, by filing counterclaims in the ’612 action and in
characterizing the ’612 action as “pending” and “not . . . dismissed.”
Prelim. Resp. Ex. C.
For these reasons, we determine that service of the complaint in the
’612 action has not been nullified and, consequently, bars institution of inter
partes review on this Petition.
III. CONCLUSION
The Board denies institution of inter partes review because the
Petition was not filed within the time limit imposed by 35 U.S.C. § 315(b).
IV. ORDER
For the reasons given, it is
ORDERED that the petition challenging the patentability of
claims 1-39 of U.S. Patent No. 6,258,044 B1 is denied.
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For Petitioner:

Rudolph Telscher
rtelscher@hdp.com

Bryan Wheelock
bwheelock@hdp.com

Greg Meyer
gmeyer@hdp.com

For Patent Owner:

Peter Berger
pberger@llbl.com