A party who files a declaratory judgment action challenging the validity of a patent is generally barred under 35 U.S.C. § 315(a)(1) from subsequently challenging the patent in inter partes review through a standalone IPR petition or through a petition filed together with a motion to join existing IPR proceedings to which it is not a party under 35 U.S.C. § 315(c).
A party who files a declaratory judgment action challenging the validity of a patent might not be barred from subsequently challenging the validity of the patent in IPR proceedings, despite the bar set forth in 35 U.S.C. § 315(a)(1), where the party dismisses the declaratory judgment action without prejudice before petitioning for IPR. However, whether a party is permitted to do so could turn on the Federal Circuit’s upcoming decision in Click-to-Call Tech. LP v. Oracle Corp., 2018 WL 480499, at *1 (Fed. Cir. 2018), which will address whether a complaint that is dismissed without prejudice triggers the one-year time bar.
Colas filed a first petition for inter partes review of U.S. Patent No. 7,918,624 B2 (“the ’624 patent”) on May 12, 2016. The next day, May 13, 2016, Colas filed a declaratory judgment of invalidity and unenforceability in district court. The Board instituted IPR proceedings based on Colas’s petition (Case IPR2016-01032 (“the -1032 IPR”)) but ultimately concluded in a final written decision that Colas did not show by a preponderance of the evidence that any challenged ’624 patent claim is unpatentable.
While the -1032 IPR was pending, a company unrelated to Colas filed a different IPR petition and the Board subsequently instituted IPR proceedings based on the petition (IPR2017-01242 (“the -1242 IPR”)). Within the one month post-institution timeframe for joinder, Colas filed a second IPR petition against the ’624 patent together with a motion for joinder under 35 U.S.C. § 315(c) requesting joinder with the -1242 IPR. The patent owner challenged Colas’s second IPR petition alleging that 35 U.S.C. § 315(c) barred Colas’s petition due to Colas’s earlier declaratory judgment of invalidity.
The Board held that a party that is barred from IPR proceedings under 35 U.S.C. § 315(a)(1) for previously filing a declaratory judgment of invalidity in district court may not join an existing IPR proceeding under 35 U.S.C. § 315(c). The Board rejected Colas’s argument that section 315(a)(1) only prohibits institution of a new IPR and does not prohibit joinder to an already-instituted IPR.
The Board distinguished its decision in Clio USA, Inc. v. Procter & Gamble Co., Case IPR2013-00438, slip op. at 7 (PTAB Jan. 9, 2014) (Paper 9) on grounds that the Clio decision, which allowed a party to file an IPR petition after filing for declaratory judgment of invalidity in district court, was based in part on the fact that the petitioner in that case had voluntarily dismissed its declaratory judgment action without prejudice before filing its IPR petition. (The Board noted that the Federal Circuit was in the process of addressing the effect of voluntary dismissals without prejudice on the section 315(b) one-year bar in Click-to-Call Tech. LP v. Oracle Corp., 2018 WL 480499, at *1 (Fed. Cir. 2018) and suggested that the Click-to-Call decision could impact whether Clio remains good law).
The Board also contrasted the language of section 315(a)(1) with that of 315(b), pointing out that the language of section 315(a)(1) does not support Colas’s petition, because the language of section 315(a)(1) makes no exception for requests for joinder, while section 315(b), which governs time bars, does.