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Prior Civil Action Bars IPR - A precedential decision

On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc.  In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars institution of IPR if the petitioner filed an earlier civil action, even if such action was voluntarily dismissed by the petitioner without prejudice.    

Under § 315(a)(1), an IPR “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.”  Cisco filed an IPR petition challenging seven claims of Chrimar’s U.S. Patent No. 8,902,760.  Prior to filing the petition, Cisco filed a civil action challenging the validity of the patent at issue in the district court.  Cisco then voluntarily dismissed the action without prejudice. 

Cisco argued that 35 U.S.C. § 315(a)(1) does not bar institution of IPR because the previous civil action was voluntarily dismissed by the petitioner without prejudice.  In their argument, Cisco relied on the decision in Emerson, where the PTAB held that 35 U.S.C. §315(a)(1) does not apply when a petitioner dismissed its previous civil action without prejudice because “[f]ederal courts treat civil action that is dismissed without prejudice as ‘something that de jure never existed.”  Emerson, Case IPR2015-01579, slip op. at 2-3 (Paper 7).

The PTAB rejected Cisco’s arguments on several grounds. First, the PTAB relied on a more recent Federal Circuit decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc), where the Federal Circuit held that the § 315(b) time bar applies even when a previous civil action was dismissed voluntarily without prejudice.  Second, the PTAB argued that § 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice.  The PTAB further argued that Congress demonstrated that it knew how to provide an exception to the statutory bar by including, for example, an exception to the § 315(b) time bar for a joinder request.  Thus, if Congress meant to have an exception, it would have been included in § 315(a)(1).  Finally, the PTAB relied on the ordinary meaning of the statutory language, holding that the term “filed civil action,” as recited in § 315(a)(1), is implicated once the petitioner commences the litigation “irrespective of subsequent events.”

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Authors

Kenneth E. Jenkins, PhD, is an intellectual property attorney at Mintz. He's highly regarded for patent prosecution and counseling for life sciences, chemical, and energy companies. Ken helps companies and research institutions secure patents on strategic innovations and manage their patent portfolios.
Gali is a Mintz intellectual property attorney with a PhD in organic chemistry. She has prepared and prosecuted patent applications throughout the world in areas such as biotechnology, chemistry, and pharmaceuticals. She advises on patentability and validity assessments, freedom-to-operate analysis, and patent strategy.