By Geoffrey Gavin and Matt Johnson

The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent.  See Cisco Systems, Inc. v. Chrimar Systems, Inc, IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019).  In this decision, the PTAB addressed the § 315(a)(1) bar in view of the Federal Circuit’s en banc decision concerning the § 315(b) time bar in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).  Id. at 5-8.

Cisco filed an IPR petition challenging seven claims of U.S. Patent No. 8,902,760 (the “‘760 patent”).  Id. at 2, 5.  Prior to filing its petition, Cisco filed a civil action challenging the validity of a claim of the ‘760 patent, but Cisco later dismissed its lawsuit without prejudice.  Id. at 5.  Cisco argued, based in part on a 2016 PTAB decision, that § 315(a)(1) did not bar institution of its IPR petition because Cisco had dismissed its lawsuit without prejudice.  Id.  The PTAB disagreed based on the Federal Circuit’s subsequent opinion in Click-to-Call.

Under § 315(a)(1), 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.”  The PTAB followed guidance from the Federal Circuit’s Click-to-Call decision in holding that § 315(a)(1) barred institution of Cisco’s IPR petition even though Cisco dismissed its earlier lawsuit without prejudice.  Id. at 6-8.  Among other things, the PTAB noted that: (a) there is no exception in the statute for civil actions dismissed without prejudice, (b) the ordinary meaning of the phrase “file a civil action” only requires that litigation be commenced, and (c) legislative history did not support Cisco’s position.  Id. at 6-7.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.