Use Caution When Mapping Multi-Forum Patentability Attack

by | Dec 30, 2021 | PTAB Trial Basics

By Sachin Patel and Matt Johnson –

A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with declaratory judgment actions. PGR2021-00095, Paper 6 (Dec. 9, 2021).

On June 9, 2021, Sattler Tech Corp. filed a petition requesting post-grant review of the sole claim of U.S. Design Patent D910,645 S.  The Patent Owner, Yaqi Lyu, did not enter an appearance of counsel, file a Preliminary Response, or otherwise respond to the filing of the petition.

However, approximately two months earlier on April 15, 2021, Sattler Tech Corp. filed a declaratory judgment action for non-infringement and invalidity of the ’645 patent against Yaqi Lyu in the Eastern District of Virginia, Civil Action No. 1:21-cv-00471-LO-IDD.

In relevant part, post-grant reviews “may not be instituted under this chapter 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.”  35 U.S.C. § 325(a)(1).  Accordingly, the PTAB “denied the Petition in all respects” because “the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim.” Paper 6 at 3.

Sattler filing a petition for a post-grant review was contrary to the post-grant review statute on its face.  A petitioner is not barred from filing an inter partes review if the petitioner filed a declaratory judgment action seeking only a judgment of noninfringement.  See, e.g., Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 20 at 8 (Feb. 12, 2013). Here, however, Sattler also filed for a declaratory judgment of invalidity of the ’645 patent thus triggering the statutory bar.

Takeaway: As always, Petitioners should carefully scrutinize and research the procedural and substantive requirements for filing a petition for an AIA trial, including relevant case law interpreting the statutory text.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.