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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