Resources

PTAB Tracker

January 18, 2021

Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511, Paper 11

In this precedential case, the Board applied Click-to-Call to the petitioner’s action and denied institution because the petitioner had filed a civil action challenging the validity of the challenged patent prior to filing its petition for IPR.

An inter partes review “may not be instituted if, before the date on which the petition for such 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. § 315(a)(1). In this proceeding, Cisco challenged Chrimar’s ’760 Patent on multiple grounds. Prior to filing the IPR petition, however, Cisco had filed a declaratory action in the Eastern District of Michigan against several of Chrimar’s patents, including the ’760 Patent. Cisco then voluntarily dismissed that action without prejudice prior to filing its petition for IPR, and it argued that because it had dismissed the prior civil action before any substantive work got underway, then § 315(a)(1) did not apply.

 

The Board disagreed. It was not persuaded by Cisco’s multiple arguments, based on Congress’s intent and the legislative history, that the purpose of § 315(a)(1) is to avoid situations where a petitioner gets “two bites at the apple” in parallel: one in district court and one before the PTAB. The Board read the statute literally and, based on that literal reading, found that once Cisco filed the declaratory judgment action, it was thereafter barred from challenging the claims via IPR.

Takeaway

If you file a declaratory judgment action attacking the validity of a patent, you are barring yourself from challenging that patent via IPR—no matter what happens after you filed the suit.

Fill out the form below to receive our monthly newsletter and updates on your selected areas of interest. You can unsubscribe at any time by clicking the unsubscribe link at the bottom of the email.

  • Fish & Richardson P.C. is committed to protecting and respecting your privacy, and we’ll only use your personal information to administer your account and to provide the services you requested from us. From time to time, we would like to contact you about our services, as well as other content that may be of interest to you. If you consent to us contacting you for this purpose, please tick below.
  • In order to provide you the content requested, we need to store and process your personal data. If you consent to us storing your personal data for this purpose, please tick the checkbox below.
  • You can unsubscribe from these communications at any time. This can be done by clicking the unsubscribe link at the bottom of marketing emails you receive from us, or by emailing info@fr.com stating that you would like to be unsubscribed.
  • This field is for validation purposes and should be left unchanged.