A petition for inter partes review (IPR) will not be granted “if, before the date on which the petition for such a review is filed, the petitioner or the real party in interest filed a civil action challenging the validity of a claim of the patent.”  35 U.S.C. 315(a)(1).  Recently, in Clio USA v. The Proctor and Gamble Company (IPR2013-00438), the PTAB held that a declaratory judgment action filed by Clio (petitioner) against the challenged patent prior to the request for the inter partes review, which had been subsequently dismissed without prejudice, did not bar the institution of the inter partes review.

The patent owner argued that the language of Section 315(a)(1) is clear in barring the institution of an inter partes review if the petitioner had previously filed a civil action challenging the validity of the patent.  The PTAB was not, however, persuaded, and countered that the patent owner had not taken into account relevant federal case law that treated civil action that is dismissed without prejudice as “something that de jure never existed.”   In other words, “when an action is dismissed without prejudice, the parties are free to litigate the matter in a subsequent action, as though the dismissed action had never existed.”

The PTAB distinguished its decision in Anova Food , LLC v. Sandau, in which the PTAB has denied a petition for IPR because the petitioner had filed three declaratory judgment actions before filing the IPR, though all three actions has been later dismissed.  The PTAB explained that in Anova the last of the actions had been dismissed with prejudice, and hence “was not treated as if it had never existed.”  In contrast, in this case, Clio’s action was dismissed without prejudice.

As the PTAB continues to interpret various provisions of the AIA as they relate to the institution of an inter partes review, including the limits set by Section 315(a) on a petitioner, a body of case law is emerging that can guide both petitioners and patent owners.  This case law is, however, not yet mature.  Consequently, both the petitioners and the patent owners still face uncertainty in trying to discern how the PTAB may interpret a particular statutory provision.