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ARTICLE · 03 MARCH 2014

Declaratory Judgment Dismissed Without Prejudice Does Not Bar Later IPR

McDermott Will & Emery
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The Patent Trial and Appeal Board made it clear that a prior declaratory judgment action filed by the petitioner, if voluntarily dismissed without prejudice, does not bar a subsequent inter partes review (IPR) proceeding.

United StatesIntellectual Property
G. Matthew McCloskey
G. Matthew McCloskey
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Edited by Paul Devinsky and Rita Weeks

In an institution decision by the Patent Trial and Appeal Board (Board), the Board made it clear that a prior declaratory judgment action filed by the petitioner, if voluntarily dismissed without prejudice, does not bar a subsequent inter partes review (IPR) proceeding.  However, even though IPR was instituted, the Board granted review of a just a single claim (out of multiple challenged claims) and only on one ground (out of multiple grounds proffered by the petitioner).  Clio USA, Inc. v. The Procter and Gamble Company, Case IPR2013-00438 (PTAB, Jan. 9, 2014) (Kamholz, APJ.).

P&G filed a civil action asserting that Clio infringed its patent, which relates to an oral care delivery system in which a flexible strip is coated with an oral care substance such as a gel containing hydrogen peroxide or sodium fluoride for application to teeth or gums. Clio sought declaratory judgment that the patent was invalid.  Prior to filing a

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