Managing The Interplay Between DJ Actions And PGR Petitions

As post-grant proceedings before the PTAB continue to gain popularity for their ability to invalidate supposedly "bad" patents, filings of declaratory judgment actions by alleged patent infringers appear to be going down. Even so, the traditional use of declaratory judgement ("DJ") actions to control venue may still be an important legal strategy to consider for any alleged patent infringer. Barring specific financial or business considerations, parties may still pursue both legal strategies as long as they are careful to abide by the PTAB rules covering who may file for review.

Early on, petitioners for post-grant review that had already filed DJ actions in district court asserting invalidity arguments found their petitions denied in view of their previously filed DJ actions based on 37 CFR 42.101(a) (for IPRs) or 37 CFR 42.302(c) (for CBMPRs), which expressly state that a petitioner may not file a petition requesting review of a patent when it has previously filed