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ARTICLE · 30 MAY 2020

Prior Civil Action Bars IPR - A Precedential Decision

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc.

United StatesIntellectual Property
Kenneth E. Jenkins
Kenneth E. Jenkins
Gali Steinberg-Tatman
Gali Steinberg-Tatman
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On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc.  In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars institution of IPR if the petitioner filed an earlier civil action, even if such action was voluntarily dismissed by the petitioner without prejudice.    

Under § 315(a)(1), an IPR "may not be instituted 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."  Cisco filed an IPR petition challenging seven claims of Chrimar's U.S. Patent No. 8,902,760.  Prior to filing the petition, Cisco filed a civil action challenging the validity of the patent at issue in the district court.  Cisco then voluntarily dismissed the action without prejudice. 

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