Ariosa Diagnistics v. Isis Innovation Ltd.


Paper 20, February 12, 2013

IPR2012-00022 (MPT) (Patent 6,258,540)

[IPR is not barred by petitioner’s counterclaims or affirmative defenses of invalidity in a civil action]

FACTS

Patent Owner (Isis Innovation Ltd.) challenged Petitioner’s (Ariosa Diagnostics) standing to file the IPR Petition because the Petitioner was contesting the validity of the patent at issue in a civil suit. Petitioner initiated said civil suit seeking declaratory judgement of non-infringement and raised invalidity as an affirmative defense to the defendant’s counterclaim of infringement.

HOLDING

The Bard rejected Patent Owner’s assertion that the Petitioner lacked standing. The Board looked to 35 U.S.C. § 315(a)(1), which provides that an IPR is barred if the petitioner previously filed a civil suit challenging the validity of the patent at issue. 35 U.S.C. § 315 (a)(3) further states that a counterclaim of invalidity does not constitute a civil action challenging the validity of a patent.  The Board rejected the Patent Owner’s argument that this specific exception of invalidity counterclaims implied that affirmative defense of invalidity was not so excluded from the definition of civil action challenging patent validity. Thus, the Board held that an affirmative defense of invalidity did not constitute filing a civil action challenging patent validity.

The Board further found that allowing the Petitioner to file a declaratory judgement action for noninfringement while challenging the validity of a patent in an IPR did not frustrate Congressional intent of preventing harassment of patentees by multiple proceedings because the petitioner still had to satisfy Article III requirement for bringing the declaratory judgment action.

TAKEAWAY

An IPR is barred by 35 U.S.C. § 315(a)(1) if a petitioner previously brought civil action challenging the validity of the patent at issue. However, IPR is not barred by petitioner’s counterclaims of invalidity or affirmative defense of invalidity in a civil action. IPR is also not barred by petitioner’s civil action seeking declaratory judgment of noninfringement.

 

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