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Colas Sols. Inc. v. Blacklidge Emulsions, Inc.

Paper No. 9, February 27, 2018

IPR2018-00242 (Patent 7,918,624)


Colas filed a Petition to institute an inter partes review of claims 1-25 of U.S. Patent No. 7,918,624 (“the ‘624 patent”). See Paper 9, p.1. Along with its Petition, Colas filed a Motion for Joinder, requesting the PTAB join Colas as a party to Asphalt Products Unlimited, Inc. v. Blacklidge Emulsions, Inc., Case IPR2017-01242. Id. at p.1-2. Blacklidge filed an Opposition to the Motion for Joinder, Colas filed a Reply, and Blacklidge filed a Sur-Reply. Id. at p.2.

The PTAB noted that, for context, some background was needed as to how this case fit into related proceedings. Id. On May 12, 2016, Colas filed a petition for inter partes review of the ‘624 patent in Case IPR2016-01032; on May 13, 2016, Colas filed a Complaint for Declaratory Judgement of Invalidity and Unenforceability in district court, challenging the validity of the ‘624 patent. Id. “Consistent with the automatic stay provision of 35 U.S.C. § 315(a)(2), the DJ Action was stayed and, according to Colas, it remains stayed.” Id. The PTAB instituted trial on IPR2016-01032 and “determined that Colas did not show by a preponderance of the evidence that any claim of the ‘624 patent is unpatentable.” Id. Colas appealed that Final Decision to the CAFC. Id. at p.2-3. While Colas’s first IPR was ongoing, on April 4, 2017, Asphalt Products Unlimited filed a petition for inter partes review of the ‘624 patent in IPR2017-01242, presenting different challenges to the ‘624 patent than those Colas had articulated in its IPR. Id. at p.3. The trial on IPR2017-01242 was instituted on October 24, 2017 and remained pending, as of this case. Id. “On November 24, 2017, Colas filed its Petition and Motion for Joinder in this case,” alleging the same grounds of unpatentability as Asphalt presented in its petition. Id.

The PTAB explained that § 315 of Title 35 creates two bars to the institution of an inter partes review. Id. Under § 315(a)(1), “[a]n inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Id. Under § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Id. at p.4. Section 315(c) also grants the Director of the PTO discretion to join a party to an existing proceeding, and the Board’s rules state that “[a]ny request for joinder must be filed as a motion under § 42.22 no later than one month after the institution date of any inter partes review for which joinder is requested.” Id. When a request for joinder is filed, the time bar of § 315(b) does not apply. Id. “The Petition and Motion present the issue of whether a party that is otherwise barred under 35 U.S.C. § 315(a)(1) may join an existing proceeding under 35 U.S.C. § 315(c).” Id. at p.5.


“Colas’s Petition does not warrant institution because it is barred under § 315(a)(1).” See Paper 9, p.9. “[U]nder § 315(c), the Director may only join a party that files a petition that ‘warrants institution,’” so Colas’s Motion for Joinder is also denied. Id.


The PTAB noted that Colas did not address § 315(a)(1) in either its Petition or its Motion for Joinder. See Paper 9, p.5. The Motion “purports to be timely because it was filed within one month of the institution date of” IPR2017-01242, and the one-year time bar does not apply to the present Motion. Id. Blacklidge argued that the Petition and Motion should be denied because the Petition is statutorily barred under 35 U.S.C. § 315(a)(1) because Colas filed the DJ Action on May 13, 2016. Id. “According to [Blacklidge], ‘unlike the exception for the one-year bar of § 315(b), no exception permits joinder where the declaratory judgment bar of § 315(a)(1) applies.’” Id. Colas counted by arguing that the PTAB has, in the past, declined to read § 315(a)(1) so rigidly, interpreting the language of the statute at § 315(c) to mean that “the Director is commanded by statute to consider only Sections 311 and 314 when deciding a request for joinder.” Id. Colas argued it met those statutory burdens by paying its necessary fees and that the PTO’s decision to institute trial on IPR2017-01242 “shows a reasonable likelihood challenges will prevail.” Id. at p.5-6. “Colas’ss understanding of § 315(a)(1) is that it ‘prohibits, at most, the institution of a new IPR. Joinder to an already-instituted IPR, on the other hand, falls squarely within § 315(c), under which the Director has broad discretion to permit joinder.’” Id. at p.6. Blacklidge responded that in Clio, the Board was not looking to exceptions to statutory bars or its discretion, but rather “determined that dismissal without prejudice meant that the declaratory judgment action was ‘something that de jure never existed.’” Id. Since Colas’s DJ Action was still pending, Clio should not apply. Id.

The PTAB agreed with Blacklidge that “§ 315(a)(1) bars institution of inter partes review in this case because Colas filed its DJ Action challenging the ‘624 patent before it filed its Petition.” Id. The PTAB noted that this case was different from Clio, in which the petitioner filed a DJ suit and dismissed it without prejudice before filing a petition for inter partes review. Id. Clio also does not stand for the proposition that the PTAB has flexibility or discretion as to whether to apply § 315(a)(1)’s statutory prohibition. Id. at p.7. “Clio represents a determination that, under governing case law, a civil action that was dismissed without prejudice is not subject to the statutory bar of § 315(a)(1).” Id.

The PTAB was also not persuaded by Colas’s argument that its Motion for Joinder exempted the Petition from the statutory bar of § 315(a)(1), noting that the language of the statute does not support that interpretation, as it makes no reference to Motions for Joinder. Id. at p.7-8. The PTAB concluded that “Colas’s Petition does not warrant institution because it is barred by § 315(a)(1), which sets forth a limit on the Director’s authority to institute inter partes review.” Id. at p.8-9.


A copy of the PTAB order can be found here.