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

Informative decision only: persuasive authority, not binding precedent. When a petitioner filed a civil action challenging the validity of a patent claim before filing its petition, and that action has not been dismissed, 35 U.S.C. § 315(a)(1) bars institution even if the petition is accompanied by a motion for joinder under § 315(c), because only the § 315(b) time bar "shall not apply to a request for joinder." Because a barred petition does not "warrant institution," the Board must also deny the joinder motion. No prior precedent directly addressed this issue; the decision distinguishes Clio and Zhongshan rather than overruling anything, and it clarifies that Clio reflected a legal-effect analysis of a dismissal without prejudice, not Board discretion over § 315(a)(1). For a petitioner who filed a declaratory judgment action on invalidity before its petition, a joinder motion is no workaround: the petition is barred and the joinder motion fails with it. For the patent owner, a pending, non-dismissed prior civil action by the petitioner is a complete answer to a joinder-based petition, and the patent owner can raise it in opposing joinder. The Board relied on Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 (Fed. Cir. 2018) (en banc), for the point that § 315 limits the Director's authority to institute, and on Nielson v. Shinseki, 607 F.3d 802, 806–07 (Fed. Cir. 2010), for the canon against superfluity. LEGAL TEST OR STANDARD: Section 315(a)(1) provides that 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." Under § 315(c), joinder is available only for a person whose petition the Director determines "warrants the institution of an inter partes review under section 314." The § 315(b) time-bar exception for joinder does not extend to § 315(a)(1). TRIGGERING FACTS: Colas filed an IPR petition on May 12, 2016 and a declaratory judgment action on invalidity the next day. That action was stayed under § 315(a)(2) and had not been dismissed. On November 24, 2017 Colas filed a new petition with a motion to join an instituted IPR brought by an unrelated party, relying on the same grounds. Colas did not address § 315(a)(1) in its petition or motion. KEY QUOTE: "This difference in the language of consecutive subsections of the same statute indicates that in cases requesting joinder under § 315(c), § 315(b) is not applicable, but § 315(a)(1) is applicable." (Paper 9, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board distinguished Clio USA, Inc. v. Procter & Gamble Co., Case IPR2013-00438, slip op. at 7 (PTAB Jan. 9, 2014) (Paper 9), where the declaratory judgment action had been voluntarily dismissed without prejudice. It also distinguished Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., Case IPR2015-00762, slip op. at 5 (PTAB Oct. 5, 2015) (Paper 16), which concerned the § 315(b) bar and same-party joinder. PRACTICE TIP: Before filing a petition with a joinder motion, check whether the petitioner or any real party in interest filed a civil action challenging validity of the patent, and do not rely on the joinder exception to avoid § 315(a)(1). If the action is still pending, expect denial. Patent owners should raise § 315(a)(1) in opposing the joinder motion.