PTAB Denial of IPR Challenge is Precedential

Written September 4, 2019

The US Patent and Trademark Office on August 29, 2019, designated as precedential its decision to deny Cisco Systems Inc.'s bid to invalidate claims in an equipment-tracking patent though the petitioner voluntarily dismissed an earlier civil action. Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11).

The Patent Trial and Appeal Board denied Cisco’s petition for an inter partes review of Chrimar Systems Inc.'s U.S. Patent No. 8,902,760, stating that an IPR “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.”

Cisco had argued that § 315(a)(1) doesn’t prohibit inter partes reviews because the court voluntarily dismissed the prior civil action without prejudice. But the PTAB said § 315(a)(1) “does not include an exception for a civil action that was dismissed without prejudice.”