In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid. After unsuccessfully moving to stay an already-pending P&G lawsuit for patent infringement against a Clio customer, Clio dismissed its complaint without prejudice under Federal Rule of Civil Procedure 41(a)(1)(B). Id. at 3.
Later, Clio petitioned the Patent Office’s Trial and Appeal Board (“PTAB”) for inter partes review of the same P&G patents that were the subject of its declaratory judgment complaint. P&G argued the petitions should be dismissed under 35 U.S.C. § 315(a) as barred by Clio’s earlier-filed declaratory judgment lawsuit. The PTAB granted them nevertheless. Id.
Section 315(a) states, “[a]n inter partes review may not be instituted if, before the date upon 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.” According to the PTAB, however, “because Clio’s declaratory-judgment action was dismissed without prejudice, ‘[i]n the context of § 315(a)(1), the action never existed.’” Id. at 3-4.
The Federal Circuit denied P&G’s mandamus request. Per the court, there isn’t a clear and indisputable right to immediate review of a decision to institute inter partes review. Id. at 4. The Federal Circuit reserved the question of whether the PTAB's decision to initiate inter partes review might be challenged on appeal if the PTAB issues a final decision.
The take away?
The likelihood of judicial review of a PTAB decision not to initiate inter partes review is remote in the extreme. The only avenue that remains open -- assuming the Supreme Court doesn't revisit and reverse the decisions in St. Jude and Dominion -- is through challenging the PTAB's decision through the Administrative Procedure Act ("APA"). But an APA attack has already been rejected by a district court, and the Federal Circuit will almost certainly affirm.
The same holds for PTAB decisions initiating inter partes review. The P&G decision teaches that relief by way of mandamus is unavailable. And, while the Federal Circuit reserved on answering whether the issue may be addressed through an appeal, all analysis so far suggests the answer is no.