November 23, 2013

Dismissal of District Court Case, Without Prejudice, Removes Time Bar of 35 USC § 315(b)

Challenging claims of a patent which it had already previously challenged, Ariosa Diagnostics was able to get six challenged claims of an Isis Innovation patent into a trial for inter partes review in a case styled as Ariosa Diagnostics v. Isis Innovation, Ltd., (IPR2013-00250), involving U.S. Pat. No. 6,258,540.

The Board began by noting that this IPR petition was related to IPR2012-00022, which was also a challenge of the ‘540 patent. The Board also noted that Patent Owner renews its argument that inter partes review is improper because Ariosa had filed a civil action seeking declaratory judgment of noninfringement. Citing reasons presented in the previous challenge of the ‘540 patent, the Board rejected the argument again.

Interesting in the Board’s analysis, though, was a discussion of Patent Owner’s argument that the petition was time barred because the petition was filed more than one year after the date on which Petitioner was served with a complaint alleging patent infringement. Because that complaint was ultimately dismissed without prejudice, however, the one-year time bar of 35 USC § 315(b) did not apply (citing Macauto U.S.C. v. BOS GMBH & KG, IPR 2012-00004).

The remainder of the decision is a tale of Petitioner fixing errors from the previous proceeding. For example, finding that Patent Challenger corrected the deficiencies in its argument for disclosure of a limitation involving amplification of certain genetic primers, the Board granted the Petition as a ground previously rejected. Next, the Board considered another anticipation ground relying upon a reference which relates to fetal DNA and its detection in maternal plasma and serum. Citing the fact that Patent Challenger already established anticipation of the main claim 1 by this reference, the Board granted the Petition as to the dependent claims in the instant Petition.

Reviving and improving arguments from an earlier challenge of the ‘540 patent, Ariosa was able to get six challenged claims of the ‘540 patent into a trial for inter partes review.