In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued a decision rejecting the Patent Owner Isis Innovation Limited’s (“Patent Owner”) motion for leave to challenge petitioner Arisoa Diagnostics’ (“Petitioner”) standing to file the petition for inter partes review. According to the Patent Owner, the Petitioner lacks standing because it raised the affirmative defense of invalidity as an affirmative defense to the Patent Owner’s counterclaim for infringement of the asserted patent in a Declaratory Judgment Action filed by the Petitioner seeking a declaration of non-infringement in the Northern District of California, Case No. 3:11-cv-06391.
The Patent Owner argued that allowing the Petitioner to file an inter partes review under such circumstances would violate Section 315(a)’s prohibition against filing an IPR when a petitioner has filed a civil action challenging the validity of a claim of the asserted patent before filing the petition for inter partes review. While Section 315(a)(3) provides an exception to this rule in the circumstance when the petitioner’s challenge to the patent’s validity is in the form of a counterclaim in a suit initiated by the patent owner, the Patent Owner argues that this exception does not apply to the circumstances present here.