In Ariosa Diagnostics v. Isis Innovation Limited, the PTAB ruled that filing a civil action for declaratory judgment of noninfringement and asserting an affirmative defense of invalidity do not bar a party from later filing an IPR petition. IPR2012-00022, Paper 166 (Sep. 2, 2014).

The Patent Owner contended that the IPR petition was statutorily barred under 35 U.S.C. § 315(a)(1) because it was filed after the Petitioner had filed a civil action for declaratory judgment of non-infringement and then raised invalidity as an affirmative defense in response to a counterclaim of infringement.

The PTAB rejected the Petitioner’s argument in its final written decision, ruling that neither a civil action for declaratory judgment for noninfringement nor an affirmative defense of invalidity qualify as  “fil[ing] a civil action challenging the validity of the claim of the patent” under 35 U.S.C. (a)(1).  The Board cited the Federal Rules of Civil Procedure (Rules 2 and 3), Supreme Court precedent, and the legislative history of the America Invents Act (AIA) in support of this interpretation.

As this decision shows, a party threatened with an infringement suit does not necessarily have to choose between filing a declaratory judgment action and filing for IPR, as long as the declaratory judgment complaint is limited to non-infringement, and invalidity is then raised as an affirmative defense to a counterclaim of infringement.