In its Decision, the Board declined to institute a CBM because the petition was statutorily barred under 35 U.S.C. § 325(a)(1), which states that a “post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” The Board agreed that 35 U.S.C. § 325(a)(1) applies to CBM proceedings, because CBM proceedings are subject to all the standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321-29) except for those expressly carved out (i.e., 35 U.S.C. §§ 321(c) and 325 (b), (e)(2), and (f)).
Petitioner filed a Declaratory Judgment action seeking a declaration that all of the claims of the ’880 Patent are invalid fifteen months prior to filing the Petition. Thus, the Board is statutorily barred from instituting this CBM review.
Branch Banking and Trust Co. v. Maxim Integrated Products, Inc., CBM2013-00059
Paper 12: Decision Denying Institution
Dated: March 20, 2014
Patent 5,949,880
Before: Sally C. Medley, Mitchell G. Weatherly, and Miriam L. Quinn
Written by: Weatherly