Cisco Sys., Inc. v. Chrimar Sys., Inc. (PTAB 2019) (precedential)
This case was decided back in January 2019, but the USPTO has now designated the decision as precedential. The decision provides another time-bar / preclusion scenario.
Prior to filing its IPR petition, Cisco had filed a declaratory judgment (DJ) action in district court seeking to invalidate Chrimar’s U.S. Patent 8,902,760. However, rather than pursuing the case to judgment or settlement, Cisco dismissed its lawsuit without prejudice. Under typical principles of preclusion, this type of dismissal would not prohibit or estopp Cisco from challenging the patent again at a later date. However, the question here was how those rules mesh with the Patent Act.
The Federal Circuit has decided several time-bar cases that arise under Section 315(b). That provision creates a one-year deadline for a challenger to file its IPR petition after being sued (and served) for patent infringement. 315(b) does not apply here because Cisco was not sued for infringement but rather filed its own declaratory judgment lawsuit.
Section 315(a) provides:
An inter partes review may not be instituted 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 petitioner Cisco easily checks the boxes of the statute — it filed a civil action challenging validity before it filed the IPR petition. However, Cisco argued that that the voluntary dismissal should reset the case. The voluntary-dismissal argument had already been foreclosed in the 315(b) situation.
Cisco argued that 315(a) (unlike 315(b)) parallels estoppel provisions and thus should follow the same rules. The PTAB panel rejected that argument — following the Federal Circuit’s lead here to strictly apply the statute as written and without judicial exception. The statute “does not include an exception.” Thus, the holding: Cisco’s IPR Petition is barred by its prior DJ action even though voluntarily dismissed.
= = = = =
73. A BaseT Ethernet system comprising:
Ethernet cabling having at least first and second individual pairs of conductors used to carry BaseT Ethernet communication signals, the at least first and second individual pairs of conductors physically connect between a piece of BaseT Ethernet terminal equipment and a piece of central network equipment, the piece of central network equipment is a BaseT Ethernet hub;
the piece of central network equipment having at least one DC supply,
the piece of BaseT Ethernet terminal equipment having at least one path to draw different magnitudes of current flow via the at least one DC supply through a loop formed over at least one of the conductors of the first pair of conductors and at least one of the conductors of the second pair of conductors,
the piece of central network equipment to detect at least two different magnitudes of current flow through the loop.
= = = =
= = = = =
It looks like this was an all male case: James Marina at Kirkland (along with Robert Kang and Eugene Goryunov) represented the petitioner Cisco while Frank Angileri at Brooks Kushman (along with Tom Lewry, Marc Lorelli, and Chris Smith) represented the patent owner. The opinion was penned by Judge Robert Weinshenk and joined by panel members Karl Easthom and Gregg Anderson.
= = = = =