Raising Affirmative Defense Of Invalidity In An Answer Does Not Deprive A Party Of Standing To Seek Inter Partes Review

In IPR2012-00022, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Tierney, Green and Robertson) issued an order in Ariosa Diagnostics ("Petitioner") v. Isis Innovation Limited ("Patent Owner") regarding Ariosa's standing. Section 315 specifies that "[a]n inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent." Notably, however, Section 315 exempts the filing of a counterclaim challenging the validity of a claim of a patent from the definition of a "civil action." 35 U.S.C. § 315 (a)(3). The issue presented here is whether raising the defense of invalidity in an affirmative defense falls with the definition of a "civil action" under Section 315.

Ariosa filed a civil action against the exclusive licensee of U.S. Patent No. 6,258,540 seeking a declaration that it did...