Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242 (Feb. 27, 2018) (Paper 9)

Takeaway (1) (Informative): A party who files a declaratory judgment action challenging the validity of a patent is generally barred under 35 U.S.C. § 315(a)(1) from subsequently challenging the patent in inter partes review through a standalone IPR petition or through a petition filed together with a motion to join existing IPR proceedings to which it is not a party under 35 U.S.C. § 315(c).

Takeaway (2): A party who files a declaratory judgment action challenging the validity of a patent might not be barred from subsequently challenging the validity of the patent in IPR proceedings, despite the bar set forth in 35 U.S.C. § 315(a)(1), where the party dismisses the declaratory judgment action without prejudice before petitioning for IPR.