Colas Sols. Inc. v. Blacklidge Emulsions, Inc.

Trials@uspto.gov 	Paper 9
Tel: 571-272-7822 	Entered: February 27, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
COLAS SOLUTIONS INC.,
Petitioner,
v.
BLACKLIDGE EMULSIONS, INC.,
Patent Owner.
Case IPR2018-00242
Patent 7,918,624 B2
Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.
GOODSON, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review; Denying Joinder
35 U.S.C. § 315
I. 	INTRODUCTION
Petitioner Colas Solutions Inc. (“Colas”) filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1–25 of U.S. Patent No.
7,918,624 B2 (Ex. 1001, “the ’624 patent”). Along with its Petition, Colas
filed a Motion for Joinder requesting that we join Colas as a party to Asphalt
Products Unlimited, Inc. v. Blacklidge Emulsions, Inc., Case IPR2017-

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01242. Paper 3 (“Mot.” or “Motion”). Blacklidge Emulsions, Inc. (“Patent
Owner”) filed an Opposition to the Motion for Joinder (Paper 6, “Opp.”),
and Colas filed a Reply (Paper 7, “Reply”). After receiving our
authorization, Patent Owner filed a Sur-Reply. Paper 8 (“Sur-Reply”).
For the reasons discussed below, we deny both the Motion for Joinder
and the Petition to institute an inter partes review.
II. 	PROCEDURAL BACKGROUND
A brief summary of how this case fits into the context of certain
related proceedings is helpful to understand the issues relevant to this
Decision.
On May 12, 2016, Colas filed a petition for inter partes review of the
’624 patent in Case IPR2016-01032 (“the -1032 IPR”). See Pet. 3. The next
day, on May 13, 2016, Colas filed a Complaint for Declaratory Judgment of
Invalidity and Unenforceability in district court, in which it challenged the
validity of the ’624 patent. See id. at 4; Ex. 2001, 6–7, 17; Colas Solutions,
Inc. v. Blacklidge Emulsions, Inc., Case No. 1:16-cv-00548 (S.D. Ohio)
(“the DJ Action”). Consistent with the automatic stay provision of 35
U.S.C. § 315(a)(2), the DJ Action was stayed and, according to Colas, it
remains stayed. Pet. 4; Mot. 5; see also Sur-Reply 2 (Patent Owner
asserting that the DJ Action “is still pending”). We instituted trial in
the -1032 IPR on November 9, 2016. See -1032 IPR, Paper 9. On
November 2, 2017, we issued a Final Decision in the -1032 IPR in which we
determined that Colas did not show by a preponderance of the evidence that
any claim of the ’624 patent is unpatentable. See -1032 IPR, Paper 40.
Colas has appealed our Final Decision to the U.S. Court of Appeals for the

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Federal Circuit. See -1032 IPR, Paper 41; Colas Solutions, Inc. v. Blacklidge
Emulsions, Inc., Case No. 18-1359 (Fed. Cir.).
While Colas’s -1032 IPR was running its course, the Board was
presented with another challenge to the ’624 patent. On April 4, 2017,
Asphalt Products Unlimited (“APU”) filed a petition for inter partes review
of the ’624 patent in IPR2017-01242 (“the -1242 IPR”). Pet. 4. Colas
represents that it is unrelated to APU, and APU echoed that representation in
its petition. Id.; -1242 IPR, Paper 1, 3. The petition in the -1242 IPR
presented different challenges to the ’624 patent than those presented in
the -1032 IPR. See -1242 IPR, Paper 1, 3, 6–7. On October 24, 2017, we
instituted trial in the -1242 IPR. See -1242 IPR, Paper 23. The -1242 IPR
remains pending.
On November 24, 2017, Colas filed its Petition and Motion for
Joinder in this case. Colas states that its Petition relies on the same alleged
grounds of unpatentability as presented in APU’s petition in the -1242 IPR.
See Mot. 4.
III. LEGAL STANDARDS
Section 315 of Title 35 creates two bars to institution of inter partes
review. The first bar, which is set forth in § 315(a)(1), applies if the
petitioner filed a civil action challenging the patent’s validity before filing
the petition. See 35 U.S.C. § 315(a)(1) (“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.”); see also 37 C.F.R. § 42.101(a). The
second bar, set forth in § 315(b), applies if the petitioner was served with a
complaint for patent infringement more than a year before the petition was

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filed. See 35 U.S.C. § 315(b) (“An inter partes review may not be instituted
if the petition requesting the proceeding is filed more than 1 year after the
date on which the petitioner, real party in interest, or privy of the petitioner
is served with a complaint alleging infringement of the patent.”); see also 37
C.F.R. § 42.101(b).
Section 315 also conveys to the Director discretion to join a party to
an existing proceeding as follows:
(c) Joinder.—If the Director institutes an inter partes review, the
Director, in his or her discretion, may join as a party to that inter
partes review any person who properly files a petition under
section 311 that the Director, after receiving a preliminary
response under section 313 or the expiration of the time for filing
such a response, determines warrants the institution of an inter
partes review under section 314.
The Board’s rules specify that “[a]ny request for joinder must be filed,
as a motion under § 42.22, no later than one month after the institution date
of any inter partes review for which joinder is requested.” 37 C.F.R.
§ 42.122(b). When a request for joinder is filed, the second of the two bars
set forth in § 315, the one-year time bar of § 315(b), does not apply. See
35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence
shall not apply to a request for joinder under subsection (c).”); see also
37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b)1 shall not
apply when the petition is accompanied by a request for joinder.”).
1 The time period referenced in 37 C.F.R. § 42.101(b) parallels the one-year
bar set forth in 35 U.S.C. § 315(b). Compare 37 C.F.R. § 42.101(b) with
35 U.S.C. § 315(b).

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IV. ANALYSIS
The Petition and Motion present the issue of whether a party that is
otherwise barred under 35 U.S.C. § 315(a)(1) may join an existing
proceeding under 35 U.S.C. § 315(c). Colas did not address § 315(a)(1) in
its Petition or its Motion for Joinder. The Petition states that it “is timely in
view of Petitioner’s accompanying Motion for Joinder to [the -1242 IPR],
which was instituted on October 24, 2017.” Pet. 6. Similarly, the Motion
purports to be timely because it was filed within one month of the institution
date of the -1242 IPR and “[f]urther, the one-year time bar does not apply to
the present Motion for Joinder. 35 U.S.C. § 315(b) (last sentence); 37 C.F.R.
§ 42.122(b).” Mot. 2.
Patent Owner argues that the Petition and the Motion for Joinder
should be denied “because the Petition is statutorily barred under 35 U.S.C.
§ 315(a)(1)” based on Colas’s filing of the DJ Action on May 13, 2016.
Opp. 1. According to Patent Owner, “[u]nlike the exception for the one-year
bar [of § 315(b)], no exception permits joinder where the declaratory
judgment bar [of § 315(a)(1)] applies.” Id. at 2.
In Reply, Colas counters that Patent Owner’s argument regarding
§ 315(a)(1) “ignores prior decisions in which the Board declined to exercise
such a rigid application of § 315(a)(1).” Reply 2 (citing Clio USA, Inc. v.
Procter & Gamble Co., Case IPR2013-00438, slip op. at 7 (PTAB Jan. 9,
2014) (Paper 9)). Colas interprets the language of § 315(c) to mean that “the
Director is commanded by statute to consider only Sections 311 and 314
when deciding a request for joinder.” Id. at 2–3 (citing Zhongshan Broad
Ocean Motor Co. v. Nidec Motor Corp., Case IPR2015-00762, slip op. at 5
(PTAB Oct. 5, 2015) (Paper 16)). Colas argues that it met those

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requirements because it paid the necessary fees and because our decision to
institute trial in the -1242 IPR shows a reasonable likelihood that its
challenges will prevail. Id. at 3. Colas’s understanding of § 315(a)(1) is that
it “prohibits, at most, the institution of a new IPR. Joinder to an already-
instituted IPR, on the other hand, falls squarely within § 315(c), under which
the Director has broad discretion to permit joinder.” Id.
Patent Owner responds that in Clio, the Board “did not rely on an
exception to the statutory bar or its discretion under Section 314” but instead
“determined that dismissal without prejudice meant that the declaratory
judgment action was ‘something that de jure never existed.’” Sur-Reply 1
(quoting Clio, slip op. at 7). Here, because “Petitioner’s declaratory
judgment action is still pending,” Clio does not apply and the Petition is
barred. Id. at 2.
We agree with Patent Owner that § 315(a)(1) bars institution of inter
partes review in this case because Colas filed its DJ Action challenging the
’624 patent before it filed its Petition. Colas’s argument to the contrary
based on Clio is unpersuasive. See Reply 2. In Clio, the petitioner filed a
declaratory judgment action for invalidity and voluntarily dismissed that suit
without prejudice a few months later. Clio, slip op. at 2–3. Six months after
the dismissal of the declaratory judgment action, the petitioner filed its
petition for inter partes review. Id. at 2. The Board determined that
§ 315(a)(1) did not bar institution because case law from the Federal Circuit
and other courts treat a civil action dismissed without prejudice as “a

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nullity” that leaves the parties “in the same legal position as if the civil
action had never been filed.” Id. at 7–8 (citations omitted).2
We note that the Board’s application of that case law in the § 315(b)
context is currently being reviewed by the Federal Circuit. See Oracle Corp.
v. Click-to-Call Tech. LP, 2013 WL 11311788, at *6–7 (PTAB Oct. 30,
2013); Click-to-Call Tech. LP v. Oracle Corp., 2018 WL 480499, at *1 (Fed.
Cir. 2018) (granting rehearing to consider § 315(b) issues). Regardless of
the Federal Circuit’s ultimate decision in Click-to-Call, that case law plainly
has no applicability here because Colas’s DJ Action has not been dismissed.
Nor does Clio stand for the broad proposition, as Colas contends, that
the Board has discretion or flexibility as to whether to apply the statutory
prohibition in § 315(a)(1). See Reply 2. Clio represents a determination
that, under governing case law, a civil action that was dismissed without
prejudice is not subject to the statutory bar of § 315(a)(1). That
determination was not an exercise of discretion; it was based on an analysis
of the legal effect of a voluntary dismissal without prejudice.
We also find unpersuasive Colas’s argument that its Motion for
Joinder exempts the Petition from the statutory bar of § 315(a)(1). See
Reply 2–3. The language of the statute does not support Colas’s
interpretation. In contrast to the time bar of § 315(b), which expressly states
2 The Federal Circuit denied a petition for mandamus relief challenging the
Board’s ruling in Clio. See In re Procter & Gamble Co., 749 F.3d 1376,
1377–78 (Fed. Cir. 2014); see also In re Board of Trustees of the University
of Illinois, 561 F. App’x 1021 (Fed. Cir. 2014) (denying a similar mandamus
petition). Procter & Gamble and University of Illinois appear to be the only
cases in which the Federal Circuit has been presented with a challenge to the
Board’s application of the post-AIA version of § 315(a)(1).

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that it “shall not apply to a request for joinder under subsection (c),” the
prohibition set forth in § 315(a)(1) makes no reference to requests for
joinder. This difference in the language of consecutive subsections of the
same statute indicates that in cases requesting joinder under § 315(c),
§ 315(b) is not applicable, but § 315(a)(1) is applicable.
Colas cites the Board’s decision in Zhongshan to support its argument
that “the Director is commanded by statute to consider only Sections 311
and 314 when deciding a request for joinder.” Reply 2–3. Colas’s reliance
on Zhongshan is misplaced. Zhongshan addressed joinder when the petition
would be “otherwise time barred under 35 U.S.C. § 315(b).” Zhongshan,
slip op. at 2. There was no § 315(a)(1) bar at issue in Zhongshan. This
distinction is significant because, as discussed above, § 315(b) does not
apply in cases requesting joinder but § 315(a)(1) does. Further, the central
issue in Zhongshan was whether § 315(c) permits same-party joinder—that
is, joinder of a party that is also a party in the proceeding sought to be
joined. Id. at 5. In the majority opinion, the panel “conclude[d] that
§ 315(c) permits the joinder of any person who properly files a petition
under § 311, including a petitioner who is already a party to the earlier
instituted inter partes review.” Id. No same-party joinder issue is presented
here because Colas is not a party in the -1242 IPR it seeks to join.
Moreover, under § 315(c), “joinder is only permissible if the Director
determines that a petition ‘warrants the institution of an inter partes
review.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1019 (Fed. Cir. 2017) (Dyk, J., concurring) (quoting 35 U.S.C.
§ 315(c)). Here, Colas’s Petition does not warrant institution because it is
barred by § 315(a)(1), which sets forth a limit on the Director’s authority to

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institute inter partes review. See Wi-Fi One, LLC v. Broadcom Corp., 878
F.3d 1364, 1374 (Fed. Cir. 2018) (en banc). (“The timely filing of a petition
under § 315(b) is a condition precedent to the Director’s authority to act. It
sets limits on the Director’s statutory authority to institute, balancing various
public interests. And like § 315 as a whole, it governs the relation of IPRs to
other proceedings. . . .”); see also id. at 1377 (O’Malley, J., concurring)
(concluding that introductory phrase of § 315(b), “[a]n [IPR] may not be
instituted if . . .”, which is also present in § 315(a)(1), limits the PTO’s
authority to institute IPRs).
Colas argues that the only institution requirements applicable in a case
requesting joinder are those set forth in §§ 311 and 314, but if that were the
case, there would be no need for the sentence in § 315(b) stating that the
time bar does not apply to a request for joinder. The canon against
superfluity counsels against Colas’s interpretation. See Nielson v. Shinseki,
607 F.3d 802, 806–07 (Fed. Cir. 2010) (“[O]ne of the most basic interpretive
canons [is] that [a] statute should be construed so that effect is given to all its
provisions, so that no part will be inoperative or superfluous, void, or
insignificant . . . .”) (quoting Corley v. United States, 556 U.S. 303, 314
(2009)).
For the foregoing reasons, we conclude that Colas’s Petition does not
warrant institution because it is barred under § 315(a)(1). Because, under
§ 315(c), the Director may only join a party that files a petition that
“warrants institution,” we also deny Colas’s Motion for Joinder.

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V. 	ORDER
For the reasons given, it is:
ORDERED that the Petition to institute inter partes review is denied;
and
FURTHER ORDERED that the Motion for Joinder is denied.
PETITIONER:
David Mancino
Kevin Kirsch
John Mueller
dmancino@bakerlaw.com
kkirsch@bakerlaw.com
jmueller@bakerlaw.com
PATENT OWNER:
John F. Triggs
Ryan D. Levy
Seth R. Ogden
William E. Sekyi
Patterson Intellectual Property Law, P.C.
jft@iplawgroup.com
rdl@iplawgroup.com
sro@iplawgroup.com
wes@iplawgroup.com