Recently in Inter Partes Review Category

District Court Denies Motion for Preliminary Injunction Where Inter Partes Review ("IPR") Pending on Claims from Different Patent But Similar to Patent-In-Suit

October 14, 2016


In earlier patent infringement litigation, the Plaintiff sued Ancestry.com DNA, LLC ("Ancestry") in the District of Delaware ("Delaware litigation") alleging infringement of U.S. Patent Number 8,221,381 (the "'381 patent"). Ancestry subsequently filed an IPR seeking review of several claims of the '381 patent, and the PTAB issued an institution decision finding that Ancestry "ha[d] demonstrated a reasonable likelihood that it would prevail in showing that claims 1, 2, 4, 5, 7, 8, 11, 12, 15-17, 20, 41, 44, and 49 of the '381 patent are unpatentable."

Continue reading "District Court Denies Motion for Preliminary Injunction Where Inter Partes Review ("IPR") Pending on Claims from Different Patent But Similar to Patent-In-Suit" »

District Court Denies Request to Preclude Defendant from Sharing Confidential Information of Plaintiff with PTAB as part of Inter Partes Review

September 15, 2016

In this patent infringement action between Ultratec and CaptionCall, CaptionCall filed a motion for relief from the stipulated protective order in order to use confidential commercial information from Ultratec (the plaintiffs) in an inter partes review of Ultratec's patent. CaptionCall wanted to use the information to rebut Ultratec's contention that secondary considerations support the validity of the patent.

Ultratec opposed the motion and contended that confidential information presented to the PTAB would necessarily be disclosed to the public if the PTAB bases its decision on that information.

Continue reading "District Court Denies Request to Preclude Defendant from Sharing Confidential Information of Plaintiff with PTAB as part of Inter Partes Review" »

District Court Stays Litigation Pending Inter Partes Review ("IPR") over Defendant's Objection That Summary Judgment Motion Should be Determined First

September 13, 2016

After the Patent Trial and Appellate Board ("PTAB") instituted inter partes review ("IPR") of all asserted claims in three of the Patents-in-Suit and with the PTAB's decision on FMC's petition for IPR of the fourth challenged patent pending, the district court received briefs on whether the case should be stayed pending the IPRs.

The district court analyzed the issued by nothing that it had authority to stay the case pending IPRs based on a three factor test. See, e.g., Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008) (citing 35 U.S.C. § 318). "District courts typically analyze stays under a three-factor test: (i) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (ii) whether a stay will simplify the issues in question and trial of the case; and (iii) whether discovery is complete and whether a trial date has been set." Murata Mach. USA v. Daifuku Co., Ltd., __ F.3d __, 2016 WL 4073320, *3 (Fed. Cir. Aug. 1, 2016).

Continue reading "District Court Stays Litigation Pending Inter Partes Review ("IPR") over Defendant's Objection That Summary Judgment Motion Should be Determined First" »

Murata v. Daifuku: District Court Denies Preliminary Injunction Motion for a Second Time After Remand from Federal Circuit Based on Pending IPR and Previously Issued Stay

August 25, 2016

In September 2013, Murata filed a patent infringement action alleging that Daifuku infringed three of its patents (the "Original Patents"). A year later, in September 2014, Murata moved to amend its Complaint to add two patents that Murata alleged were also infringed by Daifuku (the "Additional Patents"). Daifuku filed an inter partes review ("IPR") of the Original Patents and then moved to stay the case pending the outcome of the IPRs.

The district court then stayed the case and simultaneously granted permission for leave to amend the complaint to add the Additional Patents. After the PTAB instituted review of the Original Patents, Murata moved to lift the stay with respect to the Additional Patents and moved for a preliminary injunction on the Additional Patents. Daifuku also filed IPRs with respect to the Additional Patents. The district court denied the motion for preliminary injunction as untimely because it declined to lift the stay.

Continue reading "Murata v. Daifuku: District Court Denies Preliminary Injunction Motion for a Second Time After Remand from Federal Circuit Based on Pending IPR and Previously Issued Stay" »

Court Declines to Modify Judgment Based on Collateral Proceedings before the PTAB Finding Claims of Patent-In-Suit Invalid

May 16, 2016

Summary: In the decision referenced below, the court declined to modify a judgment pursuant to Rule 60(b)(6) of the Federal Rules of Civil Procedure even though the PTAB had found several claims of the patent-in-suit invalid.

After a trial and an appeal to the Federal Circuit, which affirmed the royalty damages verdict in favor of the plaintiff, the defendant moved the district court to grant it relief from the judgment under Federal Rule of Civil Procedure 60(b)(6). The defendant argued that it would be unjust for the court to enforce a judgment in which ongoing collateral proceedings before the PTAB may render certain patents invalid and may have impacted the fairness of the trial.

Continue reading "Court Declines to Modify Judgment Based on Collateral Proceedings before the PTAB Finding Claims of Patent-In-Suit Invalid" »

Failure to Institute Inter Partes Review Is Not Grounds for Common Law Estoppel to Prevent Defendant from Re-Litigating Issues Raised before the Patent Office

May 11, 2016

The defendant filed a petition for Inter Partes Review ("IPR") with the Patent Office. As part of its application, it submitted a 65 page brief along with several hundred page s of accompanying evidence. The plaintiffs submitted a 60 page brief along with its own evidence in response. After the Patent Office declined to institute review of the patent-in-suit, the plaintiffs contended that the denial of the IPR was a final decision by an administrative board and that the defendant was collaterally estopped from bringing those same arguments again before the district court.

After reviewing the law on collateral estoppel, the district court noted that the defendant "did not make it past the preliminary proceedings in their attempted IPR." The district court concluded that this was important for several reasons. "First, it means a 'trial' was never conducted o[n] the merits. Instead, the 'proceedings' were limited to a single petition brief, a response, and any accompanying evidence. Second, there was not a final written decision issued. The Board denied further review, that is, it denied initiating the IPR proceedings. Accordingly, no final written decision was necessary."

Continue reading "Failure to Institute Inter Partes Review Is Not Grounds for Common Law Estoppel to Prevent Defendant from Re-Litigating Issues Raised before the Patent Office" »

Chestnut v. Apple: District Court Puts Plaintiff to the Test--Proceed on Limited Number of Claims or Continue Stay pending Inter Partes Review

February 10, 2016

In this patent infringement action, the plaintiff asserted claims from two different patents against Apple. Apple filed an Inter Partes Review ("IPR") with the Patent Trial and Appeal Board ("PTAB") and moved to stay the case pending the IPR.

Continue reading "Chestnut v. Apple: District Court Puts Plaintiff to the Test--Proceed on Limited Number of Claims or Continue Stay pending Inter Partes Review" »

District Court Grants Motion to Exclude Proceeding before PTAB during IPR But Allows Admissions and Arguments Made to PTAB to go before the Jury

February 8, 2016

The plaintiff, Magna, filed a motion in limine to exclude references to Inter Partes Review ("IPR") proceedings. The defendant, TRW, filed a response, arguing that evidence was relevant to multiple issues at trial, including, but not limited to, the history of the asserted patents, prosecution history estoppel, the scope of the claims and prior art, and willfulness.

TRW explained that while it did not intend to argue that the mere fact that the PTO instituted IPR proceedings is conclusive evidence that the asserted patents are invalid, TRW did plan to seek to admit evidence in the IPRs which constitutes the file histories of the patents, while avoiding the undue prejudice, confusion, and irrelevance of informing the jury about details about the IPR proceedings including outcomes.

Continue reading "District Court Grants Motion to Exclude Proceeding before PTAB during IPR But Allows Admissions and Arguments Made to PTAB to go before the Jury" »

District Court Declines to Stay Action Pending Inter Partes Review ("IPR") Where Claim Construction Briefing Had Already Occurred

January 21, 2016

After the PTAB granted Defendant's petition for IPR on certain of the claims in the patent-in-suit, the defendant filed a motion to stay the action pending the resolution of the IPR. The plaintiffs objected to a stay, but alternatively advocated for a partial stay allowing them to move forward with their causes of action related to Claims 12, 18, 20-22, and 25, which were not being reviewed by the PTAB.

The district court began its analysis by noting that before the court could rule on the motion to say, the claim construction deadlines approached and passed and neither party asked the district court to extend the claim construction deadlines due to the pending motion for a stay. Instead, both parties filed their opening and responsive claim construction briefs.

Continue reading "District Court Declines to Stay Action Pending Inter Partes Review ("IPR") Where Claim Construction Briefing Had Already Occurred" »

District Court Declines to Modify Claim Construction Based on PTAB Denial of IPR

December 23, 2015

Adidas AG ("Adidas"), filed a patent infringement action against Under Armour, Inc. ("Under Armour") and MapMyFitness, Inc. ("MapMyFitness") alleging that they infringed over a dozen patents. After Under Armour and MapMyFitness filed answers and counterclaims, the district court held a Markman Hearing and issued a claim construction order.

After the claim construction order, the defendants filed a motion to modify the district court's claim construction. The defendants requested that the district court modify its construction of the term "route path" based on actions taken by the Patent Trial and Appeal Board ("PTAB"). Prior to the claim construction order, Under Armour filed a Petition for inter partes review ("IPR") of one of the patents-in-suit.

Continue reading "District Court Declines to Modify Claim Construction Based on PTAB Denial of IPR" »

District Court Lifts Stay Pending Inter Partes Review ("IPR") after the USPTO Declined to Institute Review on Two of the Three Patents-In-Suit

November 23, 2015

The district court had previously stayed all proceedings in the pending an IPR. The district court issued the stay because the USPTO proceedings had the potential to resolve the validity of most of the claims in the patents-in-suit.

After the stay, the USPTO declined to institute the IPR with respect to two of the patents and agreed to review only a limited number of claims related to the third patent. Plaintiff Cequent Performance Products, Inc. ("Cequent") moved to lift the stay because the USPTO entirely refused to institute inter partes review proceedings on two of the patents (the '780 and '352 Patents) and refused to institute an inter partes review proceeding on nine claims related to the third patent.

Continue reading "District Court Lifts Stay Pending Inter Partes Review ("IPR") after the USPTO Declined to Institute Review on Two of the Three Patents-In-Suit" »

District Court Administratively Terminates Motion to Dismiss Because of Pending Inter Partes Reviews ("IPRs")

November 11, 2015

In this patent infringement action, Watson Laboratories, Inc.'s ("Watson") moved to dismiss several counts of the complaint filed by Jazz Pharmaceuticals, Inc. and Jazz Pharmaceuticals Ireland Limited (collectively, "Jazz"). Watson moved to dismiss these counts under Federal Rule of Civil Procedure 12(b)(6) on the grounds that the "Risk Mitigation Patents" claim ineligible subject matter under 35 U.S.C. § 101.

Continue reading "District Court Administratively Terminates Motion to Dismiss Because of Pending Inter Partes Reviews ("IPRs")" »

District Court Declines to Admit Denial of Petition for Inter Partes Review ("IPR") into Evidence before Jury

October 14, 2015

In a pending patent infringement action, Apple moved to preclude the plaintiff, Wisconsin Alumni Research Foundations ("WARF") from offering evidence or argument regarding the Patent Office's denial of an IPR that Apple initiated. Apple relied on two prior art references as well as a declaration of Dr. Robert Colwell, who is Apple's validity expert in the patent lawsuit. The petition also made several of the same arguments regarding the prior art references that Apple intended to present to the jury in support of its invalidity defense.

Apple argued that WARF should be precluded from offering evidence or argument regarding the IPR proceeding given its minimal probative value, risk of causing unfair prejudice, and possibility of misleading and confusing the jury. WARF opposed the motion, arguing that the PTAB's decision is highly probative of validity of the patent, particularly where Apple intends to present many of the same arguments.

Continue reading "District Court Declines to Admit Denial of Petition for Inter Partes Review ("IPR") into Evidence before Jury" »

District Court Denies Defendants' Motion to Stay Pending Inter Partes Review ("IPR") Where Third Parties Filed IPRs and Defendants Would Not Be Subject to Estoppel Provisions

October 12, 2015

In this patent infringement case, Plaintiff Signal IP, Inc. ("Signal") alleged that Defendants Ford Motor Company ("Ford") and Fiat Chrysler US LLC ("FCA") (collectively "Defendants") infringed upon six of patents. The Defendants filed a joint motion to stay all proceedings pending an inter parties review of the patents-in-suit.

Defendants Ford and FCA argued that there were eleven inter partes review proceedings and three reexamination proceedings challenging the validity of all the claims asserted in the patents-in-suit. Ford and FCA argued that it would be more efficient for the USPTO to decide the validity of the asserted claims in the patents before the district court proceeded with the case.

Continue reading "District Court Denies Defendants' Motion to Stay Pending Inter Partes Review ("IPR") Where Third Parties Filed IPRs and Defendants Would Not Be Subject to Estoppel Provisions" »

It Is Cold Out There: District Court Denies Joint Stipulation to Stay Case Pending Inter Partes Review -- Twice

September 15, 2015

In consolidated patent infringement actions between Arctic Cat and Polaris, Artic Cat filed four petitions for inter partes review ("IPR") of two patents asserted by Polaris. Three days after the IPRs were filed, the parties filed a joint stipulation to stay the consolidated cases given Arctic Cat's pending IPR petitions.

On September 1, 2015, the district court denied the parties' request to stay. In response to the district court's order, the parties submitted a joint letter seeking reconsideration of the order denying a stay of the consolidated cases.

Continue reading "It Is Cold Out There: District Court Denies Joint Stipulation to Stay Case Pending Inter Partes Review -- Twice" »