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Articles Posted in Inter Partes Review

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

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…

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

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…

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

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…

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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

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…

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

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…

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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

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…

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

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. After the district court stayed the case pending the PTAB’s decision…

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

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…

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

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…

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

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…

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