Articles Posted in Inter Partes Review

Published on:

by

In a significant reversal for Petitioner Motorola Solutions, the Acting Director of the United States Patent and Trademark Office (USPTO) has granted Stellar LLC’s request for Director Review, vacated the Patent Trial and Appeal Board’s (PTAB) earlier decision instituting inter partes review of four patents, and denied institution.

The March 28, 2025 decision, affecting Stellar, LLC’s U.S. Patent Nos. 7,593,034, 9,485,471, 8,692,882, and 9,912,914, hinged on the application of the Fintiv factors, which guide PTAB discretion in instituting inter partes review when parallel district court proceedings exist. Acting Under Secretary Coke Morgan Stewart found that “the Board’s analysis of factors 3 and 4, and overall weighing of the Fintiv factors was erroneous” and that the Board “did not give enough weight to the investment in the parallel proceeding and gave too much weight to Petitioner’s Sotera stipulation.”

Substantial Investment in Parallel Proceeding

The Director emphasized that by the time Stellar filed its Preliminary Response, the parties had already “served extensive infringement and invalidity contentions, served opening and rebuttal expert reports, filed claim construction briefs, and conducted several depositions.” Additionally, “the court also had held a claim construction hearing and construed the disputed claim terms.” Importantly, the scheduled district court trial date of March 10, 2025, was “eleven months before the Board’s projected final written decision date.” Given these factors, the Director concluded that “factor 3 strongly favors discretionary denial.”

Continue reading

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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