Articles Posted in Inter Partes Review

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

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

Published on:

by

The district court had previously ordered plaintiffs to produce certain documents to the extent that documents containing communications between plaintiff and its non-attorney patent agents were not subject to the attorney-client privilege. The district court ordered a one-week stay to allow the filing of any appeal. Rather than producing the documents in compliance with the order, the plaintiffs filed a petition for Writ of Mandamus with the United States Court of Appeals for the Federal Circuit.

The district court elected to stay plaintiffs’ production “pending disposition of the petition or other order of the Court of Appeals” and that production remained stayed pending resolution by the Federal Circuit. “A failure to stay the production would have forced the Circuit to consider an emergency motion to stay. Plaintiffs knew that their decision to forego compliance with the discovery order endangered the trial date.”
Continue reading

Published on:

by

In IPR2015-00838 and IPR2015-00840, Petitioner Tristar Products, Inc. (“Petitioner”) filed petitions to instituted IPRs of certain claims of U.S. Patent Nos. 8,485,565 and 8,622,441 owned by Choon’s Design, LLC (“Patent Owner”). Previously, the Patent Owner had sued the Petitioner on the ‘565 and ‘441 patents. The issue was whether was whether the petitioner can rely upon date of service of the complaint set forth in the proof of service filed by the patent owner in satisfying the time limitations set forth in 35 U.S.C. § 315(b), which precludes institution of an IPR “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.” The unexpected answer was no and, as a result, the PTAB did not institute IPR proceedings involving the ‘565 and ‘411 patents.
Continue reading

Published on:

by

In Deep Sky Software, Inc. v. Southwest Airlines Co., Defendant Southwest Airlines (“Southwest”) sought its fees and costs following the successful inter partes review of the patent-in-suit, which resulted in all of the asserted claims being invalidated. Among the fees and costs Southwest sought were those related to the filing and prosecution of its IPR petition. Undaunted by the absence of other district court rulings awarding such fees, the district court nonetheless awarded Southwest nearly $400,000 in attorneys’ fees and costs, most of which was related to the IPR proceeding.
Continue reading

Published on:

by

Defendants HTC America, Inc., HTC Corporation, AT&T Mobility LLC, Cellco Partnership, Sprint Spectrum L.P., Kyocera Corporation, Boost Mobile, T-Mobile USA, Inc. and ZTE (USA), Inc. filed a motion to stay pending resolution of an inter partes review before the Patent Trial and Appeal Board (“PTAB”).

The court began its analysis by explain that “[p]art of the quid pro quo of any stay pending inter partes review before the Patent Office is the promise of simplification. Not a guarantee, to be sure, but at least a promise that in exchange for freezing a case on the court’s docket, significant issues may go away for good. Where the IPR will address some, but not all, claims asserted in the district court, relative to the quo the value of the quid shrinks considerably.”
Continue reading