Articles Posted in Inter Partes Review

The Boeing Company (“Boeing”) filed a motion to stay pending inter partes review” (“IPR”) after Boeing had requested that the United States Patent and Trademark Office (“PTO”) conduct an inter partes review of U.S. Patent No. RE39,618 (“the ‘618 patent”). Boeing argued that the asserted claims of the ‘618 patent were unpatentable and sought a stay of the case until the PTO decided whether to accept review and determines the patentability of the challenged claims.

The district court noted that it has broad discretion to manage its docket, including the inherent power to grant a stay pending agency review. Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 849 (Fed. Cir. 2008). When determining whether to grant a stay, courts generally consider three factors: 1) whether a stay will simplify the issues in question; 2) the stage of litigation, i.e., whether discovery is complete and whether a trial date has been set; and 3) whether a stay would unduly prejudice the non-moving party. Zillow, Inc. v. Trulia, Inc., C12-1549JLR, 2013 WL 5530573, at *3 (W.D. Wash. Oct. 7, 2013); Nat’l Prods., Inc. v. Gamber-Johnson LLC, C12-840RSL, 2012 WL 3527938, at *1 (W.D. Wash. Aug. 14, 2012).
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Plaintiff ACQIS, LLC (“ACQIS”) filed a patent infringement action in the Eastern District of Texas alleging that Defendant EMC Corporation (“EMC”) had infringed claims in 11 patents owned by ACQIS. Specifically, ACQIS alleged that 20 EMC computer storage products infringe 22 claims from these 11 patents, including EMC products for modular computer systems.

After the Eastern District of Texas transferred the case, EMC moved to stay the case pending Inter Partes Review (“IPR”). The United States Patent and Trademark Office (“PTO”) has instituted IPRs for 2 of the 11 patents-in-suit, involving 3 of the 22 claims asserted against EMC.
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In this patent infringement action, Meyer Products LLC (“Meyer Products” or “defendant”) filed a motion to stay the case pending an inter partes review. After the motion was filed, the court set a briefing schedule. As part of its standard operating procedure, the court entered a temporary stay of the proceeding until defendant’s motion could be decided on the merits.

In the middle of the briefing schedule and before plaintiff’s opposition to the motion for stay was due to be filed, plaintiff filed an “emergency” motion to lift the temporary stay.
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In IPR2015-00821, Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., sought to join its Petition with a recently initiated IPR proceeding involving the same patent, parties, and counsel. The patent at issue, U.S. Patent No. 8,532,641, is directed to a music enabled communication system. Specifically, Petitioner requested inter partes review of claims 1-3, 5-7, 9, and 10 of the ‘641 patent using two new references, Ushiroda and Bork, in combination with references Ito, Haartsen, Rydbeck, Nokia, and Galensky, previously relied upon in IPR2014-01181. Pet. 14-46; Motion for Joinder 2-3. The Petitioner conceded that, absent joinder, the institution of inter partes review would be barred under 35 U.S.C. § 315(b) because the petition was filed more than 1 year after the date on which it had been served with a complaint alleging infringement of the ‘641 patent.

As explained below, the Board exercised its discretion to deny the Petitioner’s motion finding that Petitioner had not provided sufficient justification for the delay in asserting the new grounds of invalidity in the current petition. As such, the Petition was merely an attempt for the Petitioner to obtain a “second bite at the apple,” which runs contrary to the Board’s mandate to provide just, speedy, and an inexpensive resolution of the proceedings under 37 C.F.R. § 42.1(b).
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In IPR2014-01201, Patent Owner ThermoLife International, LLC sought discovery regarding whether Purus Labs, Inc., a company related to the Petitioner John’s Lone Star Distribution, Inc., should have been identified as a real party-in-interest. Specifically, the Patent Owner sought documents:

(1) “showing the corporate and management structure of Purus Labs, including any Lone Star personnel who participate in the management or corporate decision-making of Purus Labs,”

(2) “identifying the persons who provided direction to, or had the authority to provide direction to, Lone Star’s counsel in this IPR, including the persons who reviewed, or were given the opportunity to review, the papers filed in this IPR,” and
(3) “showing communications by or to directors, officers, or executives of Purus Labs and Lone Star regarding this IPR, including any Purus Labs Board minutes regarding such communications.”

As explained below, the Board ultimately granted limited documentary discovery of Petitioner on this issue, but denied for the time being any depositions.
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On October 13, 2014, The Brinkman Corporation filed a petition for Inter Partes Review of U.S. Patent 8,381,712 directed to a barbecue grill that allows simultaneous gas grilling and charcoal-fueled grilling. A&J Manufacturing, the owner of the ‘712 patent, challenged Petitioner’s standing to file the IPR based on the fact that the Petition was filed more than one year after the Petitioner received a copy of the complaint filed in a district court alleging infringement of the ‘712 patent or, alternatively, that the Petition was filed more than one year after the service of an ITC Complaint alleging infringement of the ‘712 patent. The Board rejected the Petitioner’s arguments and held that the relevant start of the one year time bar under 35 U.S.C. § 315(b) is the date when the waiver of service of the complaint executed by the Petitioner was filed with the district court. Based on this date, the Petition was filed within the allotted time.

Pursuant to 35 U.S.C. § 315(b), “[a]n 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.”
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In IPR2014-00727, Petitioner C&D Zodiac, Inc. seeks review of U.S. Patent No. 8,590,838 owned by B/E Aerospace, Inc. The ‘838 patent relates to a “spacewall” lavatory. In connection with the IPR proceeding, the Petitioner sought, as “Routine Discovery,” documents that it contends are inconsistent with positions the Patent Owner has advanced in the IPR. The Board granted the discovery over the Patent Owner’s opposition.

Pursuant to 37 C.F.R. § 42.51(b)(1)(iii), “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency.”
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Presidio Components, Inc. (“Presidio”) filed a complaint against American Technical Ceramics Corp. (“ATC”) asserting a claim for patent infringement. ATC filed a motion to stay the case pending PTO review of the patent-in-suit. Presidio opposed ATC’s motion to stay.

The district court began its analysis of the motion by noting that “this is not the first time that ATC has sought reexamination of the ‘356 patent with the United States Patent and Trademark Office (“PTO”). On July 23, 2009, ATC filed a request for ex parte reexamination of the ‘356 patent with the PTO seeking PTO review of claims 1-5, 16, 18, and 19. On July 2, 2010, ATC filed a second request for ex parte reexamination of the ‘356 patent with the PTO seeking review of the same claims. After reviewing ATC’s requests for reexamination, the PTO confirmed the patentability of claims 1-5, 16, 18, and 19.”
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