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In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal combustion engine and an electric motor. IPR2014-00570. On September 30, 2014, the Board instituted a trial on the ‘097 patent, finding that Ford’s petition demonstrated that there was a reasonable likelihood that it would prevail in showing unpatentability of claims 30-33, 35, 36 and 39 of the ‘097 patent. The Board denied review (on both anticipation and obviousness grounds) as to claim 38, which requires that the battery supply power to the electric motor “at a peak of at least 500 volts under peak load conditions.”

In reaching its decision to institute a trial, the Board rejected Paice’s argument that Ford is barred or estopped under 37 C.F.R. § 42.104(a) from requesting an inter partes review due to an alleged breach of an arbitration agreement between the parties. “According to Paice, the arbitration agreement includes ‘unambiguous terms’ that purportedly limit Ford’s ability to ‘challenge the claims of the ‘097 patent.'” Paice argues that Ford is in breach of those terms and therefore failed to demonstrate that it had the requisite standing to file the instant petition.
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In this patent infringement action brought by Trustees of Boston University (“BU”), BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the “‘738 Patent”), which centers on light emitting diodes (“LEDs”) and the technology behind them. BU moved for an order compelling defendant Epistar Corporation (“Epistar”) to designate new Rule 30(b)(6) deponents on certain deposition topics.

As explained by the court, Rule 30(b)(6) requires the noticing party to describe the topics of examination with “reasonable particularity.” Fed. R. Civ. P. 30(b)(6). If the noticing party does not describe the topics with sufficient particularity or if the topics are overly broad, the responding party is subject to an impossible task. McBride v. Medicalodges, Inc., 250 F.R.D. 581, 584 (D. Kansas 2008). To avoid liability, the noticed party must designate persons knowledgeable in the areas of inquiry listed in the notice. Id. Accordingly, if the noticed party cannot identify the outer limits of the topics noticed, compliant designation is not feasible. Id.; see also Newman v. Borders, Inc., 257 F.R.D. 1, 3 (D.D.C. 2009).
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In Trulia, Inc. v. Zillow, Inc., Trulia filed a petition seeking covered business method review of U.S. Patent No. 7,970,674 relating to automatically determining a current value for a real estate property. CBM2013-00056. On March 10, the Board instituted a trial on the ‘674 patent and set a hearing date of November 19, 2014. On July 28, 2014, the Parties publicly announced a merger, which is expected to close sometime in 2015. However, the merger is currently pending review by the FTC, whose review is dictated by the Hart-Scott-Rodino Antitrust Improvements Act under 15 U.S.C. § 18(a). Under this section the initial waiting period expired on September 3, 2014.

In light of the merger, on August 18, the parties filed a joint motion to request to extend the dates by one year, but no less than six months in view of the FTC’s review and expected approval of the merger. The PTAB asked the parties to supplement their motion after the expiration of the initial waiting period. On September 3, the FTC extended the waiting period in a second request for information regarding the merger. On September 12, the parties filed a supplemental notice to provide additional information requested by the Board, including whether the extent to which the parties are bound by the merger agreement and an explanation regarding why the parties are unable to settle this proceeding in an agreement that takes into account the likelihood of FTC approval. Following the Parties’ submission, the Board denied both a 1-year extension and an extension of six months.
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At the end of trial, the Defendant, Texas Instruments Incorporated’s (“TI”), pursued its equitable defense of laches, the only remaining issue left in this patent infringement case. The district court conduced an evidentiary hearing on laches at which the district court heard the live testimony of five witnesses and also accepted deposition designations, prior trial testimony, and exhibits to consider separate from the live testimony.

As explained by the district court, “[t]he equitable defense of laches may be available where the plaintiff unreasonably delayed filing its infringement suit. See A.C. Aukerman Co. v. R.L. ChaidesConstr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). The defense is applicable where the accused infringer proves two things: (1) ‘the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant,’ and (2) the defendant suffered material prejudice as a result of the delay Id. at 1032. The defendant must prove delay and prejudice by a preponderance of the evidence. Id. at 1045.”
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In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the 2007 complaint”), and a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:10-cv-00094 (E.D. Tex. filed March 17, 2010) (“the 2010 complaint”). The ‘180 Patent also is involved in VirnetX Inc. v. Microsoft Corp., Docket No. 6:13-cv-00351 (E.D. Tex.) (“the 2013 complaint”) as well as other pending litigation, two inter partes reexaminations (one concluded and one pending), and a second, concurrently filed inter partes review.

The issue before the Board was whether Section 315(b)’s one year time limitation to file a petition after being served with a complaint barred Petitioner’s IPR in light of the 2007 and 2010 complaints or whether the time should run from the service of the 2013 complaint:

Petitioner was served with a complaint alleging infringement of the ‘180 patent on three occasions. The first complaint (i.e., the 2007 complaint) was served on April 5, 2007, and the second complaint (i.e., the 2010 complaint) was served on March 17, 2010. The 2007 complaint and the 2010 complaint were both served more than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review (February 4, 2014). The third complaint (i.e., the 2013 complaint) was served less than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review…As described above, 35 U.S.C. § 315(b) states that an inter partes review may not be instituted if the petition is filed more than one year after the date of service on Petitioner of a complaint alleging infringement of the patent.

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Juno Lighting, LLC (“Juno”) filed a complaint against Nora Lighting, Inc. (“Nora”) on February 11, 2013. The complaint alleged that Nora infringed Juno’s patent, No. 5,505,419 (“‘419 Patent”), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a counterclaim on May 28, 2013.

After the case was stayed pending a reexamination of the patent by the Patent Office and a summary judgment motion for literal infringement was granted in favor of Juno, Nora filed a motion to dismiss for lack of standing.
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In Coho Licensing LLC v. Glam Media, et al., Coho filed suits against defendants AOL Inc. (“AOL”), Glam Media Inc., Ning Inc., LinkedIn Corp., Rovi Corp., and Twitter, Inc. (collectively referred to as “Defendants”). On May 16, 2014, AOL filed petitions for IPR challenging the validity of all the claims of two of the three asserted patents, and, on June 17, 2014, AOL filed a petition for IPR challenging the validity of all claims of the third patent. Defendants subsequently moved to stay the above captioned cases pending the IPR. As summarized below, the Court granted AOL’s motion to stay and granted the motions of the remaining defendants on the condition that they agree “to be estopped from asserting any invalidity contention that was actually raised and finally adjudicated in the IPR proceedings.”
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Plaintiffs filed the declaratory judgment complaint in this patent case after receiving a letter from defendants alleging that Plaintiffs’ products infringe two of defendants’ patents. Plaintiffs sough declaratory judgment that Defendants’ patents, U.S. Patent Nos. 6,830,014 (filed Aug. 5, 2003) (“the ‘014 Patent”) and 7,267,082 (filed Dec. 30, 2005) (“the ‘082 Patent”), were invalid and/or that Plaintiffs’ products do not infringe the patents. Defendants asserted counterclaims of infringement. The remaining issues for trial involved the scope and validity of the ‘082 Patent and whether Plaintiffs’ product design infringed the ‘082 Patent.

The individual defendant filed a motion to re-align the parties to allow himself to present his case first because he had the burden of proof on the “most important issue” remaining for trial. Plaintiffs opposed the motion on the grounds that they bore the burden of proof on the declaratory judgment claim of invalidity and because they initiated the lawsuit.
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In Affinity Labs of Texas, LLC v. Ford Motor Co., Affinity moved in limine to exclude any reference to the decision of the PTAB regarding an inter partes reexamination filed by a defendant in an earlier case involving a related patent, i.e.., one stemming from the same application and thus sharing the same specification. In the prior decision, the PTAB found that the specification lacked written description for the term “soft button.” Affinity argued that the PTAB’s decision should be excluded because it conflicted with a prior decision of the district court on the same issue.
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Plaintiffs Alpha One Transporter, Inc. and American Heavy Moving and Rigging, Inc. (collectively “Alpha One”) filed a complaint against Defendant and Third-Party Plaintiff Perkins Motor Transport, Inc. (“Perkins”). Perkins subsequently filed a motion to dismiss Alpha One’s complaint for lack of standing on one of the patents-in-suit (the ‘897 Patent) because a co-inventor of the patent had not assigned his rights to Alpha One.

In its opposition, Alpha One did not dispute that the co-inventor status but argued that the co-inventor’s (Mr. McGhie’s) prior assignment of rights in a 2002 provisional patent application (“2002 Assignment”) provided Alpha One ownership of the ‘897 Patent. Because the parties disputed these jurisdictional facts, the district court determined that Alpha One bore the burden of proof to show it had standing to sue on the ‘897 patent.
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