IPRs & Other PTO Proceedings

Look (at the PTAB Factors) Before You Leap Into Your Follow-On IPR Petition

Decision Denying Petitioner’s Requests For Rehearing, General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Nos. Case IPR2016-01357, 01358, 01359, 01360, 01361 (P.T.A.B. September 6, 2017) (expanded panel)

Last year, the Patent Trial and Appeal Board (“PTAB”) set out seven factors that could be considered in determining whether to grant or deny a subsequent petition for inter partes review (“IPR”) after denial of a previous petition—a so-called “follow-on” petition. Moving forward, IPR participants should pay close attention to how the PTAB applies these factors and whether it adds more.

In September 2015, General Plastic filed two IPR petitions challenging claims in Canon patents. The PTAB denied institution on the merits in March 2016 and subsequently denied General Plastic’s requests for rehearing. Then, in July 2016, General Plastic filed five subsequent petitions, again challenging claims of the same Canon patents. Again, the PTAB denied those petitions.

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USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE

Patent Reviews Get Supreme Court Review

In a move that could have major implications for patent litigation in the Northern District of California as well as every other District, the U.S. Supreme Court has decided to take up the issue of whether inter partes reviews and certain other America Invents Act proceedings are unconstitutional because they can result in invalidation of a patent without a jury trial.  We invite you to read a full account, written by our colleague Don Daybell, on Orrick’s website here.

District Courts Won’t Wait Forever: Stay Lifted Pending Rehearing of IPR Denial

Order Lifting Stay, MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-03657-SI (Judge Susan Illston)

As we have reported in the past, judges in the Northern District are generally willing to stay a case pending IPR, and sometimes even before the PTAB decides whether to institute review. But Judge Illston’s order in MLC v. Micron confirms there are limits. At least when an IPR petition is initially denied, and a decision on rehearing is nowhere in sight, the scales may tip in favor of lifting an existing stay and letting the district court action proceed, notwithstanding unfinished business before the PTAB. READ MORE

No Amendments and No Stay

Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)

Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.

In the first order, he denied plaintiff’s request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. READ MORE

No Bond for You: Patentee Not Entitled to Bond or Preliminary Injunction While Case Stayed Pending IPR

Order Granting Motion to Stay, Security People, Inc. v. Ojmar US, LLC, 14-cv-04968 (Judge Haywood Gilliam Jr.)

A recent opinion analyzes what relief, if any, a patentee is entitled to when its District Court case is stayed pending an inter partes review (IPR) before the Patent Office.  In Security People v. Ojmar, the plaintiff-patentee Security People opposed a motion to stay on several routine grounds.  In addition, Security People made unorthodox arguments, including that 1) the AIA is unconstitutional, 2) Ojmar should post a bond due to Security People’s alleged loss of sales due to patent infringement, or 3) an injunction should issue prohibiting the sale of the accused products during the pendency of the stay.  Judge Gilliam disagreed with Security People’s preliminary injunction-like requests and simply stayed the litigation. READ MORE

One Size (Stay) Does Not Fit All

Brightedge Technologies, Inc. v. Searchmetrics, GmbH, et al., Case No. 14-1009 (Judge William Orrick)

As covered by this Blog (for example, here and here), the Northern District has granted stays pending inter partes review on several occasions after considering three factors: (1) stage of the case, (2) simplification of issues, and (3) undue prejudice or tactical disadvantage. While complete stays on some or all asserted patents have been the norm, Judge Orrick’s recent Order reminds us that stays can be customized to fit the particular facts and circumstances of a litigation.

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Give Them An Inch: When Some Patents Stayed by Concession, Court Favors Staying More Patents Pending IPR

Order Granting Motion To Stay, Cypress Semiconductor Corp. v. GSI Technology, Inc., Case No. 13-02013 (Judge Jon Tigar)

Judge Tigar’s recent decision to stay portions of the case between Cypress and GSI reinforces ND Cal judges’ inclination to grant stays pending inter partes review: Cypress, the patentee, conceded that the case should be stayed as to two out of seven patents-in-suit, but the case was set to proceed with respect to three patent. Before the court was what to do with the other two patents subject to IPR. In light of the undisputed stay of two patents, Judge Tigar discounted some of Cypress’ arguments and granted defendant GSI’s motion, adding the remaining two patents to the stay bucket.

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Stay Pending IPRs Granted Subject to Defendants Agreement to Be Bound by Estoppel, Even Though IPR Proceedings Don’t Cover All Asserted Claims

Motion to Stay Pending Inter Partes Review Granted, Personal Web Techs. LLC et al. v. Google Inc. et al., 5:13-cv-01317 (Judge Edward Davila)

When third parties file petitions for inter partes review that cover some, but not all, of the Plaintiff’s asserted claims, should the court still stay the district court litigation? In at least one recent case brought by PersonalWeb Technologies against Google and YouTube, the answer was “yes,” so long as the Defendants agreed to be bound by the same estoppel conditions as would bind the
third parties.

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June 2014 Recap

June 2014 was a busy month for this blog, and for patent law in other arenas.  Perhaps the biggest news was a trio of decisions on patents from the U.S. Supreme Court – Akamai (inducement and divided/joint infringement), Nautilus (indefiniteness), and CLS Bank (software patents).  Nautilus, which threw out the old indefiniteness standard, has already helped one ND Cal defendant turn the tables during summary judgment, and is surely being cited widely in other cases.

Leading us into summer, the interplay between district court and patent office was a hot issue.  We learned more about what ND Cal judges do with cases when the PTO is not reviewing all asserted patents: Judge Armstrong and Judge Davila showed their willingness to stay early-stage, non-competitor cases in their entirety, while Judge Orrick held that the PTO’s denial of IPR on some of the patents did not justify lifting a previously imposed stay.  And what of patentees’ use of PTO proceedings?  Well, Judge Alsup held that the patentee’s amending claims through reexamination did not justify vacating the Court’s earlier decision invalidating the unamended claims.

There was also plenty of business as usual as ND Cal judges managed their cases and dockets.  Showing sensitivity to the burdens of discovery, the court issued a new patent-specific model order for e-discovery, while Judge Cousins ordered that depositions of party employees occur in the Northern District rather than foreign jurisdictions where the companies were headquartered.  We also saw illuminating rulings on pleading motions, claim construction, transfers, declaratory judgment of non-infringement, and attacks on damages experts.

Outside the court, the UC system’s “active patenting and patent licensing program” led it to top the list in number of patents granted to a university, while local company Tesla Motors promised not to sue on its patents.

Finally, at the end of June, patent practitioners and judges across the country, including the ND Cal, bid farewell to the appellate oversight of Judge Rader, who stepped down from the Federal Circuit bench.