Tagged: Inter Partes Review

PTAB Finds Service of Complaint for Infringement Without Exhibits Does Not Trigger 35 U.S.C. § 315(b) Time Bar

In Lightricks Ltd. v. Plotagraph, Inc., the Patent Trial and Appeal Board (PTAB or “Board”) recently clarified the standard for what triggers the 35 U.S.C. § 315(b) time bar for filing a petition for inter partes review. Section 315(b) requires that petitions for inter partes review be filed with the Board within “[one] year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). In Lightricks v. Plotagraph, the Patent Owner (“PO”) argued that the petition at issue was filed outside of the one-year anniversary of the service of its complaint for infringement in the related federal district court action and was therefore time barred. The PO had attempted to serve its complaint at two of the petitioner’s office locations more than one year before the petition was filed. However, the exhibits to the complaint were not included in either of those two service attempts. The petitioner argued that the date of service for purposes of § 315(b) was the date that it filed a waiver of service with the district court, and that because the waiver of service was filed less than one year before the petition was filed, the petition was not time barred under § 315(b). The Board agreed with...

What is “A Regular and Established Place of Business”?: A Case Compendium

Since the TC Heartland decision in which the Supreme Court ruled that the “residence” prong in the patent venue statute, 28 U.S.C. § 1400(b), refers only to the state of incorporation and not the definition conferred in the general venue statute, § 1391, parties and courts have focused attention on interpreting the alternative basis for venue under the statute: “where the defendant has committed acts of infringement and has a regular and established place of business.” TC Heartland v. Kraft Foods Group Brands, 137 S. Ct. 1514, 1516 (2017). Of particular interest is how courts have ruled on what constitutes “a regular and established place of business.” In September 2017, the Federal Circuit clarified that a “regular and established place of business” must meet three general requirements: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.” In re Cray, 871 F.3d 1355, 1360 (Fed. Cir. 2017). First, there must be a “physical place,” i.e., a “physical, geographical location in the district from which the business of the defendant is carried out.” Id. at 1362. The Court defined a physical place as a “building or part of a building set apart for any purpose.”...

Federal Circuit Issues Its First AIA Appeal Ruling

On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”). Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.

The United States Patent Trial and Appeal Board Determines That a Civil Action Dismissed Without Prejudice Does Not Bar a Petition for Inter Partes Review Under 35 U.S.C. § 315 (a)(1)

We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board (“PTAB”) determined that a “complaint alleging infringement of the patent” does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b). This week, the PTAB also determined what constitutes a bar to filing an inter partes review petition under 35 U.S.C. § 315 (a)(1); specifically whether a civil action filed before a petition for an inter partes review that is subsequently dismissed without prejudice is a bar to the petition under 35 U.S.C. § 315 (a)(1). The PTAB held that it is not.

PTAB Issues its First Decision in an Inter Partes Review Trial

Just ten months after issuing its Decision to Initiate Trial in the very first Inter Partes Review (“IPR”) proceeding (IPR2012-00001, Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC ), the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) has issued a Final Written Decision in favor of the Petitioner, Garmin. In its Decision, the PTAB found the claims at issue to be unpatentable as obvious in view of the cited prior art, and further denied Patent Owner Cuozzo’s Motion to Amend the claims.

Supreme Court Will Not Review Bar for Proving Inequitable Conduct

We have previously reported on the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) issued on May 25, 2011. In that decision, the Federal Circuit heightened the standard required to show that a patent holder committed inequitable conduct during the prosecution of the patent at issue. Prior to Therasense, an accused infringer asserting inequitable conduct as a defense had to show that the withheld information or false statements were material and the patent applicant intended to deceive the USPTO. Materiality and intent were analyzed on a sliding scale, where intent could be inferred if the withheld information was considered highly material.

Cancellation of Claims by USPTO During Reexam is Binding in Pending District Court Infringement Litigation

Last month, the Federal Circuit addressed the question of “whether, under the reexamination statute, the cancellation of claims by the PTO is binding in pending district court infringement litigation.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 2013 U.S. App. LEXIS 13484, at *13 (Fed. Cir. July 2, 2013). The Federal Circuit interpreted the reexamination statute to have a binding effect on concurrent litigation, and thus terminated a pending litigation where the same patent claims were cancelled during reexamination. Id. at *43. Accordingly here, the Federal Circuit held that the PTO’s invalidity decisions trump the prior district court ruling.

Federal Circuit Limits Discovery in Inter Partes Re-examination Proceedings

We reported last week on the discovery limitations under United States Patent and Trademark Office (“PTO”) guidelines as they pertain to inter partes review (“IPR”) proceedings. On Wednesday, in Abbott Labs. v. Cordis Corp., the Federal Circuit ruled that discovery is not allowed in inter partes re-examinations. The case stemmed from Abbott’s motion to quash two subpoenas duces tecum issued by Cordis which sought documents for use in a pending IPR re-examination. Id. at 2. In the underlying action, Cordis sued Abbott in the District Court for the District of New Jersey for infringement of two of its patents directed to drug-eluting stents. Id. at 3. The PTO agreed to inter partes re-examination of the patents and by office action, the examiners found both patents obvious. Id. at 3-4.

Limitations on Discovery in Inter Partes Review Proceedings

Companies accused of patent infringement have a number of basic alternatives to contemplate: settle the matter; defend the suit; or consider resort to a post grant patent proceeding at the United States Patent and Trademark Office (USPTO). With an eye towards cost, risk and accurate resolution, inter partes review (IPR) proceedings are an attractive alternative to settling or defending.