A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: IPR

What's New in Judge Hall's Revised Form Scheduling Order for Patent Cases?

Andrew E. Russell, Feb. 5, 2024
PGR Scheduling Order

Scheduling Order

Last month, after her elevation to the bench as a district judge, Judge Hall issued a revised form scheduling order.

I think it's worth paying attention to what changes, even if the changes may not directly apply in your case, because it shows what the judges are focused on and thinking about.

Plus, it usually doesn't hurt to comply with a judge's newest procedures even if they are not required by the (outdated) scheduling order in your case.

So, what's new?

Stating the Meaning of "Plain and Ordinary Meaning"

Judge Hall adopted a set of additional requirements for joint claim construction briefs. Like all of our current judges, she uses Judge Andrews' procedure of a joint claim construction brief. But …

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The Tale of Claims 9 and 9, Part II: Court Says No, You Can't Tell the Jury That the PTAB Invalidated the Independent Claims

Andrew E. Russell, Jan. 31, 2024
Motion in Limine MIL

Shh. They're not
Shh. They're not "invalid," they're "canceled" and "in the public domain" Kristina Flour, Unsplash

Yesterday Nate wrote about Judge Bryson's opinion that a plaintiff was not bound by its prior allegation that a product infringed two claims, because plaintiff's statement deals with an issue of law, not fact.

Today, I think it's worth discussing another aspect of the same decision, where Judge Bryson addressed a motion by plaintiff to preclude the defendant from discussing the same two invalid claims, claims 9 & 9 of the two asserted patents.

The the PTAB canceled claims 9 and 9 in an IPR, and plaintiff now asserts only claims that depend on those two canceled claims. It moved to prevent defendant from …

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Judge Kennelly Gives PTAB Claim Constructions Little Weight: "Not All intrinsic Evidence Is Created Equal"

Andrew E. Russell, July 22, 2022
IPR Claim Construction

Chicago, Illinois
Chicago, Illinois Pedro Lastra, Unsplash

In an opinion today, visiting Judge Kennelly (N.D. Ill.) rejected the idea that an accused infringer could bring an IPR, receive a claim construction in that IPR, and then argue that that construction is "intrinsic evidence" that, by itself, merits adopting the construction in the district court case.

In XMTT, Inc. v. Intel Corp., C.A. No. 18-1810-MFK, D.I. 293 (D. Del. July 22, 2022), the PTAB had proposed and applied its own constructions for the claims, and accused infringer Intel ultimately lost the IPR. Intel then appealed, and the Federal Circuit affirmed without reaching the merits of the claim constructions.

While the IPR was pending, Intel argued that the …

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Judge Noreika Chooses a Side on IPR Estoppel: No Estoppel of Prior Art Products

Andrew E. Russell, July 12, 2022
IPR Estoppel Estoppel

Split
Bannon Morrissy, Unsplash

IPR estoppel can be kind of terrifying as an accused infringer in a patent action. The statute says that an accused infringer may not assert invalidity on a ground that it could have raised in the IPR; but you can't raise product prior art, so product prior art should be safe, right?

Nope. Courts have sometimes held that product prior art may still be estopped, if there is patent or written prior art that is sufficiently similar. See, e.g., Wasica Fin. GmbH v. Schrader Int’l, 432 F. Supp. 3d 448, 453 (D. Del. 2020) (holding defendant estopped from asserting product art where “all the relevant features” of the art were in a printed publication that could have been raised in an IPR).

As Judge Stark notes in Wasica, courts have gone both ways on this, with some estopping arguments based on product art where similar written or patent art could have been raised in an IPR, and others permitting those arguments.

On Friday, Judge Noreika chose a side in this split: no estoppel for prior art products ...

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Judge Fallon Stays Action Involving IPR on Just One of Two Asserted Patents

Andrew E. Russell, June 10, 2022
Stay Pending IPR IPR

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity …
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Stay Motion Denial Results in Guidance for the Parties—and for the PTAB

Andrew E. Russell, March 9, 2022
Motion to Stay IPR

Stay!
Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPR is instituted.

An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:

ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly ...
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Likelihood of Stay Pending IPR in W.D. Texas vs. Delaware

Emily DiBenedetto, Feb. 23, 2022
IPR Stay

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …
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Your IPR Succeeded? Congrats! Now Go to Trial on Infringement, But You're Estopped from Claiming Invalidity

Andrew E. Russell, Feb. 8, 2022
Collateral Estoppel IPR

PTAB trailhead
PTAB trailhead Joshua Sukoff, Unsplash

During some research the other day, I came across the below order that Judge Noreika issued last summer.

A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?

No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:

Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …
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Chief Judge Connolly Denies Mostly-Unopposed Stay Pending CBM Review Because Defendant Refused to Consent to Statutory Estoppel

Andrew E. Russell, Jan. 17, 2022
CBM Estoppel

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

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Should I Stay Or Should I Go

Nathan R. Hoeschen, Oct. 7, 2021
IPR Stay

This case is staying right where it is
This case is staying right where it is A funny thing you can have the chance to experience at the Elk Island National Park, Yann Allegre, Unsplash

We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."

Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."

Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay ...

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