A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: IPR

Judge Andrews Notes "It Has Become Fairly Routine to Stay Cases After IPR's Have Been Instituted"

Nathan R. Hoeschen, Dec. 10, 2020
IPR Stay

Motions to stay pending IPR's have gone through several trends as the IPR landscape has shifted in the years since the AIA created the procedure. In the halcyon days of 2013-2014 when the PTAB was instituting 80+% of all IPR petitions, it was fairly common in Delaware to see stays granted pre-institution. See, e.g., Peschke Map Techs. v. JJ Gumberg Co., C.A. No. 12-1525-SLR (D. Del. Apr. 24, 2014); Princeton Digital Image Corp. v. Konami Digital Entertainment Inc. et al., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 15, 2014) (mem. order).

Stay Rates Decline in the late 2010's

In the years since, as institution rates declined, stays pending institution decisions have become all but …

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Here's a Spreadsheet That Forecasts IPR Deadlines and Timing Based on the Filing Date

Andrew E. Russell, Nov. 23, 2020
KB IPR Timing Estimator

IPR Timing Estimator Screenshot
Andrew E. Russell

It can be kind of a pain to estimate the schedule of an inter partes review proceeding beforehand, because the dates are relative (e.g., "30 days after x"), and because the deadlines are set in a number of different places (e.g., the U.S. Code, the Code of Federal Regulations, the PTAB's Trial Practice Guide).

A few years ago, I put together a spreadsheet that automatically estimates the timing and deadlines of an IPR based on the filing date. I've updated it a couple of times since then.

A spreadsheet like this can be a great help when you need to figure out the timing of an IPR so that you can do …

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Fed. Cir. Improves Cost / Benefit Calculus for Defendants Joining IPRs

Andrew E. Russell, Sept. 24, 2020
Estoppel IPR

Previous equations for deciding whether to join an existing IPR
Previous equations for deciding whether to join an existing IPR Roman Mager, Unsplash

Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.

Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.

The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.

It relied on the Facebook decision we talked about …

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Federal Circuit Holds That A Party Cannot Join Its Own Previous IPR Proceeding

Andrew E. Russell, Sept. 4, 2020
IPR

The Federal Circuit's decision is below.

It found that even though the defendant did not receive an identification of asserted claims from the plaintiff until after the statutory IPR deadline, and even though the patents included a total of 830 claims, the statute did not allow the defendant to file a new IPR petition and then join it to its previous IPR proceeding as a way to add claims after the statutory filing deadline.

The Court recognized that the decision would result in wasted efforts by defendants in challenging claims unnecessarily:

We . . . recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted …
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Viable: Pre-Institution Stays Pending IPR

Jeff Castellano, July 21, 2020
Pre-Institution Stay IPR

While pre-institution stays pending IPR are usually seen as disfavored in this District, they are occasionally granted. The circumstances must be right, however.

Judge Connolly recently ordered a stay in Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 20-0104-CFC pending IPRs that had been filed—but not instituted—on all asserted claims.

He noted that a related action had already been stayed pending IPR, and that the defendants had agreed "to forgo their inequitable conduct counterclaims and defenses in both actions," and found good cause to stay. As a condition of the stay, he required that defendants dismiss their inequitable conduct defenses and counterclaims, and ordered that they would be "barred" from pursuing those defenses in both actions...

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