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Patent Litigation Stays Patent Trial and Appeal Board

Fish & Richardson

Texas Patent Litigation Monthly Wrap-Up: October 2024

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This post summarizes two federal patent cases from the Eastern District and Western District of Texas issued in October 2024. The decisions considered the defendants’ motions to stay the cases pending the resolution of inter...more

Goodwin

PTAB Institutes Sarepta’s IPR

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As we previously reported, REGENXBIO’s litigation against Sarepta, alleging infringement of U.S. Patent No. 11,680,274 (the “’274 patent”) by Sarepta’s gene therapy product, was stayed pending resolution of Sarepta’s IPR...more

Akin Gump Strauss Hauer & Feld LLP

Defendant’s Non-Party Status to IPRs Dooms Stay Request, Despite Agreement to Be Bound by IPR Estoppel

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more

Dunlap Bennett & Ludwig PLLC

Is Change Coming to Waco? Judge Albright Grants Five Stays for PTAB Review

On December 20, 2021, in an uncommon move and without much explanation, U.S. District Judge Alan Albright granted five requests for stays while the Patent Trial and Appeal Board (PTAB) reviews the patent at issue (U.S. Patent...more

Jones Day

Fintiv Discretionary Denials Remain In Play

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F5 Networks, Inc. (“Petitioner”) filed a Petition requesting an IPR.  WSOU Investments, LLC d/b/a/ Brazos Licensing and Development (“Patent Owner”) filed a Preliminary Response. ...more

Jones Day

PTAB Lifts Arthrex Remand Stay

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On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative...more

Porter Hedges LLP

To Stay Or Not To Stay: The Impact Of IPRs On Patent Litigation

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Over the course of the past year, trial attorneys in state and federal courts have seen cases effectively stayed by COVID-related delays. COVID hampered in-person discovery and caused courts to re-set jury trial dates. Such...more

Jones Day

Staying Still: District Court Extends Stay Pending Appeal

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District courts commonly stay patent litigation cases pending inter parties review (IPR) that assesses the validity of the patents-in-suit before the Patent Trial and Appeal Board (PTAB). Such stay may be lifted or extended...more

Akin Gump Strauss Hauer & Feld LLP

N.D. Ill.: Neither Statutory Estoppel nor “Misleading” Statements Regarding Its Scope Sufficient to Knock Out Invalidity Defenses

A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more

Bass, Berry & Sims PLC

The PTAB Provides Guidance on its Discretion to Deny Institution under § 314(a)

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Apple Inc. v. Fintiv, Inc., Case IPR2020-00019 (P.T.A.B. Mar. 20, 2020) - On May 5, the PTAB designated as precedential an Order (Paper 11) requesting the parties to submit supplemental briefing on whether it should deny...more

Knobbe Martens

Stay of District Court Proceedings Followed by a Voluntary Dismissal Is Not a Final Court Decision Under 35 U.S.C. § 285

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O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC - Before Lourie, Reyna, and Hughes. Appeal from the United States District Court for the District of Connecticut. Summary: A stay, followed by a voluntary dismissal,...more

Troutman Pepper

U.S. Government in Search of Arthrex Reversal

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Image Processing Technologies LLC v. Samsung Electronics Co., LTD. et al., Appeal Nos. 2018-2156, 2019-1408, 2019-1485 (Fed. Cir. March 2, 2020). The Federal Circuit vacated and remanded the PTAB’s decisions against Image...more

Patterson Belknap Webb & Tyler LLP

Stay In Place: Judge Azrack Declines to Lift Stay Until Federal Circuit Weighs In

On August 6, 2019, United States District Judge Joan M. Azrack denied Plaintiff Andrea Electronics Corporation (“Andrea”)’s motion to lift the stay in Andrea Electronics Corp. v. Apple Inc., No. 16-cv-5220 (E.D.N.Y.) and,...more

Akin Gump Strauss Hauer & Feld LLP

Lift of Stay Disallowed by District Court Post-SAS in View of PTAB’s Final Written Decision Lacking Non-Instituted Claims

The Delaware District Court issued an order on June 7, 2018 denying a party’s motion to lift a stay following the Patent Trial and Appeal Board’s (PTAB) final written decision in a parallel inter partes review (IPR)...more

Knobbe Martens

01 Communique Laboratory, Inc. v. Citrix Systems, Inc.

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Federal Circuit Summaries - Before Newman, Mayer, and Stoll. Appeal from the U.S. District Court for the Northern District of Ohio. Summary: While there is not a “practicing the prior art” defense to literal...more

Mintz - Intellectual Property Viewpoints

PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more

Knobbe Martens

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

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A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that...more

Foley & Lardner LLP

The Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary Stay

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On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove Capital’s IPR against...more

Robins Kaplan LLP

Three Reasons PTAB Litigation Costs More Than We Thought

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The America Invents Act (AIA) has been in effect from more than a year and half. Now, many have begun to ask if the patent office trials the AIA created are living up to their promise of lowering patent litigation costs and...more

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