March 2019

Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well.
Continue Reading PTAB Equitable Analysis Extends Beyond Follow-on Petitions

Burden on Patent Owner to Show Product Manual Available

Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel.

But what about where the product is the same as a manual that could have been used in the IPR?
Continue Reading Avoiding PTAB Estoppel with Physical Product Combinations