Patent Litigation

Subscribe to Patent Litigation

Court Takes Issue with DJ Filing Prior to IPR

Patent infringement defendants seek IPR of patents asserted against them at the PTAB as an alternative to higher cost litigation. That is, a primary benefit of seeking IPR is the ability to seek a stay of the costlier district court action on the basis that the outcome of the IPR may moot the dispute through cancellation of the asserted claims, or at least greatly simplify the issues for trial.

Yet, not all patent litigation is initiated by patent owners. Often times a potential defendant will seek a Declaratory Judgment (DJ) to secure a favored district court forum in anticipation of an imminent litigation in a less favorable district (typically Texas)

Recently, the District of Delaware considered the impact of such proactive conduct on the typical IPR stay analysis.…

Continue Reading PTAB Stay Calculus Considers DJ History

Scope of Estoppel Considered for Review

IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)

While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).

Should this question ultimately taken up, the outcome could have significant consequences.…

Continue Reading SCOTUS Seeks Gov’t Input on IPR Estoppel

Would a “Mini-Markman” Have Helped Patent Owners?

A long time ago, in a galaxy, far, far away….the Patent Trial & Appeal Board (PTAB) considered implementing a Markman style claim construction procedure it labeled a “Mini-Markman.” The idea, along with others was the result of a 2015-16 listening tour conducted by the agency under former USPTO Director Michelle Lee. The listening tour stopped at several locations across the U.S. to collect public feedback on AIA trial proceedings. The tour culminated in a draft rule package that contained a number of interesting ideas. Needless to say, that rule package was abandoned and never saw the light of day (for reasons unknown)

As we move into the new year and look forward to coming PTAB rule packages on discretionary denials and rehearing practices, I revisit this old idea in view of the never ending dialog on reforming the PTAB.…

Continue Reading The Long Lost PTAB Markman Plan

Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!…

Continue Reading Tillis Bill’s Shot Across the Bow on 101

Judicial Conference & Congressional Attention Stir Change

This time last year, the Western District of Texas (WDTX) was getting a lot of attention from Washington DC policymakers. That is, a plaintiff’s ability to guarantee that its case would be heard by Judge Albright simply by filing in his Waco court was seen as “unseemly” and, coupled with the fact that his court had close to 30% of the nation’s patent docket, improper. Likewise, to many, the twenty or so successful mandamus filings reversing the Judge on issues of venue only amplified the urgency for legislative and/or judicial intervention.

Whether you agree with the above sentiment or not, it was clear as far back as last summer that these practices were plainly living on borrowed time. Back then, it was clear within DC policy circles that if the Judicial Conference did not step in and put an end to Judge Albright’s perceived monopoly on patent cases, that the legislators were prepared to take action.

Yesterday, the Chief Judge of the WDTX took action.…

Continue Reading WDTX Scatters Patent Docket – Now What?

CLE This Month

For those seeking some quality CLE this month, consider the second annual Patent Litigation Mastersâ„¢ 2022 program, presented by IPWatchdog® this coming May 23rd-24th. The program is offered live at the Hyatt Regency (Dulles Airport). The two-day agenda offers a number of compelling topics, and as usual with the Watchdog Masters Programs…

Delaware To Become Less Popular for NPEs?

This past Monday, Chief Judge Connolly of D. Del issued a standing order for all pending litigation before him requiring disclosure of certain financial relationships from litigating parties.  The information is due 30 days from filing of an initial pleading, and includes arrangements made between parties and third party funders.

While eminently sensible in terms of identifying true decision makers for settlement purposes, or identifying potential conflicts of interest, the new requirements will surely send NPEs screaming into the night.
Continue Reading Delaware Court Looks To Unmask Litigation Funders