Posts Tagged: "IPR Joinder"

Supreme Court Denies Five IP Petitions on Issues from IPR Joinder to Contributory Trademark Infringement

On February 20, the U.S. Supreme Court issued an order list that denied petitions for writ of certiorari filed in at least five intellectual property cases. While none of these cases induced large numbers of amici to ask the Court to grant cert, they do represent several current issues in IP law that remain unaddressed. From the use of joinder to evade time-bar limits in patent validity proceedings to the service of process required for a grant of preliminary injunction, the Court’s cert denials leave several open questions with which the patent and trademark community will likely grapple.

Steve Brachmann

February 20, 2024

Three rounds of IPR petitions invalidates VirnetX patent after Apple gets around statute of limitations

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

Steve Brachmann

November 16, 2017

PTAB fails to decide IPR within 1-year statutory deadline

According to 35 U.S.C. § 316(a)(11), the PTAB is required to issue a final determination in an inter partes review not later than 1-year after the date of a decision to institute review is made… That the PTAB has not extended a single case for cause should not be confused with the PTAB following the mandates of § 316(a)(11). Indeed, the parties have been waiting for a decision in IPR2016-00237 for more than 14 months… It seems that the PTAB is here, and presumably in other joinder cases, giving itself more than 1-year without a showing of cause. If that is the case the PTAB is intentionally misreading § 316(a)(11) in order to construe it to give themselves 1-year from the last joinder Order rather than 1-year from the date of institution as the statute requires.

Gene Quinn

September 7, 2017

Federal Circuit dodges IPR joinder challenge because claims ruled obvious

Nidec argued that the Board improperly applied the joinder and time bar statutes. The Court held that it need not resolve this dispute because it affirmed the Board’s conclusion that all of the challenged claims are unpatentable as obvious. There was no dispute that the first petition was timely filed, and the joinder issues on appeal related only to the Board’s ruling on anticipation, which ultimately did not affect the outcome of the case… The Federal Circuit does not decide issues which have no effect on the outcome of the case. Thus, Board’s ruling that a party may add new issues to an IPR by joining two IPR proceedings was undisturbed and was endorsed in concurring opinion by two Federal Circuit judges.

Robert Schaffer & Joseph Robinson

September 4, 2017

Post Grant Challenges: Strategic and Procedural Considerations

There are several varieties of a stay. With post grant proceedings we’re talking mostly about discretionary stay. Every district court has inherent right to do this. Judges are generally favorable to granting stays with more being granted than not. “All a judge has to do is get burned once by not granting a stay, going to trial to the end, and then having claims invalidated by the Board and then having to have an appeal,” says John J. Marshall, law professor at Villanova University School of Law, previously Of Counsel at Drinker Biddle. The initial stay before a petition is granted is short. Then after the petition is granted, the district court judges are more likely to grant a stay, because IPR will simplify issues that might be important to the district court judge. That quick timeline is one of the factors that helps you get a stay for concurrent litigation and getting ammunition for use in district court claim construction. In fact, you may find that these factors are so persuasive that if a defendant in district court case files a petition for IPR, and you, as another defendant, can’t join because you are past the one month joinder cutoff, you still may be asked to stay your case until other defendant’s IPR concludes. As of October 2013, contested stay motions pending IPR petitions have a 68.5 percent grant rate and those pending CBM petitions have an 83 percent grant rate, according to a Finnegan infographic based on the published PTO AIA statistics. Those are really good rates. It’s something to consider even in districts like Delaware or East Texas.

Dolly Krishnaswamy

December 11, 2013