IPR and Stays of Co-Pending Litigation

By Lana Gladstein
What are the odds of getting a stay of co-pending litigation after filing an inter partes review (“IPR”) involving all or some of the same patents?  The answer is not a simple one.  While there has been some data suggesting that, purely statistically, the odds are in favor of getting a stay (e.g., http://www.aiablog.com/post-grant-proceedings/will-an-ipr-result-in-a-stay-of-co-pending-litigation/), ultimately the grant of a stay is highly fact-dependent and discretionary with the court handling the litigation.  A recent decision out of the District of Delaware, Davol, Inc., v. Atrium Medical Corporation, Civ. Action No. 12-958-GMS (D.Del., June 17, 2013), provides valuable guidance in gauging whether a litigation stay in view of an IPR is likely. Continue reading “IPR and Stays of Co-Pending Litigation”

Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

By Reza Mollaaghababa
In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to other grounds for which the review was instituted. 37 C.F.R. 42.108(b). The PTAB has reasoned that its denial for review of redundant invalidity grounds comports with the policy that the rules for conducting IPR proceedings be “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.  42.1(b). Continue reading “Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant”

To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response

By Tom Engellenner
Once a petition for inter partes review is filed, the patent owner has 3 months under the PTO rules (Rule 42-107) to file an optional preliminary response –  before the PTAB decides whether or not to institute proceedings.  Considering that the petitioner has typically spent many months preparing the petition, including preparing detailed claim charts and expert declarant testimony, the patent owner is usually at a disadvantage in mounting a rapid rebuttal. Continue reading “To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response”