July 6, 2018Newsletter

This Week at the Board - July 6, 2018

District Court Grants Stay Despite Finding That Issues Will Not Be Simplified After SAS Holding

In Huawei Technologies Co., Ltd. Et al v. Samsung Electronics Co., Ltd. et al, the defendants filed petitions for IPR.  The Board instituted IPR of some, but not all, of the claims.  Subsequent to the institution decision the Supreme Court in SAS held that the Board may not institute on only a partial set of the claims that are challenged.  In light of the SAS decision, the PTAB issued orders to institute review of all of the challenged claims.  The defendant asserted that a further stay was thus warranted.  In reviewing the factors for determining a stay, the District Court found that the defendant failed to explain how a further stay would simplify the issues of the case.  For example, the District Court noted that the Board had previously found that the defendant had failed to demonstrate a reasonable likelihood that the claims now being reviewed by the Board after SAS were unpatentable based on the challenged grounds.  Accordingly, it was not clear whether such further review would in any way simplify the issues at the District Court.  The defendant argued that regardless of the patentability outcome at the PTAB, the PTAB would at least help to simplify litigation issues by making findings on claim interpretation, teachings of the prior art, and motivation to combine.  The District Court, however, noted that the parties failed to ignore “the reality of this case,” namely that the District Court judge would not likely benefit from the PTAB’s final findings because the case would continue on without the claims to now be addressed by the PTAB after SAS.  However, the District Court ultimately granted the stay, finding that the case was still in early stages, and that there would be only minimal prejudice to the plaintiff if a stay were granted.            

A link to the decision is found here.


Board Decides Not To Exercise 325(d) Discretion Despite References Having Already Been Considered By Examiner

In IPR 2018-00297, the patent owner asked the Board to exercise its discretion under 35 U.S.C. §3259(d) and to deny institution, because the references (or equivalents thereof) being relied upon by the petitioner had already been before the Examiner.  The Board, however, noted that the patent owner did not assert, nor was the Board aware of any instance where, the Office substantively considered the exact anticipatory and obviousness grounds that were raised by the petitioner.  Additionally, the Board noted that each of the grounds presented by the petitioner also relied on testimony evidence that had not yet been before the Office.  Accordingly, the Board declined to exercise its discretion under 35 U.S.C. §3259(d).

A link to the decision is found here.

back to top