Counsel’s Failure to Advise Court of IPR Breached “General Duty of Candor and Good Faith”

The court denied plaintiff's motion to reconsider the court's prior invalidity finding because of the PTAB's different findings during inter partes reexamination and determined that the parties' breached their duty of candor by failing to inform the court of the pending IPR for six months. "By failing to advise this Court of the existence of the IPR proceedings, [the parties] in effect had two bites at the apple regarding the validity of the disputed claims. Moreover, they deprived this Court of the opportunity to inquire of the parties and decide for itself whether to await a ruling from the PTAB on that issue. . . . However, in light of the undeveloped state of the law on this relatively new PTO review procedure, this Court's admonition of all counsel involved in this case falls short of a formal reprimand of any of the individual lawyers. That said, the issuance of this Opinion is more than sufficient to place all patent practitioners on notice that future failures to disclose to the Court any concurrent inter partes review proceedings will be met with far sharper consequences."

Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al, 2-12-cv-00548 (VAED May 2, 2014, Order) (Davis, J.)