Monday, September 22, 2014

PTAB's Institution of IPR Does Not Conclusively Establish Reasonableness of Invalidity Defense

The court denied defendants' motion for summary judgment that they did not willfully infringe plaintiffs' telephone relay systems patents and rejected their argument that the PTAB's grant of inter partes review was conclusive evidence of a reasonable invalidity defense. "I agree with defendants that in light of the heightened threshold showing necessary for the grant of inter partes review, the review proceedings should be entitled to more weight in the reasonableness analysis than was given to the prior re-examination procedure. Nonetheless, I am not persuaded that the grant of review deserves conclusive weight. . . . Notwithstanding the elevated threshold for obtaining review, the preliminary and incomplete nature of a decision to institute inter partes review cautions against affording those decisions conclusive weight. . . . Although nothing in [In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)] clearly precludes the court from affording controlling weight to a grant of review by the board, I am satisfied that the more prudent course is to make a reasonableness determination after hearing a full presentation of the evidence from both sides at trial."

Ultratec, Inc. et al v. Sorenson Communications, Inc. et al, 3-13-cv-00346 (WIWD August 28, 2014, Order) (Crabb, J.)

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