Friday, February 20, 2015

PTAB’s Grant of IPR No Basis to Reconsider Court’s Preliminary Injunction

The court denied defendants' motion to reconsider an earlier order granting plaintiff's motion for a preliminary injunction based on the PTAB's subsequent grant of inter partes review. "Defendants acknowledged the precise prior art, which formed the basis of their inter partes review petitions, during the evidentiary hearing before this Court, but explicitly disclaimed reliance upon it for the purposes of opposing the preliminary injunction motion. . . . Yet we now learn that a whole host of arguments and expert declarations were submitted to the PTAB with Defendants’ six inter partes review petitions, presenting a potential 360 pages of briefing to the PTAB to suggest a cornucopia of possible references, combinations, and legal theories. Defendants, represented by eminently skilled and experienced patent counsel, made a strategic decision to assert only certain prior art evidence and no witness testimony, expert or lay, before this Court to oppose the motion for preliminary injunction. . . . [A] strategic decision to present different evidence in federal court than in an administrative court does not entitle a party to reconsideration simply because the administrative court later initiated review based on alleged facts and argument — including argument explicitly disclaimed before this Court."

Power Survey, LLC v. Premier Utility Services, LLC et al, 2-13-cv-05670 (NJD February 18, 2015, Order) (Hochberg, J.)

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