Failure to Disclose IPR in Reexam May Support Inequitable Conduct Claim

The court granted defendant's motion to amend its pleadings to include a claim for inequitable conduct based on plaintiff's failure to disclose IPR proceedings in a related patent during reexamination of the patents-in-suit. "[Defendant] has cited legal support for its argument that the failure to disclose the PTAB’s decision to grant IPR of the [related] patent could be a material omission because the patents are closely related. And, given [defendant's] allegations that the same actors were involved in all of the relevant proceedings and regarding the temporal proximity between the PTAB’s decision and further communications with the PTO in the reexaminations, sufficient facts are alleged from which the fact-finder could reasonably infer that the omission was intentional."

PPC Broadband, Inc. v. Corning Gilbert Inc., 5-11-cv-00761 (NYND May 20, 2015, Order) (Sharpe, J.)

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Institution of IPR Excluded from Evidence

The court granted plaintiff's motion in limine to preclude evidence of the institution of inter partes review. "There is no claim that any relevant final decision has been made. Any probative value in the fact that [defendant] has chosen to take advantage of other avenues and forums is substantially outweighed by the danger of misleading the jury and [a] waste of time involved in explaining to the jury what is involved in such proceedings and the natural counterclaim that that such proceedings are Defendants’ attempt to vexatiously delay and multiply proceedings and impose costs on Plaintiff."

Allure Energy, Inc. v. Nest Labs, Inc. et al, 9-13-cv-00102 (TXED May 18, 2015, Order) (Clark, J.)