Monday, October 19, 2015

PTAB’s Denial of Institution of Inter Partes Review Does Not Render Obviousness Defense Objectively Reckless

The court granted defendant's renewed motion for judgment as a matter of law that it did not willfully infringe plaintiff's computer processing patent and rejected plaintiff's argument that the PTAB's decision denying institution of inter partes review rendered defendant's obviousness defense objectively reckless. "[Plaintiff] points to PTAB’s finding that [defendant] 'has not shown, under 35 U.S.C. § 314(a), that there is a reasonable likelihood that it will prevail with respect to at least one of the challenged claims.' According to [plaintiff], this finding precludes [defendant] from now arguing that its obviousness defense was objectively reasonable because the PTAB 'standard is lower than the ‘clear and convincing evidence’ required to prove invalidity in District Court.' The court rejects this argument. All PTAB found was that [defendant] was not likely to prevail on its defense by proving obviousness by clear and convincing evidence. PTAB did not consider whether this defense was objectively reasonable or raised a substantial question. As such, the PTAB finding -- like the jury’s finding rejecting the invalidity challenge -- does not settle the issue of whether [defendant's] defense was objectively reckless."

Wisconsin Alumni Research Foundation v. Apple Inc., 3-14-cv-00062 (WIWD October 15, 2015, Order) (Conley, J.)

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