Wednesday, March 9, 2016

Pending Appeal of IPR Involving Similar Technology Renders Decision on § 101 Challenge Premature

The court denied without prejudice defendant's motion to dismiss on the ground the asserted patent claimed unpatentable subject matter because the motion was premature. "The parties do not appear to agree on how certain key terms contained in the Patents In Issue should be construed, and thus the Court cannot address at this juncture whether 'every possible plausible construction of each of the . . . claims asserted . . . render the patent ineligible'. . . . Furthermore, a dispute concerning the area of technology addressed in the Patents In Issue is not conducive to a resolution on a motion to dismiss at the initial stages of litigation. . . . The [PTAB], in addressing similar technology in a petition for inter partes review of certain patents, engaged in extensive claim construction and analysis before addressing whether the patent claims at issue were not patentable. That PTAB decision is now the subject of an appeal before the United States Court of Appeals for the Federal Circuit. This Court would be well-advised to follow the PTAB’s expert lead by refraining from addressing this dispute without the benefit of further analysis."

Synchronoss Technologies, Inc. v. Hyperlync Technologies, Inc., 3-15-cv-02845 (NJD March 7, 2016, Order) (Cooper, J.)

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