Patent Licensee Preliminarily Enjoined From Pursuing PTAB Petitions

The court granted plaintiff's motion for a preliminary injunction requiring defendants to withdraw their petitions to the PTAB seeking to invalidate plaintiff's patents-in-suit because plaintiff established a likelihood of success on the merits of its related breach of contract claim. "Both Plaintiff and Defendants have raised the issue of validity and enforceability with this Court through their complaint and counterclaim, and validity and enforceability are the same issues that [defendant] has placed before the PTAB. But for the parties’ licensor-licensee relationship, and Defendants’ interest in reducing or eliminating the royalties provided for under the [parties' license agreement] based on the claim of invalidity, there is no indication that [defendant] would be pursuing the PTAB proceedings at all. . . . Defendants essentially ask this Court to permit their belated attempt at forum shopping. District courts are authorized to decide patent validity challenges and Defendants’ preference for one forum over the other does not justify the PTAB Petitions if they are not, in fact, permitted under the [agreement] and that provision of the [agreement] is lawful."

DODOCASE VR, Inc. f/k/a DODOcase, Inc. v. MerchSource, LLC d/b/a Sharper Image et al, 3-17-cv-07088 (CAND March 23, 2018, Order) (Laporte, MJ)