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Director Vacates Decision to Institute: Investment in Parallel Proceeding Outweighed Petitioner’s Sotera Stipulation

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more

Federal Circuit: PTAB Decision of Invalidity Cannot Estop District Court Litigation on Different Claims from the Same Patent, Even...

The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...more

Plaintiff’s Declaratory Action Not Anticipatory Litigation Due to Patentee’s Delayed Response to Licensing Request

The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more

District Court: Common Interest May Protect Communications with Third Parties from Discovery, but Not Always

The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

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