In This Issue:
- Main Article:
.. Inter Partes Review and the ITC: The Benefits and Risks of Filing IPR on Patents Asserted in an ITC Investigation
- Noted With Interest:
.. Securities Act Claims Limitations Clarified
- Practice Area Notes:
.. Trademark/Copyright Litigation Update
.. Energy Litigation Update
.. White Collar Litigation Update
- Victories:
.. U.S. Supreme Court Victory in Important Jury Deliberations Case
.. Quinn Emanuel Obtains String of Favorable Rulings in Nationwide Class Action Leading to Modest Settlement of Few Remaining Individual Claims
.. Arbitration Win for Japanese Textile Machinery Manufacturer
.. New York Appellate Court Victory Holding That Entergy’s Indian Point Energy Center Is Exempt from Review Under New York’s Coastal Management Program
- Excerpt from Inter Partes Review and the ITC: The Benefits and Risks of Filing IPR on Patents Asserted in an ITC Investigation:
Since the advent of the America Invents Act (“AIA”) in 2012, parties accused of patent infringement in district court cases have taken advantage of the newly established Inter Partes Review (“IPR”) procedure for challenging the validity of patents. IPRs allow an accused infringer in a pending litigation to separately challenge the validity of a patent to the Patent Trial and Appeal Board (“PTAB”), a division of the United States Patent and Trademark Office (“PTO”). IPRs are an appealing alternative, in part because the standard for invalidating a patent in an IPR—preponderance of the evidence—is lower than the clear and convincing standard applied in district court actions. 35 U.S.C. § 316(e). Moreover, district court judges are often willing to stay the district court action until the IPR is complete. Indeed, recent reports indicate that district courts are granting or granting-in-part stays of cases pending the completion of an IPR at a rate of over 72%. See El-Gamel, Samuel, Siddoway, The New Battlefield: One Year of Inter Partes Review Under the America Invents Act, 42-1 AIPLA QUARTERLY JOURNAL, 39, 55 (2014) (“The New Battlefield”).
But while the benefits of filing an IPR in a district court litigation are clear, in the ITC the benefits are less apparent. Operating under a mandate that ITC investigations conclude “at the earliest practicable time” after an investigation is filed, patent litigation in the ITC typically runs less than two years. And the ITC has never stayed a case pending an IPR. Thus, an ITC case will likely conclude before an IPR is resolved.
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