PTAB Institutes IPR Despite Delayed Sotera Stipulation

February 16, 2024

Reading Time : 2 min

The Patent Trial and Appeal Board granted institution of inter partes review after petitioner submitted a Sotera stipulation to patent owner via email, several days after patent owner’s preliminary response. The board rejected patent owner’s argument that the Sotera stipulation was too late, holding that there is no specific time limit for when such stipulation must be submitted before a decision on institution is made.

Petitioner filed an IPR petition alleging that certain claims covering methods for displaying social networking and navigation information would have been obvious. In its preliminary response, patent owner argued that the board should exercise its discretion to deny institution because of its parallel infringement action involving the same parties and invalidity challenges. A few days later, petitioner emailed patent owner stating that, pursuant to Sotera, petitioner would not pursue “any ground that [it] raised or reasonably could have raised” during the IPR, if instituted. The parties requested, and the board allowed, a pre-institution reply and sur-reply to address, among other issues, discretionary denial.

Petitioner noted that under the board’s interim procedure, the board will not discretionarily deny institution in view of such a stipulation. Petitioner further explained that validity is not at issue in its action for declaratory judgment of noninfringement filed in a different district. In response, patent owner asked the board to discredit petitioner’s “eleventh hour” stipulation and criticized petitioner for filing the noninfringement action, multiplying proceedings “where validity will certainly be an issue.”

Agreeing with petitioner, the board first noted the absence of any precedent establishing a deadline for providing a Sotera stipulation, so long as it is provided far enough in advance that the board can take it into consideration. Patent owner had identified no prejudice that it suffered based on the timing of the stipulation here. The board also rejected patent owner’s argument that petitioner’s declaratory judgement action, on its own, was sufficient to support discretionary denial. Indeed, according to the board, patent owner’s Fintiv analysis was based entirely on its parallel infringement action.

Practice Tip: Some petitioners may wish to delay filing a Sotera stipulation until after considering a patent owner’s preliminary response. If so, petitioners should recognize that they must still provide such a stipulation early enough for the board to consider it prior to deciding whether to institute review. And patent owners who wish to rely on multiple parallel proceedings to support denial of institution should ensure that they address each such proceeding in their Fintiv analysis.

BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper No. 12 (PTAB Dec. 8, 2023)

 

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.