IP Newsflash

The Central District of California recently granted a defendant’s motion for an exceptional case finding and attorney’s fees under 35 U.S.C. § 285. The court held that it could award fees for conduct taking place not only in the district court, but also in a related inter partes review before the Patent Trial and Appeal Board and subsequent appeal before the Federal Circuit. The court found that the plaintiff’s improper and unreasonable conduct in all three venues justified an award of fees.

The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for infringement. The court further held that the patent owner was precluded from relying on the petitioner’s waiver of service because it did not raise that argument to the Patent Trial and Appeal Board.

A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b).

The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the petitioner, ON Semiconductor, and Fairchild Semiconductor Corporation, even though the ON-Fairchild merger became final after the IPR was filed.

The Patent Trial and Appeal Board has denied a Petitioner’s request for institution of inter partes review (IPR) of claims that were added during ex parte reexamination because it found the IPR petitions were time-barred under § 315(b).

The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a declaratory judgment of invalidity in district court. The IPR had been joined by Dr. Reddy’s Laboratory Inc. (DRL), but because DRL was also time-barred pursuant to § 315(b), the Board terminated the proceeding.

In Samsung Electronics Co. v. Immersion Corp., the Patent Trial and Appeal Board (the “Board”) recently determined that the statutory “grace period” for deadlines falling on weekends and holidays extends to the one-year time bar for filing inter partes review (IPR) petitions under 35 U.S.C. § 315(b). Accordingly, even though Samsung filed its petition two days after the § 315(b) deadline, the Board nonetheless instituted review because the deadline fell on a Saturday, and Samsung filed the Petition on the following Monday.