Friday, December 18, 2020
The Patent Trial and Attraction Board made two extra precedential selections the place the Board instituted critiques of patents concerned in District Courtroom litigation. Sotera Wi-fi, Inc. v. Masimo Company, IPR2020-01019, Paper 12 (PTAB December 1, 2020)(precedential, designated December 17, 2020); and Snap, Inc. v. SRK Expertise LLC, IPR2020-00820, Paper 15 (PTAB October 21, 2020)(precedential, designated December 17, 2020). These Board selections present additional steering on the appliance of the Apple v. Fintiv components the place the Board examines the standing of a co-pending District Courtroom litigation regarding the challenged patent in deciding whether or not to train its discretion to disclaim establishment. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020).
In Sotera Wi-fi, Inc. v. Masimo Company, the Board instituted a evaluate noting that Sotera filed a stipulation that it “won’t pursue in [the District Court] the precise grounds [asserted in the inter partes review], or on another floor … that was raised or might have been fairly raised in an IPR (i.e., any floor that may very well be raised underneath §§ 102 or 103 on the premise of prior artwork patent or printed publications).” Sotera Wi-fi, Inc. v. Masimo Company, IPR2020-01019, Paper 12 at 13-14.
The Board adopted Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, noting that the “stipulation right here mitigates any issues of duplicative efforts between the District Courtroom and the Board, in addition to issues of probably conflicting selections … [and] such a broad stipulation higher addresses issues of duplicative efforts and doubtlessly conflicting selections in a way more substantial approach … ensur[ing] that an inter partes evaluate is a ‘true various’ to the District Courtroom continuing.” Sotera Wi-fi, Inc. v. Masimo Company, IPR2020-01019, Paper 12 at 14 citing Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative).
In Snap, Inc. v. SRK Expertise LLC, the Board instituted a evaluate noting that “the District Courtroom’s keep of the litigation pending denial of establishment or a last written determination allays issues about inefficiency and duplication of efforts … [and] weigh[s] strongly towards exercising discretion to disclaim establishment underneath NHK.” Snap, Inc. v. SRK Expertise LLC, IPR2020-00820, Paper 15 at 9.
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