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On March 3, 2021, By way of Transportation, Inc.(Plaintiff/Patent Proprietor) filed an infringement go well with in opposition to
RideCo Inc. (Defendant/Petitioner) within the US District Court docket for the Western District of Texas for infringement of US Patent No. 9,562,785 (the ‘785 patent), US Patent No. 9,816,824 (the ‘824 patent), US Patent No. 10,197,411 (the ‘411 patent), and US Patent No. 10,677,604 (the ‘604 patent). See By way of Transportation, Inc. v. RideCo Inc.Case No. 6:21-cv-00457-ADA (WD Tex.) The asserted patents share a specification and every relate to ridesharing automobile routing expertise.
RideCo filed petitions difficult the ‘824 and ‘411 patents. RideCo didn’t file IPR petitions in opposition to the ‘785 or ‘604 patents and the bar date has since handed.
Of their Preliminary Response to the ‘411 IPR Petition,
By way of Transportation argued for the denial of establishment, presenting a fintiv evaluation that concluded all six components favored dismissal. Moreover, the Patent Proprietor challenged the Petitioner’s provide of a single stipulation that had agreed to not pursue any grounds raised or that fairly might have been raised in opposition to the ‘411 patent in district courtroom. The Patent Proprietor asserted that granting establishment on such grounds would “not obviate considerations over inefficiency and the potential for inconsistent judgments as a result of distinctive procedural posture of this case.“Particularly, ia Transportation argued that regardless of ostensibly disclaiming their proper to argue the identical points with respect to the ‘411 patent following establishment, the Petitioner would stay free to pursue overlapping invalidity arguments within the co-pending district courtroom litigation as to the three different closely-related patents ( ie, the ‘785 patent, the ‘604 patent, and the ‘824 patent). By way of Transportation famous that each prior artwork reference that the Petitioner asserts in opposition to the ‘411 patent within the district courtroom litigation can also be asserted in opposition to the ‘604 and ‘785 patents. By way of Transportationconcluded that the arguments put forth by RideCo throughout an IPR of the ‘411 patent will inevitably overlap with the grounds asserted in opposition to the ‘785, ‘604, and ‘824 patents in district courtroom, thus creating the potential for duplicative work and inconsistent judgments.
On September 1, 2022, the PTAB dominated in favor of the establishment of the IPR, taking the place that the single stipulation needn’t essentially lengthen to unchallenged patents to ensure that the Director’s Interim fintiv Process to use. The panel might discover no authority affirmatively granting them the flexibility to reject the single stipulation on the premise of associated patents challenged in associated litigation. Quite, the Director’s Interim fintiv Process compels the PTAB to say no exercising their discretion to disclaim establishment below § 314(a) as soon as a Petitioner information a singlestipulation.
Takeaway: Because the IPR petition course of continues to solidify in a post-fintiv panorama, instances comparable to
By way of Transportation, Inc. v. RideCo Inc. take a look at the boundaries of trial courtroom stipulations and inventive discretionary denial arguments.
Simon Maxell, within the Washington Workplace, assisted with the preparation of this Weblog.
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