Second Post

What if you lose an Inter Partes Review? 

A Wisconsin federal court in Douglas Dynamics v. Meyer Prods ruled that a defendent cannot (estopped) challenge validity of a patent or claim on any ground they raised or reasonably could have raised during the prior IPR.  For Obviousness and Anticipation that may have been raised, one cannot assert a new IPR based on "prior art that could have been found by a skilled searcher’s diligent search”.   Thus, any priot art that a defendent might hold in reserve from the IPR for a court proceeding is likely to be estopped from being introduced in court.   Of course, an appeal of the PTAB decision regarding the IPR would be another chance to have the same prior art reviewed. 

Only grounds not asserted in the IPR petition and not based on art that could have been found by dilligent search can be subsequently asserted in court or a subsequent IPR proceeding.   Thus, if you only raised invalididity based on prior art grounds previously, now may be the time to raise the invalidity based on improper patent subject matter grounds.   

First Post

Supreme Court rules in TC Hearland v Kraft Foods that it is the federal courts in the Company's State of Incorporation where it is proper to file patent infringement lawsuits.  With many corporations being incorporated in Deleware, expect more patent infringement lawsuits to be brought in the federal courts there.  What if you are a defendant in the Eastern District of Texas?  File a motion for change of venue from Texas to the state in which your comany is incorporated.  

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