IP Newsflash - May 2014

by Akin Gump Strauss Hauer & Feld LLP

District Court Cases
Statistics on Inter Partes Review Proceedings Found Persuasive by Court in Granting Stay

A district court in California has granted a defendant’s motion to stay a patent infringement litigation pending institution of an inter partes review (IPR). In its analysis of the motion the court considered three factors: 1) whether the stay would simplify the case; 2) whether discovery was complete and 3) whether a stay would unduly prejudice the plaintiff. As to the first factor, in opposing the motion, the plaintiff argued that entry of a stay would be premature because the Patent Office had not yet decided whether or not to institute the IPR. The court disagreed, and noted that based on evidence submitted by the defendant, for all but three of the 40 final written decisions issued in IPR proceedings, all claims were cancelled. According to the court, given the high rate at which the Patent Office grants petitions, a petition with no obvious deficiencies is likely to simplify the issues of the case. As to the factor related to the stage of discovery, the court explained that even though Markman briefing had been submitted, no order had yet been issued and that expert discovery was ongoing. And as to the prejudice factor, the court found that, as a non-practicing entity, the plaintiff could not demonstrate irreparable harm. The court, therefore, stayed the case pending an institution decision by the Patent Office and stated that the stay would be extended through the date of issuance of a final written decision if the petition is granted.
Author: Rubén H. Muñoz

Brixham Solutions Ltd. v. Juniper Networks, Inc., 13-cv-00616 (N.D. Cal. April 28, 2014) (Spero)

Patent Trial And Appeal Board

Impermissible Enlargement of Claim Scope Undermines Motion to Amend

A PTAB panel has found that the sole claim of a design patent covering a drinking cup is invalid and the patent owner (“owner”) has not met its burden of proof on a motion to amend. During an inter partes review, an owner may amend the challenged claim(s) if the following requirements are met. First, the proposed amendment must be responsive to a ground of unpatentability at issue in trial. Second, the amendment may not enlarge the scope of the claim(s) or introduce new subject matter. In its final written decision, the Board determined that a claim covering the ornamental design for a drinking cup was obvious in view of the prior art and, in so finding, denied the owner’s motion to amend the claim. In its analysis, the Board noted that the owner’s motion to amend met the first requirement of being responsive to a ground of unpatentability because it “seeks to amend the claim such that it would be supported by the disclosure of [an earlier application], in order to disqualify [the prior art].” However, the Board ultimately denied the owner’s motion to amend because it impermissibly enlarged the scope of the challenged claim. Specifically, the Board compared the original and amended drawings and concluded that “the amended claim is broader than the issued claim…with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to [other features].” Since the proposed amended claim was broader in some aspects compared to the original claim, the owner’s motion to amend was denied.
Author: Matthew G. Hartman

Munchkin, Inc. v. Luv N’ Care, Ltd., IPR2013-00072 (PTAB April 21, 2014) [Bisk, Wood, Fitzpatrick (opinion)]


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Akin Gump Strauss Hauer & Feld LLP | Attorney Advertising

Written by:

Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.