United States: If IPRs aren’t right for you, consider an ex parte review
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Nowadays we usually think of between the parties examination as the first option to challenge patentability. Well Named. But don’t forget ex part review (“XPR”). Even in the age of IPRs, patent contestants still successfully use XPR to attack patents of questionable validity and even leverage the results of XPR to achieve victories in district courts.
A case in point is Golden Eye Media USA, Inc. v Trolley Bags UK Ltd., 3: 18-cv-02109-BEN-LL (SD Cal.). the golden eye The case arose in 2018, after the defendants filed takedown complaints with Amazon against the plaintiffs, seeking to ban the sale of the plaintiffs’ reusable bags due to an alleged violation of U.S. Design Patent No. D779,828 (“828 patent”). Tired of the business disruption, the plaintiffs requested a declaratory judgment of non-infringement and alleged commercial liability claims for Amazon’s attempted takedown. In response, the defendants added their own design patent infringement claim against the plaintiffs, based on the plaintiffs’ recently issued US design patent No. D835,912 (“the 912 patent”). Here are the two design patents involved:
Then things got complicated. The defendants filed an XPR application challenging the ‘912 patent in July 2019. And the plaintiffs responded with an XPR application on the’ 828 patent in October 2020. The plaintiffs requested a stay, but the court never granted one. . In February 2021, the defendants dealt the first blow when the USPTO found the ‘912 patent unpatentable in a following prior art advisory action:
Then, in March 2021, the plaintiffs tied the score. District court invalidated ‘828 patent on summary judgment, finding it obvious in the light of the prior art (and not ornamental or functional). Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd., No.3: 18-CV-02109-BEN-LL, 2021 WL 966533, at * 8-26 (SD Cal. March 15, 2021). Here is the ‘828 patent and the primary and secondary references used by the court in its analysis of the obvious:
Things hit a tipping point for the parties in April 2021. On April 14, 2021, the USPTO issued a non-final lawsuit dismissing the ‘828 patent. Days later, the parties notified the court of the USPTO’s rulings ruling the two patents unpatentable in legal actions.
Faced with two design patents of questionable validity, the district court ordered the parties to explain why it should not issue a summary judgment of invalidity of the ‘912’ patent given (1) the 912 patent is very similar to the 828 patent, which this Court has held invalid and (2) the USPTO decision concluding the 912 patent invalid. “2021 WL 2072382, at * 2 (SD Cal. May 24, 2021). The parties agreed to a judgment of invalidity by consent of the ‘912 patent, and the court certified the judgment of invalidity on the’ 828 patent for appeal. Identifier. at 8. While the defendants appear resigned to fighting the adverse decisions on the ‘828 patent, the plaintiffs appear ready to pack their bags, waiving their right to appeal the court’s decision on the’ 912 patent and no. posting no intention to appeal USPTO advisory action.
Both golden eye the parties were successful in using XPR to neutralize the claimed design patents. It’s rare these days. Like other relics from the ’80s, XPR has largely gathered dust as attention shifted to IPRs. But patent challengers would be wise to keep XPR in mind. Unlike the IPR, the XPR can be filed at any time, has a lower standard of “substantial new patentability” for granting review and has no potential estoppel effects.
Carry: Remember XPR as an alternative to IPR. It might be old, but it still works and even has some advantages in some cases. Additionally, depending on how things go, the results of XPR can carry significant weight in parallel litigation in district courts.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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