We use cookies to give you the best online experience. By using our website you agree to our use of cookies in accordance with our cookie policy. Learn more here.Close Me
Order Granting Motion to Stay, Security People, Inc.
v. Ojmar US, LLC, 14-cv-04968 (Judge Haywood Gilliam
Jr.)
A recent opinion analyzes what relief, if any, a patentee is
entitled to when its District Court case is stayed pending an
inter partes review (IPR) before the Patent Office.
In Security People v. Ojmar, the plaintiff-patentee
Security People opposed a motion to stay on several routine
grounds. In addition, Security People made unorthodox
arguments, including that 1) the AIA is unconstitutional, 2) Ojmar
should post a bond due to Security People's alleged loss of
sales due to patent infringement, or 3) an injunction should issue
prohibiting the sale of the accused products during the pendency of
the stay. Judge Gilliam disagreed with Security People's
preliminary injunction-like requests and simply stayed the
litigation.
With respect to the motion to stay arguments, Judge Gilliam
found that the case had "just begun" and that Ojmar
satisfied the usual requirements to obtain a stay pending IPR
proceedings, even though the PTAB had not yet granted Ojmar's
IPR petition. The first case management conference occurred
on April 1, and the claim construction briefing process was
scheduled to begin mid-June. Given that the IPR petition
sought cancellation of all the asserted claims, Judge Gilliam found
that there was a substantial chance that the IPR, if initiated,
would simplify the litigation. He also concluded that Ojmar
had not unduly delayed in bringing the IPR petition given that it
filed the petition within six months of the filing of the
suit. Finally, Judge Gilliam found that Security People could
not claim unfair surprise because Ojmar provided notice in March
that it was considering filing an IPR petition.
In addition to opposing the stay motion, Security People raised
two additional arguments. First, it argued that the AIA's
IPR process was unconstitutional. Judge Gilliam found that an
opposition to a motion to stay process was the incorrect procedural
vehicle through which to raise a constitutional challenge, and that
Security People could attempt to raise a constitutional challenge
in a separate action. Second, Security People argued that
since Ojmar was a competitor, Ojmar should have to post a bond as
security for lost sales during the IPR process or otherwise be
enjoined from selling products. Security People supported
this argument with a fact declaration from an employee that alleged
that Security People had lost sales to Ojmar. Judge Gilliam
found, however, that Security People had not introduced evidence
sufficient to support the requirement of the bond or an
injunction. Security People also argued that Ojmar was a
"shell company" that would shift its funds to avoid a
judgment, but Judge Gilliam found this argument to be
unsubstantiated as well.
Judge Gilliam did not rule that a patentee facing a stay pending
IPR could never obtain a bond or
preliminary injunction. But a patentee seeking a bond or
injunction must present a compelling showing—as is the case
for any patent preliminary injunction—why the relief it seeks
is necessary.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
23 Jan 2019, Speaking Engagement, New York, United States
New York partner Rich Martinelli will be a featured panelist during the Society of Physician Engineers' event, "Intellectual Property Law & Tax Credits for Life Science Companies."
The panel will cover topics on different types of IP protection, advantages of filing provisional applications, how to build an IP portfolio, and how to comply with GDPR and HIPPA when developing machine learning and AI algorithms.
Focusing on the development of 5G, the "Joint NGMN and ITU Conference on Licensing Practices in 5G Industry Segments" will facilitate sharing and discussing present-day licensing practices and related issues in different industry segments.
This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law.
In March 2018, the Ninth Circuit Court of Appeals rendered a landmark decision in the copyright infringement litigation surrounding Pharrell Williams and Robin Thicke's song, "Blurred Lines."
Change driven by development of intellectual property ("I.P.") is now a constant. Whether the I.P. user is a tax adviser accessing a digital library, an auto mechanic interfacing with an engine...
Chen, J. Affirming the PTAB's decision that the patent applicant's claims were correctly rejected under 35 U.S.C. § 101 for claiming patent-ineligible subject matter.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Trending Video: Impact Of Changes At The PTAB On Patent Owners (Video)
