In re Papst Licensing GMBH & Co. KG Patent Litig.

320 F. Supp. 3d 132
CourtCourt of Appeals for the D.C. Circuit
DecidedAugust 15, 2018
DocketMisc. Action No. 07-493 (RDM); MDL No. 1880
StatusPublished
Cited by5 cases

This text of 320 F. Supp. 3d 132 (In re Papst Licensing GMBH & Co. KG Patent Litig.) is published on Counsel Stack Legal Research, covering Court of Appeals for the D.C. Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Papst Licensing GMBH & Co. KG Patent Litig., 320 F. Supp. 3d 132 (D.C. Cir. 2018).

Opinion

RANDOLPH D. MOSS, United States District Judge

This matter is before the Court on the Camera Manufacturers' request for a stay of proceedings. Dkt. 686 at 2. The U.S. Patent and Trademark Office ("PTO") has found unpatentable all asserted claims of three of the four patents-in-suit-the '399, '746, and '144 patents (hereinafter "the IPR patents").1 Those decisions are now on appeal to the Court of Appeals for the Federal Circuit. Although the PTO also instituted inter partes review ("IPR") proceedings regarding the asserted claims of the fourth patent-in-suit-the '449 patent -it terminated those proceedings because Papst Licensing GMBH & Co. ("Papst") settled with each of the IPR petitioners.2 In light of the PTO's decisions concerning the '399, '746, and '144 patents, and the substantial overlap between the claims that the PTO found unpatentable in those patents and the asserted claims of the '449 patent, the Camera Manufacturers contend that a stay of proceedings until completion of the Federal Circuit appeals will "conserve judicial resources and lead to the most efficient conclusion of this matter." Dkt. 686 at 2. Papst does not oppose staying this action with respect to the IPR patents. Dkt. 684 at 1. It does, however, oppose a stay of proceedings concerning *134the '449 patent. Dkt. 685 at 5. In its view, "there is little to no commonality between the issues on appeal concerning the IPR patents and the specific claim construction issues before the Court regarding the '449 patent," and a stay will substantially prejudice Papst, which has waited over a decade for a final resolution of its infringement claims. Dkt. 685 at 5.

For the reasons explained below, the Court will GRANT the Camera Manufacturers' request for a stay, Dkt. 686, and will STAY these proceedings pending the completion of the Federal Circuit appeals of the IPR decisions or until further order of the Court.

I. BACKGROUND

A. Inter Partes Review

Congress created the inter partes review procedure as a "timely, cost-effective alternative to litigation" and to establish "a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs." Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 48,680 (Aug. 14, 2012) (codified at 37 C.F.R. § 42.100 et seq. ). Inter partes review allows a party other than the patentee to bring an adversarial proceeding before the PTO seeking "to cancel as unpatentable 1 or more claims of a patent ... on a ground that could be raised under" 35 U.S.C. § 102 (novelty) or § 103 (nonobviousness) "on the basis of prior art consisting of patents or printed publications." 35 U.S.C. § 311. The PTO may institute review proceedings if there is a "reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a). If the PTO grants review, a final determination must generally be issued "not later than 1 year" after the petition for review is granted. 35 U.S.C. § 316(a)(11). The patentability determination is made by a panel of the Patent Trial and Appeal Board ("PTAB") consisting of Administrative Patent Judges, 35 U.S.C. § 318, who must have relevant "legal knowledge and scientific ability," 35 U.S.C. § 6(a). PTAB decisions are appealable directly to the Federal Circuit. 35 U.S.C. § 141(c).

If the PTAB finds that a claim is unpatentable, and the patent holder fails to file a timely appeal or the appeal is unsuccessful, then the PTO is required to issue a certificate cancelling the claim, and the patent holder may no longer assert that claim in litigation or otherwise. 35 U.S.C. § 318(b). But, because the PTO has adopted its own rules and standards for claim construction, see Cuozzo Speed Techs., LLC v. Lee , --- U.S. ----, 136 S.Ct. 2131, 2146, 195 L.Ed.2d 423 (2016), a claim construction adopted by the PTO in an IPR proceeding is not binding on the federal district courts, see SkyHawke Techs., LLC v. Deca Int'l Corp. , 828 F.3d 1373, 1376 (Fed. Cir. 2016).

B. Factual Background

Papst initiated this multidistrict litigation over a decade ago. Its current iteration, however, dates back to only 2015. After years of litigation, this Court granted summary judgment in favor of the "First Wave Camera Manufacturers" and entered final judgment with respect to those defendants pursuant to Federal Rule of Civil Procedure 54(b). Dkt. 560. On appeal, the Federal Circuit disagreed with the Court's claims construction and, accordingly, set aside the judgment in favor of the Camera Manufacturers. In re Papst Licensing Dig. Camera Patent Litig. ,

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Bluebook (online)
320 F. Supp. 3d 132, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-papst-licensing-gmbh-co-kg-patent-litig-cadc-2018.