Patent Owner Cancels All Claims in IPR in Apparent Bid to Avoid Second IPR of Additional Claims

Authored by A. Antony Pfeffer

On February 27, 2012, ContentGuard Holdings filed suit against ZTE Corporation in the Eastern District of Virginia, asserting U.S. Patent 7,225,160. On February 11, 2013, less than 12 months after that suit was filed, defendant ZTE Corporation petitioned for insitution of an Inter Partes Review (IPR 2013-134) of all claims of that patent. On June 19, 2013 the PTAB instituted an IPR only with respect to 12-22 and 30-38 of that patent.

On July 19, 2013, ZTE filed a second IPR addressing the claims of the ’160 patent for which no IPR had been instituted. [2013-454 Petition]. At this time, ZTE also filed a motion for joinder of these two IPR’s in an attempt to negate the 12 month bar of a petition for IPR after service of a complaint. [2013-454 Joinder]. The patent owner (ContentGuard Holdings) in an apparent bid to avoid this second IPR, requested, and the PTAB has now granted, adverse judgment on all the claims in IPR 2013-134. [2013-134 Judgment]. ZTE had requested that the PTAB not rule on the motion for entry of adverse judgment until after the motion to joinder had been ruled on. The PTAB rejected this request and has cancelled all the claims in IPR 2013-134. Accordingly, the IPR 2013-454 moved to be joined with has concluded. Exactly how the PTAB handles this situation with respect to IPR 2013-454 remains to be seen, but should prove interesting to patent owner’s looking for strategies to avoid follow-on IPR’s.