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PTAB Ruling Sets the Stage for Examination of Interplay between IPRs and District Court Litigation


PALO ALTO, March 4, 2015 - A ruling this week by the U.S. Patent Office’s Patent Trial and Appeals Board (PTAB) has set the stage for clarifying the relationship between inter partes review (IPR) proceedings and district court patent litigation.

Ultratec, Inc. brought a patent infringement suit in the Western District of Wisconsin against Baker Botts client CaptionCall LLC on eight Ultratec patents. Both litigants are providers of communications and telephone equipment to the hearing impaired. After Ultratec filed suit in Wisconsin, CaptionCall LLC pursued IPRs of those eight patents before the PTAB. The PTAB instituted IPRs on all but one of the contested claims in the eight patents. While the IPRs were pending, the parties tried the district court case to a jury, which found that the eight patents were not invalid and were infringed, and the court entered judgment on the verdict on November 4, 2014. Post-judgment motions are currently pending before the district court.

On November 19, 2014, the parties argued the IPRs before the PTAB. On March 3, 2015, the PTAB ruled in CaptionCall LLC’s favor on all claims before the PTAB, finding that the claims were not patentable.

“We are obviously pleased with the PTAB result,” said B.C. Boren, a Senior Partner with Baker Botts and lead lawyer for CaptionCall LLC. “The decisions confirm our client’s position throughout the course of this dispute.”

It is anticipated that both the district court judgment and the PTAB decisions will be contested in both forums and will be appealed to the U.S. Court of Appeals for the Federal Circuit.

“The PTAB process is still relatively new,” said Brian Oaks, the Baker Botts partner who successfully argued all eight IPRs before the PTAB.

“The interplay between IPRs and related district court patent litigation is a very hot issue right now. The scope and timing of these decisions are unique, and I expect that we will be addressing a lot of the questions practitioners are asking in this new environment over the next several months.” “One thing is certain,” said Boren. “A unified approach to district court litigation and inter partes review proceedings will be critical going forward.”

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