[WIPSTUDY #3] Taiwan- Patent Litigation case study #3

Following up #2,
this time we're going to see litigation action with a few of important documents that you need to check with another new litigation cases focusing on;

• IPR Request
• Invalidation Search (+IDS)
• Inter Partes Review Certificate
• Inter Partes Re-exam Certificate 

                                                        < search n analysis database : WIPS Global >

3-1. Litigation Action (case 1)

This time let us start with a new case of patent infringement litigation. 

Dr. Chien-Min Sung vs Kinik Company

wipsglobal.com > US litigation search

 

• Case type : Infringement
• Court name : Delaware Dist.
• Termination by : Voluntary dismissal 
• Product : Chemical mechanical planarization (CMP) tools such as the CMP Diamond disk.
•  Patent : US 8777699 

This case filed by Dr. Chien-Min Sung claiming that the '699 patent he owned the rights in the USA was infringed by the Kinik Company. As this case was closed by voluntary dismissal, more detail on trial information is needed.    

Below is the detail information through the trial search of the patent.

         

wipsglobal.com > Trial/Appeal search

   

• Court name :  PTAB (Patent Trial Appeal Board
• PTAB case : IPR (Inter Partes Review)
• PTAB Outcome : All instituted claims invalidated/ cancelled
• Claims challenged : 1-19
• Claims instituted : 1-12 and 17-19
• Invalidated cancelled claims : 1-12 and 17-19
• PTAB status : Final written decision 

From the details PTAB information, it's learned that the defendant requested IPR and this case closed with some of instituted claims invalidated in the end. 

wipsglobal.com > Invalidation advisor

🔍WIPS Global's Invalidation Advisor is a analysis tool recognizing the date of novelty and creativity, which is an intellectual product of WIPS logic from multi-year's research and know-how. 

Prior art references searched in Invalidation Advisor tool above are found which are expected to be based on invalidation. And they're referred as the prior art references of the corresponding patent in the docket of the trial as below.

IPR docket referring the prior art references

             ⏪ Docket of the trial 

             ; Final Written Decision

  

  

⏪ says "Claims 1-12 and 17-19 of the '699 patent are held unpatentable; ..... "

⏫ Inter Partes Review Certificate

One of very important steps during searching invalidation documents is to check IDS (Information Disclosure Statement). 

As only exists in the US, IDS is the obligation of the applicant to disclosure all the information that they have referred to. Violating IDS means that the patent could be unenforceable. So it must not be overlooked. 

wipsglobal.com > Invalidation Advisor > IDS check

⏪ literature in the highlight box are the patents that might not be included as the reference in the document of the corresponding patent.

3-2. Litigation Action (case 2)

Let's take a look another case showing different kind of docket which is also a part of litigation action.

Industry Technology Research Institute vs LG Corporation

wipsglobal.com > US Litigation search

◀ Litigation information  

• Case Type : Infringement
• Court Name : New Jersey Dist.
• Termination by : Likely settlement
• Product : BD590 Blu-Ray disc player, GP08LU30 Optical media super-multi rewriter, .....
• Plaintiff : Industry Technology Research Institute
• Defendant : LG Corporation
• Patent : US 7672198 

wipsglobal.com > Trial/Appeal search

◀ Trial/Appeal information

• Trial/Appeal type : Appeal
• Application type : Re-exam
• Decision document type : Decision
• Patent : 7672198

⏪ Patent Board Decision of 

Inter Partes Re-examination

; The Examiner's decisions not to adopt the proposed rejections are affirmed.

The infringement case between ITRI and LG Corp. was closed by settlement of two parties as the case was requested Re-examination. 

wipsglobal.com > patent search > view detail

⏫ Inter Partes Re-examination Certificate

Continued .......>>