Single-Patent Sotera Stipulation Sufficient – Patent – United States – Mondaq

On March 3, 2021, Via Transportation, Inc. (Plaintiff/Patent Owner) filed an infringement suit against RideCo Inc. (Defendant/Petitioner) in the U.S. District Court for the Western District of Texas for infringement of U.S. Patent No. 9,562,785 (the '785 patent), U.S. Patent No. 9,816,824 (the '824 patent), U.S. Patent No. 10,197,411 (the '411 patent), and U.S. Patent No. 10,677,604 (the '604 patent). See Via Transportation, Inc. v. RideCo Inc., Case No. 6:21-cv-00457-ADA (W.D. Tex.) The asserted patents share a specification and each relate to ridesharing vehicle routing technology.
RideCo filed petitions challenging the '824 and '411 patents. RideCo did not file IPR petitions against the '785 or '604 patents and the bar date has since passed.
In their Preliminary Response to the '411 IPR Petition, Via Transportation argued for the denial of institution, presenting a Fintiv analysis that concluded all six factors favored dismissal. Furthermore, the Patent Owner challenged the Petitioner's offer of a Sotera stipulation that had agreed to not pursue any grounds raised or that reasonably could have been raised against the '411 patent in district court. The Patent Owner asserted that granting institution on such grounds would “not obviate concerns over inefficiency and the possibility of inconsistent judgments due to the unique procedural posture of this case.” Specifically, ia Transportation argued that despite ostensibly disclaiming their right to argue the same issues with respect to the '411 patent following institution, the Petitioner would remain free to pursue overlapping invalidity arguments in the co-pending district court litigation as to the three other closely-related patents (i.e., the '785 patent, the '604 patent, and the '824 patent). Via Transportation noted that every prior art reference that the Petitioner asserts against the '411 patent in the district court litigation is also asserted against the '604 and '785 patents. Via Transportation concluded that the arguments put forth by RideCo during an IPR of the '411 patent will inevitably overlap with the grounds asserted against the '785, '604, and '824 patents in district court, thus creating the potential for duplicative work and inconsistent judgements.
On September 1, 2022, the PTAB ruled in favor of institution of the IPR, taking the position that the Sotera stipulation need not necessarily extend to unchallenged patents in order for the Director's Interim Fintiv Procedure to apply. The panel could find no authority affirmatively granting them the ability to reject the Sotera stipulation on the basis of related patents challenged in related litigation. Rather, the Director's Interim Fintiv Procedure compels the PTAB to decline exercising their discretion to deny institution under § 314(a) once a Petitioner files a Sotera stipulation.
Takeaway: As the IPR petition process continues to solidify in a post-Fintiv landscape, cases such as Via Transportation, Inc. v. RideCo Inc. test the boundaries of trial court stipulations and creative discretionary denial arguments.
Simon Maxell, in the Washington Office, assisted with the preparation of this Blog.
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.
  © Mondaq® Ltd 1994 – 2022. All Rights Reserved.

Passwords are Case Sensitive

Forgot your password?
Free, unlimited access to more than half a million articles (one-article limit removed) from the diverse perspectives of 5,000 leading law, accountancy and advisory firms
Articles tailored to your interests and optional alerts about important changes
Receive priority invitations to relevant webinars and events
You’ll only need to do it once, and readership information is just for authors and is never sold to third parties.
We need this to enable us to match you with other users from the same organisation. It is also part of the information that we share to our content providers (“Contributors”) who contribute Content for free for your use.
Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.


Sharing Is Caring:

Leave a Comment