Any additional motion to amend claims or present new claims will not be allowed unless the petitioner and patent owner make a joint request for such a motion in order to materially advance the settlement of the proceeding, or as permitted by the Director. 35 U.S.C. § 316(d). Thus, in most Reviews, the patent owner will have only one opportunity to cancel existing claims or add new claims that narrow the claims’ scope.

The PTAB is required, by statute, to issue its final written determination on validity within twelve months of deciding to institute an IPR, with one possible six-month extension. See 35 U.S.C. § 316(a)(11). Thus, the new IPR procedure is much faster than the pre-existing inter partes reexamination it replaced because the average pendency for inter partes reexamination is 39.

And if the IPRs are instituted, then the PTO must by statute complete the review within 12 months. 35 U.S.C. § 316(a)(11). At that point, the statutory estoppel provision becomes effective.

That 2 By statute, the deadline for an IPR decision could be extended by six months for good cause, which could extend the delay to October 2020. 35 U.S.C. § 316(a)(11). Case 2:17-cv-00669-RWS Document 179 Filed 10/26/18 Page 9 of 13 PageID #: 9446 7 analysis compares the claim language to the prior art.

3 By statute, the deadline for an IPR decision could be extended by six months for good cause, which could extend the delay to August 2020. 35 U.S.C. § 316(a)(11). 4 Moreover, Samsung’s inexplicable delay has allowed Samsung to fully discover Invensas’ infringement theories, Invensas’ claim construction positions, and obtain other discovery from Invensas.

By statute, the deadline for an IPR decision could be extended by six months for good cause, which could extend the delay to July 2020. 35 U.S.C. § 316(a)(11). 4 Moreover, Samsung’s inexplicable delay has allowed Samsung to fully discover Tessera’s infringement theories, Tessera’s claim construction positions, and obtain other discovery from Tessera.

This is because the burden of proof is markedly lower in an inter partes review—a preponderance of the evidence, as opposed to clear and convincing standard required in district courts. See 35 U.S.C. § 316(e). Additionally, because the PTAB does not address issues of infringement or damages, the PTAB proceedings provide infringers with a risk-free forum to challenge the validity of a patent.

Furthermore, the risk of lost evidence is mitigated by the expedient nature of inter partes review, which is required by law to conclude within twelve months in most instances. 35 U.S.C. § 316(a)(11). B. A Stay Would Simplify the Patent Infringement Litigations A stay pending the outcome of the IPR would greatly simplify the consolidated litigations because the IPR of the ‘504 patent may lead to the cancellation or amendment of each of the asserted claims of the ‘504 patent.

MOTION TO STAY PENDING IPR CASE NO. 5:13-CV-4206-EJD cause shown. 35 U.S.C. § 316(a)(11). Given its strict timing requirements, IPR is designed to (a) reduce to 12 months the time the PTO spends reviewing validity, from the previous reexamination average of 36.

See 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”)