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Lee Specialties, Inc. v. FHE USA LLC

Docket IPR2019-01366, Patent Trial and Appeal Board (July 24, 2019)
Case TypeInter Partes Review
Patent
10030461
Patent Owner FHE USA LLC
Petitioner Lee Specialties, Inc.
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16 Termination Decision Document: Termination Order

Document IPR2019-01366, No. 16 Termination Decision Document - Termination Order (P.T.A.B. Feb. 18, 2020)
Petitioner, Lee Specialties, Inc., and Patent Owner, FHE USA LLC, jointly request to terminate IPR2019-01366 challenging U.S. Patent No. 10,030,461 B2 (“the ’461 patent”).
Along with the Motion, the parties filed what they represent is a true copy of their written settlement agreement.
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov. 2019).1 In this case, the Board has instituted review but has not yet issued a final written decision.
The parties represent that they “have settled their dispute with respect to the ’461 Patent” and that “[t]here are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of this proceeding.” Motion 2.
Accordingly, it is: ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that this proceeding is terminated.
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14 Order: Scheduling Order

Document IPR2019-01366, No. 14 Order - Scheduling Order (P.T.A.B. Feb. 10, 2020)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
Patent 10,030,461 B2 The parties are further directed to the Board’s Guidance on Motions to Amend in view of Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) and Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (designated precedential).
Alternatively, the parties may jointly file a paper stating their preference for the hearing location within one month of this Order.
In stipulating to move any due dates in the scheduling order, the parties must be cognizant that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for the Board to issue its preliminary guidance, if requested by Patent Owner.
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13 Institution Decision: Decision Granting Institution of Inter Partes Review

Document IPR2019-01366, No. 13 Institution Decision - Decision Granting Institution of Inter Partes Review (P.T.A.B. Feb. 10, 2020)
Institution of an inter partes review is authorized by statute only when “the information presented in the petition ... and any response ... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
Petitioner replies by arguing that the Texas litigation “remains in its early stages,” asserting that a trial date has not been set, a claim construction hearing has not been held, discovery is ongoing, and the parties have not served final infringement and invalidity contentions.
Patent 10,030,461 B2 argues that “wedge assembly,” as recited in independent claims 1 and 6, should be interpreted under § 112(f), we need not resolve the issue because, for the reasons provided below, we find that Petitioner has sufficiently shown for purposes of this Decision that the asserted prior art teaches the limitation.
Based on our review of the current record before us, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging claims 2, 3, 7, and 8 in view of Ahlstone, McGuire, and Baugh.
Based on our review of the current record before us, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging claims 5 and 10 in view of Ahlstone, McGuire, and API 16A.
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11 Order: ORDER Conduct of the Proceeding 37 CFR ¿¿ 425

Document IPR2019-01366, No. 11 Order - ORDER Conduct of the Proceeding 37 CFR ¿¿ 425 (P.T.A.B. Jan. 21, 2020)
A conference call in this proceeding was held on January 21, 2020, among counsel for Petitioner Lee Specialties, Inc. (Greg Webb), counsel for Patent Owner FHE USA LLC (Douglas Nemec), and Judges Tartal, Woods, and O’Hanlon.
The purpose of the call was to address Petitioner’s request to file documents from the district court litigation involving the ’461 patent.
Petitioner requests to submit: 1) an order on the joint motion to dismiss with prejudice, filed as document 37 in the Louisiana litigation,1 and 2) an order cancelling the Markman hearing, filed as document 63 in the Texas litigation.2 During the conference call, Petitioner indicated that it did not seek to file any comments or arguments along with the trial documents, and Patent Owner indicated that it did not oppose the filing of the two trial documents.
Petitioner is authorized to file as exhibits the two trial documents identified above.
Accordingly, it is: ORDERED that Petitioner’s request for authorization to file an order on the joint motion to dismiss with prejudice, filed as document 37 in the Louisiana litigation, and an order cancelling the Markman hearing, filed as document 63 in the Texas litigation, is granted; and FURTHER ORDERED that Petitioner shall file copies of the two trial documents as exhibits by Wednesday, January 22, 2020.
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7 Order Conduct of Proceeding: ORDER Conduct of the Proceeding 37 CFR ¿¿ 425

Document IPR2019-01366, No. 7 Order Conduct of Proceeding - ORDER Conduct of the Proceeding 37 CFR ¿¿ 425 (P.T.A.B. Nov. 21, 2019)
A conference call in this proceeding was held on November 21, 2019, among counsel for Petitioner Lee Specialties, Inc. (Greg Webb), counsel for Patent Owner FHE USA LLC (Douglas Nemec), and Judges Tartal, Woods, and O’Hanlon.
The purpose of the call was to address Petitioner’s request to file a Reply to the Preliminary Response to the Petition.
During the conference call, Petitioner argued good cause exists to file a Reply to the Preliminary Response to address arguments raised therein regarding district court litigation1 regarding the patent at issue in this inter partes review.
Specifically, Petitioner indicated that it wished to present additional facts for the Board to consider when addressing Patent Owner’s arguments that the Board should exercise its discretion under 35 U.S.C. § 314(a) to deny institution in view of the district court litigation.
Accordingly, it is: ORDERED that Petitioner’s request for leave to file a Reply to Patent Owner’s Preliminary Response is granted; FURTHER ORDERED that Petitioner’s Reply is limited to eight pages, must be filed by Friday, November, 29, 2019, and may only respond to issues raised in Patent Owner’s Preliminary Response regarding the district court litigation; FURTHER ORDERED that Patent Owner may file a Sur-Reply to Petitioner’s Reply; and FURTHER ORDERED that the Sur-Reply is limited to eight pages, must be filed by Friday, December 6, 2019, and may only respond to issues raised in Petitioner’s Reply.
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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2019-01366, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Aug. 12, 2019)
The petition for inter partes review in the above proceeding has been accorded the filing date of July 24, 2019.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
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15 Motion: Joint Motion to Terminate Proceedings

Document IPR2019-01366, No. 15 Motion - Joint Motion to Terminate Proceedings (P.T.A.B. Feb. 17, 2020)
The Parties have settled their dispute with respect to the ’461 Patent and have reached agreement to terminate this Inter Partes Review.
The Settlement Agreement between Lee Specialties and FHE USA has been made in writing, and a true and correct copy shall be filed with this Office pursuant to 35 U.S.C. § 317(b).
Therefore, Petitioner and Patent Owner respectfully request termination of Inter Partes Review Case No. IPR2019-01366.
Joint Motion to Terminate Proceedings IPR2019-01366 / U.S. Patent 10,030,461 Exhibit C to LSI’s Opening Claim Construction Brief – McGraw- Hill Dictionary of Engineering (2nd edition) Plaintiff’s Opening Claim Construction Brief, Dkt. No. 39 Plaintiff’s Initial Proposed Claim Constructions Plaintiff’s Amended Modified Claim Constructions Defendant Lee Specialties Inc.’s Responsive Claim-Construction Brief, Dkt. No. 41 Plaintiff’s Responsive Claim Construction Brief, Dkt. No. 42 Plaintiff FHE’s Supplemental Responses and Objections to Defendant’s First Set of Interrogatories Supplemental Exhibit A to FHE’s Responses and Objections to Defendant’s First Set of Interrogatories Second Amended Complaint for Patent Infringement Defendant Lee Specialties Inc.’s Supplemental Objections and Responses to Plaintiff FHE USA LLC’s First Set of Interrogatories (Nos. 4-7) Joint Motion to Amend Schedule, Dkt. No. 34 in FHE USA LLC v. Express Supply & Rental, LLC (W.D.
Defendant Lee Specialties Inc.’s Supplemental Opening Claim- Construction Brief, Dkt. No. 55 Exhibit 11 to Defendant Lee Specialties Inc.’s Supplemental Opening Claim-Construction Brief – Baugh Supplemental Declaration, Dkt. No. 55-2 Defendant Lee Specialties Inc.’s Supplemental Responsive Claim-Construction Brief, Dkt. No. 60 FHE’s Unopposed Motion for Leave to File Second Amended Complaint and to Amend Schedule, Dkt. No. 46 Order on FHE USA LLC and Express Supply & Rental LLC’s Joint Motion to Dismiss With Prejudice; Case No. 6:18-cv-0913- RRS-CBW; Dkt. No. 37 Order Cancelling Markman Hearing; Case No. 5:18-cv-00715- ADA; Dkt. No. 63 Settlement Agreement
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