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Papst Licensing GmbH & Co. KG v. HP Inc.

Docket 5:16-cv-00575, California Northern District Court (Feb. 5, 2016)
Hon. James Donato, presiding
Patent
DivisionSan Jose
DemandBoth
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6470399; 6895449; 8966144
6470399
6895449
8966144
Plaintiff Papst Licensing GmbH & Co. KG
Defendant HP Inc.
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Canon Inc. v. Papst Licensing GmbH & Co. KG

Docket IPR2018-00410, Patent Trial and Appeal Board (Dec. 29, 2017)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner Canon Inc.
Petitioner Nikon
...
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Olympus Corporation v. Papst Licensing GmbH & Co. KG

Docket IPR2017-01617, Patent Trial and Appeal Board (June 16, 2017)
Jennifer Bisk, Joni Chang, Miriam Quinn, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner Olympus Corporation
Petitioner Olympus America
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Hewlett-Packard Company v. Papst Licensing GMBH & Co.KG

Docket 5:15-cv-02101, California Northern District Court (May 8, 2015)
Hon. James Donato, presiding
Patent
DivisionSan Jose
DemandPlaintiff
Cause28:2201 Declaratory Judgement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6470399; 6895449; 8504746; 8966144
6470399
6895449
85047468966144
Plaintiff Hewlett-Packard Company
Defendant Papst Licensing GMBH & Co.KG
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17 Refund Approval: Notice of Refund

Document IPR2018-00410, No. 17 Refund Approval - Notice of Refund (P.T.A.B. Mar. 23, 2018)
Petitioner’s request for a refund of certain post-institution fees paid on December 29, 2017, in the above proceeding is hereby granted.
The amount of $14,400.00 has been refunded to Petitioner’s deposit account.
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 the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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15 Institution Decision: Trial Instituted Document

Document IPR2018-00410, No. 15 Institution Decision - Trial Instituted Document (P.T.A.B. Feb. 2, 2018)
Petitioner concurrently filed a Motion for Joinder (Paper 5, “Mot.”), seeking to be joined to ZTE (USA) Inc. v Papst Licensing GMBH, Case No. IPR2017-00415 (the “ZTE IPR”).
In addition, Petitioner filed a Motion to Waive or Suspend Rule 37 C.F.R. § 42.122.
Because the dismissal of both of Petitioner’s motions determines the outcome of the Petition in this case, we need not wait for Patent Owner’s response.
The parties indicate that the ’449 patent has been asserted in cases taking place in several district courts.
There is no dispute that Petitioner was served with a complaint alleging infringement of the ’449 patent more than one year before it filed its Petition.
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10 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2018-00410, No. 10 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jan. 10, 2018)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
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.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration,
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8 Termination Settlement After Institution: Settlement after Institution Termination Decision Document

Document IPR2017-01617, No. 8 Termination Settlement After Institution - Settlement after Institution Termination Decision Document (P.T.A.B. Jan. 4, 2018)
Olympus and Papst also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
Under the Leahy-Smith America Invents Act, settlement between the parties to a proceeding is encouraged.
Notably, 35 U.S.C. § 317(a), in part, provides the following (emphasis added): (a) IN GENERAL.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.
Here, although the instant inter partes review has been instituted, we have not entered a final written decision in this proceeding.
In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate, with respect to Olympus, is granted; FURTHER ORDERED that this review is terminated with respect to Olympus only; but this review continues with Papst and the remaining Petitioner; FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and FURTHER ORDERED that any subsequent papers filed in this inter partes review should not include Olympus in the caption.
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