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Samsung Gets PTAB To Review 5 Patents At Heart Of Oct. Trial

The Patent Trial and Appeal Board has agreed to review five Nanoco Technologies Ltd. patents tied to semiconductor technology, even though an October trial against challenger Samsung is already in advanced stages.

The board granted Samsung's five petitions for inter partes review on Wednesday, finding overall that the factors outlined in Apple v. Fintiv weigh against using its discretion to refuse the challenges. Fintiv set out a multi-part test for when the status of district court litigation should lead the board to refuse an otherwise meritorious patent challenge.

"After weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion," each institution decision states.

Nanoco's infringement suit in the Eastern District of Texas targets Samsung's QLED TV products. It's set to go to trial on Oct. 4. 

The Fintiv factors, which stem from a precedential PTAB ruling, have been particularly controversial over the last several months, leading to hundreds of comments about their use — both positive and negative — being submitted to the patent office, and at least one lawsuit challenging their use. 

In Wednesday's rulings, the PTAB weighed whether the district court's refusal to stay the case for the IPRs justifies denying them. But the board said the stays were only denied because the court was waiting for the PTAB to make an institution decision, and that Samsung intends to again ask for a stay. The board noted that a stay still isn't a sure bet. 

"Petitioner's plan to pursue a renewed stay motion may increase the likelihood of a stay, but perhaps not by very much, given the effort the parties and the district court have invested in resolving the infringement litigation," the decisions state. "Accordingly, we conclude that the first Fintiv factor is neutral with respect to exercising our discretion to deny."

Weighing the scales toward denying the petitions was the fact that the district court's trial date is months before the final written decisions would be expected in May 2022, the PTAB said.

"The amount of time between the district court's trial date and our likely issuance of a final written decision is so long that any change to the trial date is unlikely to result in the final written decision being issued before the trial of the district court proceeding," the board said.

The PTAB then noted that the parties have completed fact discovery, served initial expert reports and finished claim construction, but that rebuttal expert reports and expert discovery, along with other pretrial motions, still must be conducted.

"The level of investment of time and resources in the district court proceeding is substantial and somewhat mitigated by petitioner's diligence in filing the petition," the decisions state.

But one factor sufficiently tipped the scales the other way. Samsung has said if the IPRs are instituted, it won't try to invalidate the patents in district court based on the same grounds raised at the board or grounds that it reasonably could have raised, the PTAB said.

"Considering that petitioner has agreed to be bound by a stipulation that is substantively the same as the stipulation addressed in [precedent], we follow the [precedent] in finding that this factor weighs strongly against exercising discretion to deny," the decisions state.

Overall, the board found these factors supported instituting the review. The PTAB then found that at least one ground of obviousness or anticipation in each of the IPRs — although not all — were likely to be successful.

Counsel for Samsung and Nanoco didn't immediately respond to requests for comment Thursday.

The patents-in-suit are U.S. Patent Nos. 9,680,068; 7,588,828; 7,803,423; 7,867,557; and 8,524,365.

Samsung is represented by F. Christopher Mizzo, Gregory Arovas, Stefan Miller and Todd Baker of Kirkland & Ellis LLP.

Nanoco is represented by William Meunier and Peter Cuomo of Mintz Levin Cohn Ferris Glovsky and Popeo PC.

The cases are Samsung Electronics Co., Ltd. v. Nanoco Technologies Ltd., case numbers IPR2021-00182, IPR2021-00183, IPR2021-00184, IPR2021-00185 and IPR2021-00186, before the Patent Trial and Appeal Board.