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Can Infringement Contentions be Amended to Add New Claims Resulting from an Ex Parte Reexam Filed after IPRs Invalidated Some but Not All Claims?

Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products. The Court also stated that, even if IXI was diligent, there would be undue prejudice to defendants if IXI were allowed to almost “triple” the number of claims that were initially asserted five years ago. While Judge Gilliam punted on the applicability of claim or issue preclusion on the new reexamination claims, Judge Gilliam noted that “there would appear to be obvious inefficiency in allowing [p]laintiffs to resurrect claims invalidated in IPR by turning to ex parte reexamination … an unresolved issue not squarely addressed by [the Federal Circuit in] Senju Pharm.”

The case began in 2014 in the Southern District of New York, where IXI filed suit for patent infringement against Apple and Samsung. The cases were later transferred to the Northern District of California in August 2015 and stayed in November 2015 pending the outcome of IPRs filed by Apple and Samsung against all asserted claims. In November 2016, the PTAB issued final written decisions invalidating all asserted claims except claim 10 of U.S. Patent No. 7,295,532 (“the ‘532 Patent”). Shortly thereafter, IXI appealed the PTAB decision with respect to U.S. Patent No. 7,039,033 (“the ‘033 Patent”) to the Federal Circuit.

Later, on March 2017, IXI also filed a petition for ex parte review of the ’033 Patent while its Federal Circuit appeal was pending, wherein it submitted amended claims and new claims. The PTAB issued an ex parte reexamination certificate on February 1, 2018 that amended one claim and added sixty-eight new claims. Apple also filed a petition for ex parte reexamination on April 3, 2018, while the Federal Circuit appeal remained pending, to challenge certain surviving claims of the ’532 Patent. In this reexam proceeding, IXI added thirty-five new claims. At the time of Judge Gilliam’s decision, this proceeding was still pending. On February 21, 2019, the court lifted the stay, despite the on-going reexamination of the ’532 patent, and IXI moved for leave to amend its infringement contentions and asserted claims.

The Court denied IXI’s motion. According to Judge Gilliam, IXI was not diligent, and even so, granting the motion would cause undue prejudice to Apple and Samsung. The Court noted that IXI cannot amend contentions and asserted claims just because new claims were added during the reexamination. Judge Gilliam explained that IXI should have provided proposed changes to the contentions or identified potentially new infringing products on the market. The Court stated that IXI did not demonstrate that they even investigated if there were other potential infringing products. While the Court did not specifically address the preclusion issue, it noted that res judicata, as discussed in Senju Pharm. Co. v. Apotex, 746 F.3d 1344, 1353 (Fed. Cir. 2014), may not apply because the asserted claims were first invalidated in an IPR proceeding, not district court.

This case provides instructive guidance to patent owners who may seek to assert newly-added claims from a reexamination in on-going litigation proceedings. With respect to the issue of res judicata, it seems to be an open question of whether newly-added claims can be asserted against defendants after an IPR has invalidated some or all of the original asserted claims. As a result, patent owners may be able to proceed with newly-added claims but should determine if there are any additional infringing products that may have entered the market in light of the new claims and also provide the court with proposed changes to the contentions.

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About this Author

Brad Scheller, Mintz Levin Law Firm, New York, Intellectual Property and Litigation Law Attorney

Brad focuses his practice on patent disputes in Federal District Courts and at the US Court of Appeals for the Federal Circuit.  With over 12 years of experience, Brad has handled disputes involving a variety of technologies, including electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has significant experience representing clients in inter partes review (IPR) and cover business method patent review...

Rithika Kulathila, Mintz Levin Law Firm, Litigation Law Attorney, Boston

Rithika is a litigator with a technical background in biochemistry and molecular biology. Rithika uses her technical and legal experiences when working with companies in the life sciences, biotechnology, health care, and technology sectors.

Rithika earned her JD from UC Berkeley Law School, while also serving as a judicial extern to the Hon. Susan Y. Illston of United States District Court for the Northern District of California and a legal intern for the medical-legal partnership at the East Bay Community Law Center in Berkeley, California. Rithika earned a Law & Technology Certificate, and participated in the Berkeley Technology Law Journal and the Workers’ Rights Disability Law Clinic. She also served as co-president of the Healthcare and Biotech Law Society and the South Asian Law Student Association.

Prior to attending law school, Rithika worked as an academic and support services coordinator for a nonprofit that works with middle school and high school girls and served as a health policy intern for a former Massachusetts State Senator.