HP Files Motion to Delay

HP has put the US District Court (Southern District of California) on notice that it will move for a “Stay of Memjet’s infringement claims, pending Inter Partes 
Review by the United States Patent & Trademark Office’s Patent Trial and Appeal.”

An inter partes review, or IPR, is a procedure for challenging the validity of a United States patent before the United States Patent and Trademark Office. The procedure is conducted by the Patent Trial and Appeal Board (PTAB). HP expects a “stay,” or halt to further legal process, will provide the time needed to explore a challenge to the validity of Memjet’s patents, under the sections of the U.S. Code on conditions for patentability including novelty and non-obviousness and based on the existence of prior art.

A copy of the motion, dated 21 March, 2016, which has been passed to RT Media, requests the matter to be heard on, or after April 18 in just one month’s time.

On August 12, 2015, Memjet filed a lawsuit against HP, claiming it infringed 8 of its U.S. Patents.

In the support document for its motion, HP says it has filed the first four IPR petitions, and HP 
will file the remaining four IPR petitions within the next month. HP anticipates 
 that the PTAB will institute these petitions between June and October 2016, and 
that the IPR proceedings will result in the cancellation of most, if not all, of the 
claims asserted by Memjet, including the claims Memjet may assert in its amended 
infringement contentions.

According the documents, HP asserts prior art or obviousness arguments 
that the Patent Office did not previously consider in granting Memjet its patents.

The first four IPR petitions relate to:

  • 9,056,475 (“the ‘475 patent”), asserting two prior art references: (1) U.S. Patent No. 4,947,190 to Mizusawa and (2) U.S. Patent No. 6,382,850 to Freund.
  • 7,156,492 (“the ‘492 patent”), asserting three prior art references: (1) U.S. Patent No. 5,565,900 to Cowger; (2) WO 01/02172 A1 to Silverbrook; and (3) U.S. Patent No. 6,428,142 to Silverbrook.
  • 6,575,549 (“the ‘549 patent”), asserting three prior art references: (1) WO 97/31781 to Adler; (2) JPH10-006488; and (3) U.S. Patent No. 6,439,681 to McClellan.
  • 6,880,914 (“the ‘914 patent”), asserting five prior art references: (1) WO 00/54973 to Silverbrook; (2) Australian Provisional Patent Application Nos. PQ4559 and PQ5959; (3) U.S. Patent No. 4,692,778 to Yoshimura; (4) U.S. Patent No. 4,559,543 to Toganoh; and (5) U.S. Patent No. 4.477,823 to Matsufuji.

The asserted claims of U.S. Patent Nos. ‘986, ‘636,‘096 and ‘550 are not included in the first four IPR petitions, but the memorandum shows HP will continue to file IPR petitions challenging the validity of all asserted claims of the remaining four Memjet asserted patents.

Later in October 2015, HP countersued Memjet, claiming the printer manufacturer violates HP’s intellectual property rights.

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