quinn emanuel
quinn emanuel urquhart & sullivan, llp | business litigation report
INSIDE
Securities Act Claims
Limitations Claried
Page 4
Practice Area Updates:
Trademark/Copyright
Litigation Update
Page 6
Energy Litigation Update
Page 6
White Collar Litigation
Update
Page 7
U.S. Supreme Court Victory in
Important Jury Deliberations
Case and Other Victories
Page 10
Attorney Advertising
March 2015
los angeles | new york | san francisco | silicon valley | chicago | washington, d.c. | houston | seattle | tokyo | london | mannheim | hamburg | munich | paris | moscow | hong kong | sydney | brussels
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Inter Partes Review and the ITC: The Benets and Risks of Filing IPR on Patents
Asserted in an ITC Investigation
Since the advent of the America Invents Act (“AIA”)
in 2012, parties accused of patent infringement in
district court cases have taken advantage of the newly
established Inter Partes Review (“IPR”) procedure
for challenging the validity of patents. IPRs allow an
accused infringer in a pending litigation to separately
challenge the validity of a patent to the Patent Trial
and Appeal Board (“PTAB”), a division of the United
States Patent and Trademark Office (“PTO”). IPRs are
an appealing alternative, in part because the standard
for invalidating a patent in an IPR—preponderance of
the evidence—is lower than the clear and convincing
standard applied in district court actions. 35 U.S.C.
§ 316(e). Moreover, district court judges are often
willing to stay the district court action until the IPR
is complete. Indeed, recent reports indicate that
district courts are granting or granting-in-part stays
of cases pending the completion of an IPR at a rate
of over 72%. See El-Gamel, Samuel, Siddoway, e
New Battlefield: One Year of Inter Partes Review Under
the America Invents Act, 42-1 AIPLA QUARTERLY
JOURNAL, 39, 55 (2014) (“e New Battlefield”).
But while the benefits of filing an IPR in a district
court litigation are clear, in the ITC the benefits are
less apparent. Operating under a mandate that ITC
investigations conclude “at the earliest practicable
time” after an investigation is filed, patent litigation
in the ITC typically runs less than two years. And the
ITC has never stayed a case pending an IPR. us, an
ITC case will likely conclude before an IPR is resolved.
is article will consider the potential benefits and
risks of filing an IPR concurrent with an ITC action.
Charles Eskridge Joins Quinn Houston Ofce
Charles Eskridge, a former partner at Susman Godfrey, has joined Quinn Emanuel’s
Houston office as partner. Mr. Eskridge is an experienced trial lawyer and appellate
advocate. He has tried a wide range of complex commercial matters and argued
numerous appeals in both federal and state courts. His professional experience
includes matters involving such diverse areas as antitrust, intellectual property
(including patents and trade secrets matters), aviation disasters, securities fraud, the
First Amendment, ERISA, and asbestos bankruptcy litigation, along with state law
issues concerning complex contractual disputes, accounting and legal malpractice,
fraud, employment and trade secret issues, and insurance coverage. Mr. Eskridge
received his B.S., magna cum laude, from Trinity University and was the valedictorian
of his graduating class from Pepperdine University School of Law. Mr. Eskridge joins
Karl Stern and David Gerger, two other leading lawyers who joined the firm’s Houston
office in the last several months.
John B. Quinn Named to
The National Law Journal
’s List of
“Litigation Trailblazers & Pioneers”
John B. Quinn was recently named one of e National Law Journal’s “Litigation
Trailblazers & Pioneers.” is honor recognizes Mr. Quinn’s contribution to change
in the practice of litigation through the firm’s unique practice model and exportation
of that model internationally. e profile also describes Mr. Quinn’s early work with
General Motors, his more recent representations of cell phone manufacturers such as
Samsung, Motorola, and HTC, and Mr. Quinn’s long-standing relationship with the
Academy of Motion Picture Arts and Sciences, for which he has been general counsel
since 1987. Q
Q
