Richards Layton & Finger
 

Chief Judge Stark Denies Request to Defer Entry of Judgment Pending Final Completion of IPR Proceedings

March 29, 2019

In Siemens Mobility, Inc. v. Westinghouse Air Brake Technologies Corp., No. 16-284-LPS (D. Del. Feb. 25, 2019), Chief Judge Stark denied the defendants’ request to defer entry of judgment on two patents subject to inter partes review proceedings. The plaintiff had prevailed at a jury trial on infringement of eight patents, which the jury also found to be not invalid.

The dispute arose because the parties were unable to reach agreement on the form of judgment. The defendants argued that the Court should not yet enter judgment on two of the eight patents-in-suit because the Patent Trial & Appeal Board had issued a final written decision finding one of the two unpatentable, and the PTAB was likely to find the other to be unpatentable in its IPR proceeding as similar and related to other patents that the PTAB had found to be invalid.

Chief Judge Stark entered judgment on the verdict on all eight patents. According to the Court, PTAB decisions would have no effect on this case until the Director of the U.S. Patent & Trademark Office issues a certificate of cancellation with regard to any patent at issue.

Key Point: A finding of invalidity by the Patent Trial & Appeal Board did not prevent the Court from entering judgment of no invalidity on the same patent, consistent with a jury verdict.