PTAB’s Institution of IPR Not Sufficient for District Court to Reconsider Grant of Preliminary Injunction

A recent District of New Jersey case highlights the importance of presenting evidence in federal district court in addition to presenting it in proceedings before the PTAB. New Jersey District Court Judge Hochberg recently held that the PTAB’s institution of an IPR was not a basis to reconsider the court’s order granting plaintiff a preliminary injunction. Power Survey, LLC v. Premier Utility Services, LLC, No. 13-5760 (D.N.J.).

In November, the court granted plaintiff’s motion for a preliminary injunction. At the preliminary injunction stage, while defendants briefly raised an invalidity argument, the defendants’ arguments (in briefing and at the evidentiary hearing) focused primarily on non-infringement. The Court granted the preliminary injunction, finding that the plaintiff had demonstrated a likelihood of success in proving that the defendants infringed the patents at issue and that the evidence presented by the defendants did not raise a substantial question concerning validity.

One week after the Court issued its opinion on the preliminary injunction, the PTAB instituted IPR over all claims of the patents-in-suit. The defendants had filed six inter partes review petitions, each with different contentions and prior art combinations. The defendants had not presented any testimony or argument concerning this prior art at the evidentiary hearing on plaintiff’s motion for preliminary injunction. Following the institution of the IPR, the defendants moved for reconsideration of the Court’s preliminary injunction Order, arguing that the institution of the IPR was “newly discovered” evidence.

In rejecting defendant’s motion for reconsideration, the Court noted that, while the institution of the IPR was not known at the time of the Court’s consideration of the motion for preliminary injunction, all of the underlying evidence, including the specific prior art presented, was known to defendants. The Court held, therefore, that the defendants’ “strategic decision to present different evidence in federal court than in administrative court does not entitle a party to reconsideration simply because the administrative court later initiated review based on alleged facts and argument.”

The New Jersey court’s decision once again highlights the interplay between federal district court litigation and IPR proceedings before the PTAB. This case shows that parties should be cautious about relying on the IPR proceedings and decisions in district court and that the safest course is, to the extent possible, to ensure that any evidence that may affect both proceedings is fully presented in both proceedings.