Converting An IPR Loss Into A District Court Win

It is very common to defend against a claim of patent infringement by litigating in the district court and the PTAB in parallel. The most straightforward-way for the defendant to win is to persuade the PTAB that the asserted patent is invalid. But, that is becoming more difficult as Director Iancu pushes the PTAB to apply greater scrutiny to petitions in order to address patent owner criticism that the PTAB proceedings are unfair. However, a recent decision disposing of a non-practicing entity's long-running litigation against Ubisoft highlights how a defendant that ultimately lost on an issue before the PTAB can use the loss to their advantage in district court.

Magistrate Judge Burke issued a report and recommendation granting Ubisoft's motion for summary judgment of noninfringement. Judge Burke found that statements made by patent owner Princeton Digital Image Corporation in its preliminary response to Ubisoft's petition for inter partes review disclaimed the