Inter Partes Review Sample Clauses
The Inter Partes Review clause defines the process by which a party can challenge the validity of a patent after it has been granted, typically through proceedings before the United States Patent and Trademark Office (USPTO). This clause outlines the rights and procedures for initiating such a review, including timelines, grounds for challenge, and the responsibilities of each party during the process. Its core function is to provide a formal mechanism for disputing potentially invalid patents, thereby reducing the risk of infringement litigation and promoting the integrity of patent rights.
Inter Partes Review. The parties agree that within 5 days after the Effective Date:
(a) If the US PTAB has not yet acted on the Inter Partes Review (IPR) petition filed by Lombard on May 6, 2013 related to the Jervis Patent (the “IPR Petition”), Lombard will notify the US PTAB that Lombard does not wish to proceed with the IPR Petition and shall request that the proceedings involving the IPR Petition be terminated and
(b) If the US PTAB has acted on the IPR Petition, the parties shall prepare and file a written statement under 37 CFR 42.74 indicating that a settlement has been reached, that the settlement be treated as business confidential information under 35 U.S.C.§ 327(b) and 37 C.P.R.§ 42.74(c) and request that the proceedings involving the IPR Petition be terminated.
Inter Partes Review. Microsoft and VirnetX shall cooperate (and if necessary, VirnetX will cause SAIC to cooperate) to file in each of the Pending IPRs, a joint motion to terminate with respect to Microsoft Corporation pursuant to 35 U.S.C. §317(a) in the form set forth in Exhibit C, and a joint request to keep this agreement confidential pursuant to 35 U.S.C. 317(b) and 37 C.F.R. § 42.74(c) in the form set forth in Exhibit D. Microsoft and VirnetX will contact (and if necessary, VirnetX will cause SAIC to contact) the Patent Trial and Appeal Board (“PTAB”) to request permission to file in each of the Pending IPRs the motion and the request within five (5) business days of the filing of the dismissals under Section 5.1, and upon receiving permission, file in each of the Pending IPRs the motion and the request within two (2) business days of the PTAB granting such permission. The parties will work together to modify the motion and request to address any issues raised by the PTAB. If the PTAB denies the motions to terminate, the Parties will take such other permitted steps to have Microsoft withdraw from the Pending IPRs. For example, Microsoft will not actively seek to participate in the Pending IPRs, and will not be bound by the results of the Pending IPRs. This covenant shall not be construed as preventing Microsoft from complying with any court or Patent Office order or applicable law.
Inter Partes Review. In the event the Parties agree to file for an Inter Partes Review with respect to any Patent Rights (“IPR”), MIMEDX, in consultation with Turn, shall assume primary responsibility to litigate the IPR using legal counsel mutually agreed upon by the parties using reasonable efforts. MIMEDX shall pay for the litigation expenses and shall thereafter invoice Turn for fifty percent (50%) of such litigation expenses as they are incurred, and Turn shall pay such invoiced amounts to MIMEDX within thirty (30) days of receipt of such invoice.
Inter Partes Review. As of the Effective Date and through the final disposition of each Pending Patent Challenge listed in Exhibit C.1 that is an inter partes review between the Covered Parties (each an “IPR,” and collectively, the “IPRs”), to the extent permitted by law, each Covered Party agrees not to voluntarily participate or assist others in prosecution of the IPRs, provided that, for the avoidance of doubt, the foregoing shall not restrict the provision of testimony, documents, assistance or information or any other actions that such Covered Party is legally obligated or compelled to provide. Within five (5) business days after the Effective Date, the Parties shall jointly request a conference with the Patent Trial and Appeal Board of the PTO (“PTAB”) seeking authorization to file a joint motion to terminate. No later than the date therefor set by the PTAB, the Parties shall cause their respective counsel to execute and file with the PTO appropriate papers requesting termination of each of the IPRs as to the Parties without the rendering of a final decision, in the form set forth in Exhibit E. Notwithstanding the foregoing, the Parties acknowledge that the decision as to whether to terminate the IPRs is at the discretion of the PTO, neither Party shall have any liability hereunder if, notwithstanding its compliance with this Section 3.4, the PTO does not terminate the IPRs, and the PTO’s termination of the IPRs is not a condition for any of the rights or obligations under this Agreement. If the PTO does not terminate an IPR, the owner of the Patent challenged in that IPR may continue to prosecute or litigate the IPR, including any appeals, to the extent necessary to secure or uphold its challenged Patents. In this provision, “PTO” means the United States Patent and Trademark Office.
Inter Partes Review. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter