IPR2024-00094 Patent 7,812,409 B2 - 授权提交补充证据与简报

Sep 4, 2026

Order in a U.S. Patent and Trademark Office inter partes review authorizes additional procedural steps in the matter IPR2024-00094 involving U.S. Patent 7,812,409 B2. Patent Owner and Petitioner seek Director Review relating to the Board’s institution decision and the Final Written Decision, referencing a district court litigation, including a jury verdict and the court’s findings of fact and conclusions of law. The order directs the parties to jointly submit district court excerpts with a table of contents or index, and to file separate limited-length briefs addressing similarities and differences in arguments and evidence within specified deadlines.

LanguageEnglish

CategoryResearch & Report

FormatPDF

Pages5

Reading Time13 min

AccessFree to download

ORDER

Authorizing Additional Evidence and Briefing

Submissions and Deadlines

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE INERGY TECHNOLOGY, INC., Petitioner, v. FORCE MOS TECHNOLOGY CO., LTD. , Patent Owner. IPR2024-00094 Patent 7,812,409 B2 Before COKE MORGAN STEWART, Acting UnderSecretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office. ORDER Authorizing Additional Evidence and Briefing Force MOS Technology Co., Ltd. (“Patent Owner”) filed a request for Director Review of the Final Written Decision (“Decision”) in the abovecaptioned case, and Inergy Technology, Inc. (“Petitioner”) filed an authorized response to the request. See Paper 38 (“DR Request”); Paper 39. Patent Owner argues that Director Review should be granted because a district court and jury already determined that claim 1 of the challenged patent is not invalid when Petitioner’s real party-in-interest, ASUSTeK Computer, Inc., presented the same prior art and invalidity grounds in the district court proceeding.1 DR Request 1, 9–10. According to Patent Owner, the Board should not have instituted inter partes review under Fintiv,2 in view of the district court litigation. Alternatively, Patent Owner seeks a new final written decision confirming patentability of all challenged [claims.](claims. Id. at 2)[ Id.](claims. Id. at 2)[ at 2](claims. Id. at 2) . Petitioner responds that Patent Owner’s DR Request is not compliant with the Director Review process because Patent Owner introduces new evidence and raises institution issues at the final written decision stage of the proceeding. Paper 39, 1–4. As to the merits ofthe Board’s Decision, Petitioner argues that the Board’s decision is sound. Id. at 4–5. Patent Owner’s request to reconsider the Board’s institution decision and to terminate the proceeding because the Board should have denied 1 After the Board’s Decision, but prior to filing the DR Request, Patent Owner requested leave to supplement the record to file documents from the district court litigation, including the jury verdict, a redacted version of the trial transcript, the district court’s findings of fact and conclusions of law, and the final judgment. See Ex. 3101. That request was denied. Id. 2 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020)(precedential) . institution will not be considered at this time given the timing of Patent Owner’s notice of the jury verdict. As to Patent Owner’s alternative request to reconsider the Final Written Decision, additional information is necessary to determine whether Director Review is appropriate. Patent Owner raises the February 2025 jury verdict and the district court’s June 2025 findings of fact and conclusions of law in its DR Request. DR Request 9–10. The Board did not assess the jury’s determination or the district court’s relevant findings because, as Patent Owner explains, Patent Owner requested leave to file certain documents and evidence from the district court proceeding after the Board [issued its Decision.](issued its Decision. Id. at 4 n.1. Although Patent Owner)[ Id.](issued its Decision. Id. at 4 n.1. Although Patent Owner)[ at 4 n.1. Although Patent Owner](issued its Decision. Id. at 4 n.1. Although Patent Owner) should have brought the jury verdict to the Board’s attention immediately after the verdict was entered,3 it is important for the Board to consider a district court’s prior validity determination when adjudicating the patentability of the same or substantially the same claims. In view of the foregoing, the parties are ordered to jointly submit, as a single exhibit with a table of contents or index, relevant excerpts from the record of the district court proceeding, including trial transcripts, the jury verdict, and the district court’s findings of fact and conclusions of law. Each party also is authorized to file a ten-p

FAQs

What does the order require the parties to submit in IPR2024-00094?

The parties must jointly submit a single exhibit with a table of contents or index containing relevant excerpts from the related district court proceeding, including trial transcripts, the jury verdict, and the district court’s findings of fact and conclusions of law.

How many pages may each party’s additional brief include, and what must it address?

Each party is authorized to file a ten-page brief explaining the similarities and differences between the arguments and evidence presented in the district court and those presented in the current proceeding.

When must the exhibit and the briefs be filed?

The exhibit of relevant excerpts and the parties’ briefs must be filed within thirty days from the date of the order.

Sep 4, 2026

Upload by Callum