(Redwood City, CA) – Bunsow De Mory is pleased to announce that it has secured multiple wins at the Federal Circuit on behalf of Ramot at Tel Aviv University. In orders issued today, the Federal Circuit denied two appeals and a mandamus petition brought by Cisco Systems, Inc. Cisco was seeking to revive its bid to challenge the validity of two Ramot patents by overturning the Patent Trial and Appeal Board’s denials of institution of two inter partes review (IPR) petitions under 35 U.S.C. § 314. Those decisions, secured by Bunsow De Mory, and others like them, demonstrated that patent defendants were not entitled to litigate validity in the Patent Office in all cases. Instead, where IPR proceedings would be slower than, and duplicative of, district court litigation and trial by jury, denial of institution may be appropriate for that reason.
Ramot is the Business Engagement Center of Tel Aviv University, one of Israel’s foremost research and teaching universities. Ramot’s mission is to foster, initiate, lead and manage the transfer of new technologies from the laboratory to the marketplace. Ramot helps commercialize promising scientific discoveries by providing the resources, business, intellectual property protection, and legal framework for researchers—creating successful business connections between University scientists and researchers, and companies ranging from startups to the Fortune 500. Ramot manages a portfolio of more than 5,000 patents and patent applications (representing hundreds of distinct technologies).
Ramot hired Bunsow De Mory to enforce patents related to advanced modulation techniques in high-performance, multi-GHz optical communication systems. Bunsow De Mory prepared and filed an ongoing lawsuit against Cisco Systems in the Eastern District of Texas. Cisco responded by filing inter partes review petitions with the U.S. Patent Trial and Appeal Board, seeking to invalidate Ramot’s patents. The Patent Trial and Appeal Board denied institution of the first two of those petitions on May 18, 2020, and the third and final petition on August 18, 2020, as urged by Bunsow De Mory on behalf of Ramot.
Despite 35 U.S.C. § 314(d)’s “No Appeal” provision, Cisco responded by appealing the first two denials to the Federal Circuit, and also petitioning for a writ of mandamus challenging the Patent Trial and Appeal Board’s authority to deny inter partes reviews on so-called “discretionary” grounds under 35 U.S.C. § 314(a). Bunsow De Mory and the Director of the U.S. Patent and Trademark Office (appearing as an intervenor) opposed. Today, the Federal Circuit ruled in favor of Ramot, dismissing Cisco’s appeals and denying Cisco’s mandamus petition.
Read the Federal Circuit’s opinion here.