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Canon and Nikon win eight IPRs against two Papst patents

March 2019

Client(s) Canon Inc., Canon U.S.A., Inc., and Nikon Corporation

Jones Day successfully represented both Canon and Nikon in eight inter partes reviews relating to two patents owned by Papst Licensing (U.S. Patent Nos. 8,504,746 and 8,966,144). The patents generally relate to communications between a peripheral device and a host computer. Papst asserted these patents in a related multi-district litigation against Canon's and Nikon's digital cameras (In re Papst Licensing GmbH & Co., KG Patent Litigation, Misc. Action No. 07-493 (RDM) MDL No. 1880 (DDC)). In total, the PTAB found unpatentable 116 claims across both patents. On March 18, 2019, Papst moved to voluntarily dismiss its appeals from the IPR decisions, and on March 20, 2019, the Federal Circuit granted Papst's motions. By virtue of Papst's dismissals of the appeals, the Board's IPR decisions became final in their entireties, constituting a complete victory for Canon and Nikon.

Canon Inc., et al. v. Papst Licensing GmbH KG & Co., IPR2016-01199; -01200; -01211; -01212; -01213; -01214; -01216; -01225 (PTAB); Papst Licensing GmbH & Co. v. Canon Inc., Appeal Nos. 18-1525, -1526, -1527, -1528, -1529, -1530, -1531, -1532, -1571 (Fed. Cir.)

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