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Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR, PTAB Litigation Blog

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What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of California recently ruled on a motion for leave to amend to add such reexamined claims. In IXI Mobile (R&D) Ltd., et al., v. Samsung Electronics Co., Ltd. et al4-15-cv-03752 (CAND 2019-10-11, Order) (Haywood S Gilliam, Jr.), the Court denied a motion for leave to amend infringement contentions and asserted claims, stressing that the addition of potentially one hundred claims from an ex parte reexamination would cause undue prejudice to the Defendants. The Court stated, however, that Plaintiffs may try to enforce their “newly-minted” claims in a new case.

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