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Indefinite Patent at the ITC May Survive in District Court, ITC Blog

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In a recent order issued in the Northern District of Texas, Judge Godbey denied a Defendant’s Rule 12(b)(6) motion despite the Federal Circuit’s holding that the asserted patent was invalid as indefinite.  Hyosung TNS, Inc. v. Diebold Nixdorf, Inc., No. 3:16-CV-0364-N (N.D. Tex. Dec. 5, 2019).  The Federal Circuit appeal arose from a related ITC investigation.  Because new evidence not presented on the ITC record may alter a term’s claim construction and, as a result, the asserted patent’s validity, Judge Godbey concluded an issue of fact exists and therefore, denied the motion.

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