McKool Smith won an inter partes review trial after institution for its client Parallel Networks.  Microsoft and IBM submitted multiple requests for inter partes review of United States Patent Nos. 5,894,554 and 6,415,335 after being sued for patent infringement in the United States District Court for the District of Delaware. The Patent Trial and Appeal Board instituted trial on July 15, 2015 and consolidated the requests for inter partes review into two cases—IPR2015-00483 and IPR2015-00485.

The ’554 and ’335 patents resulted from the pioneering efforts of inventors Keith Lowery, Ronnie Howell, and Andrew Levine in the development of systems and methods for managing dynamic web page generation requests in the mid-1990s. The primary reference at issue in the inter partes review was a technical report titled “SWEB: Towards a Scalable World Wide Web Server on Multicomputers” authored by a Ph.D. candidate at the University of California, Santa Barbara.  In the Patent Trial and Appeal Board’s Final Decisions, made public today, the Board found that Microsoft and IBM failed to prove the unpatentability of any of the 94 Parallel Networks patent claims at issue in the proceedings.

The Final Decisions conclude a hard fought battle between Parallel Networks and Microsoft and IBM before the Patent Trial and Appeal Board.  Microsoft originally filed the request for inter partes review hours before the bar deadline on December 23, 2014.  IBM filed a motion for joinder on August 14, 2015.  Following institution, Parallel Networks pursued discovery to the extent allowed inter partes reviews including multiple depositions of Microsoft’s expert.  These depositions secured critical testimony cited by the Board in ruling on the patentability of the ’554 and ’335 patents.  The trial ended with oral argument before the Board at the USPTO’s headquarters in Alexandria, Virginia.

The dispute between Parallel Networks, Microsoft, and IBM will now shift to the District Court.  District Judge Sue Robinson, at Parallel Networks’ request, had stayed the District Court case a few months before trial pending Final Decisions from the PTAB.  Judge Robinson has already lifted the stay and scheduled a status conference for August 30.  Parallel Networks hopes to proceed to trial as quickly as possible.  Microsoft and IBM are holdouts in licensing patents that have already been licensed widely in the industry.

The McKool Smith trial team included Austin Austin associate Kevin Hess.  Microsoft was represented by Joseph Mitcallef and Michael Hatcher of Sidley Austin and Jason Wolff of Fish & Richardson and IBM was represented by Andrew Hienz of Desmarais LLP.

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