Entering Legal Proceedings After IPR
"Confirmation of Possibility to Invalidate Patents"
Solus Advanced Materials has officially entered into a legal battle after initiating an invalidation trial against SK Nexilis's U.S. patents related to battery foil, a key material for batteries.
On April 30, Solus Advanced Materials announced that, out of the five U.S. patents held by SK Nexilis for which it filed inter partes review (IPR) petitions with the U.S. Patent Trial and Appeal Board (PTAB), three were dismissed, and one was granted an institution decision. The remaining case is expected to be announced later this month. The patent for which the institution decision was made will be cited in the court proceedings.
The Patent Trial and Appeal Board determines the validity of the patent solely based on prior art. However, in court, validity and patent infringement are reviewed from multiple perspectives, taking into account not only prior art but also various other pieces of evidence. In particular, the court examines prior products, claim indefiniteness, and expert opinions?factors that are not addressed during the IPR stage at the PTAB.
The Markman hearing, considered the first step among several procedures to determine patent infringement, is unique to U.S. patent litigation. It is a court hearing where a federal judge interprets the scope of the patent claims. During this hearing, both parties elaborate on their respective positions. Starting with the Markman hearing, the court will proceed through pretrial procedures, with a jury trial expected as early as November.
The outcome from the Patent Trial and Appeal Board is separate from the decision of the federal district court. The court independently considers a comprehensive range of facts, so the main confrontation between the two companies will be addressed in court.
A representative from Solus Advanced Materials stated, "The previous decision by the Patent Trial and Appeal Board is a meaningful result that confirms the possibility of invalidating the opposing party's patents," adding, "We believe the opposing party's patents are fundamentally invalid, as they were filed for products already existing in the market." The representative continued, "The key issues in this patent litigation are prior art and prior products. We have secured strong evidence of prior products that can prove these patents are invalid, and through the upcoming court proceedings, we will demonstrate that the claims of the opposing party's patents themselves are indefinite."
Currently, Solus Advanced Materials and SK Nexilis have been engaged in patent litigation in both South Korea and the United States since last year. Solus Advanced Materials is preparing to respond to litigation on five U.S. patents held by SK Nexilis at the U.S. District Court for the Eastern District of Texas, while simultaneously pursuing invalidation and non-infringement lawsuits against eight patents, including a chrome corrosion-resistant patent, in South Korea.
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