In earlier patent infringement litigation, the Plaintiff sued DNA, LLC ("Ancestry") in the District of Delaware ("Delaware litigation") alleging infringement of U.S. Patent Number 8,221,381 (the "'381 patent"). Ancestry subsequently filed an IPR seeking review of several claims of the '381 patent, and the PTAB issued an institution decision finding that Ancestry "ha[d] demonstrated a reasonable likelihood that it would prevail in showing that claims 1, 2, 4, 5, 7, 8, 11, 12, 15-17, 20, 41, 44, and 49 of the '381 patent are unpatentable."

After that, Plaintiff DNAG filed a patent infringement action against Spectrum, alleging infringement of a different patent (the '164 patent) and Plaintiff filed motion for preliminary injunction the next day. Nearly, a month later, Ancestry file another IPR seeking to invalidate each claim of the '164 patent that were identical to those asserted against Spectrum.

The district court then analyzed whether a preliminary injunction should issue, which turned on the likelihood of success on the merits. The district court was persuaded by the Defendants' argument that "pending IPR proceedings on claims in a related patent similar to those asserted in this case raise a substantial question about the validity of certain of the asserted claims in this case. While the asserted claims of the '164 patent may not be identical in every respect to those currently under review before the PTAB, the Court finds that the claims are sufficiently similar to those in the related '381 patent currently under IPR to raise serious questions about the validity of the asserted claims in this case."

As a result, the district court concluded that the Plaintiff had not shown a likelihood of success on the merits of with regard to the validity of the asserted claims.

DNA Genotek Inc. v. Spectrum Solutions LLC, Cae No. 16-CV-1544 JLS (NLS) (S.D. Cal. Oct. 6, 2016)