Counseling, Opinions + Licensing
We have extensive experience in providing opinions relating to patentability; infringement of patents, trademarks and copyrights, and alleged acts of unfair competition. We also provide counseling to our clients on all aspects of intellectual property to ensure our IP strategies and services align with their needs and business goals.
CONTACT US:
Please click here to email us for more information about our Counseling, Opinions + Licensing practice.
Our Perspectives
Rogue Fitness scored a pair of victories at the PTAB
Law360 (July 20, 2020, 6:13 PM EDT) -- Rogue Fitness has scored a pair of victories at the Patent Trial and Appeal Board, wiping out two of a rival's patents covering jump-rope handles that the inventors credit with creating the fastest jump-rope in the world.
But Friday's decisions said the technology was obvious because skilled artisans would have been motivated to combine elements of existing technology to arrive at Colorado-based Jump Rope System LLC's claimed inventions. The decisions could mark the end of the road for Jump Rope System's infringement suit against Rogue Fitness, since the nixed patents are the only two at stake in the parallel litigation.
In its bid to fight off Rogue Fitness' challenges, Jump Rope Systems contested its rival's argument that combining the prior art would have solved an existing problem of the rope twisting up on itself with technology that allows the rope to pivot and swivel. Jump Rope Systems said the risk of twist was a nonissue in the prior art and so it shouldn't have been considered in relation to a motivation to combine.
But the board disagreed, saying in its decision on Jump Rope Systems' U.S. Patent No. 7,789,809 that it was persuaded by the testimony of Rogue Fitness' expert that a skilled artisan would have recognized that combining a 1978 German patent application with a 1979 French patent application would ameliorate that problem.
"We find that petitioner has articulated sufficient reasoning with rational underpinnings to support the combination," the decision said. "Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings."
The board reached the same conclusion on the motivation to combine the prior art in its other decision on Jump Rope Systems' U.S. Patent No. 8,136,208.
Louis DiSanto of Banner and Witcoff Ltd., who represents Rogue Fitness, told Law360 he was "pleased with the decision" and added that "the PTAB properly invalidated the challenged claims."
Counsel for Jump Rope Systems did not immediately respond to a request for comment Monday.
Jump Rope Systems sued Rogue Fitness in Ohio federal court in July 2018, alleging that Coulter Ventures LLC, which operates as Rogue Fitness, was selling and importing 14 types of speed jump-ropes that step on its patented technology.
The suit said the claimed inventions improved conventional jump-ropes, which were limited in how fast the rope could be spun, by developing a handle that allows the rope to pivot and swivel. According to court records, that case was paused pending the PTAB's review of the patents.
In the PTAB cases, Jump Rope Systems tried to persuade the board that the inventions were nonobvious by citing a statistic that 79% of all event winners in national and international jump-rope competitions between 2013 and 2016 used ropes incorporating the claimed technology.
But the board said the evidence Jump Rope Systems put forth was insufficient because it wasn't clear if the jump-ropes the athletes used in the competitions were Jump Rope Systems models or were made by rivals it has accused of copying its products.
"More importantly, there is no evidence indicating whether any of those jump-ropes 'using [Jump Rope Systems] technology' are coextensive with, or even covered by, any claim of the ... patent," one of the decisions said.
Jump Rope Systems asserted the same patents against another rival, Chinese company Suzhou Everise Trading Co. Ltd., in a 2017 suit filed in Colorado federal court. According to court records, Jump Rope Systems voluntarily dismissed the suit in March 2019.
The patents-in-suit are U.S. Patent Nos. 8,136,208 B2 and 7,789,809 B2.
Administrative Patent Judges Linda E. Horner, Barry L. Grossman and Richard J. Smith sat on the panel for the Patent Trial and Appeal Board.
Rogue Fitness is represented by Louis DiSanto, Eric Hamp, Brian Apel and Camille Sauer of Banner & Witcoff Ltd.
Jump Rope Systems is represented by Gregory F. Ahrens and Charles D. Pfister of Wood Herron & Evans LLP.
The cases are Coulter Ventures LLC dba Rogue Fitness v. Jump Rope Systems LLC, case numbers IPR2019-00587 and IPR2019-00586, before the Patent Trial and Appeal Board.
--Editing by Stephen Berg.
https://www.law360.com/articles/1293507/jump-rope-maker-gets-ptab-to-nix-rival-s-handle-patents
IP Alert
IP Alert | Still Contentious and “No More” Clear - AAM v. Neapco and Its Take on § 101
IP Alert
Another Bite at the Apple...Maybe? Supreme Court Reverses and Remands to the Federal Circuit
Banner & Witcoff IP Alert. 12/07/2016
Article
Real Life Wizard Wars
Marc S. Cooperman’s monthly column on IP issues affecting the toy and game industry from the September/October 2010 issue of Playthings. This month: “Real Life Wizard Wars.”
News + Events
NEWS
02.12.21
Brian Apel Pens Article for American Bar Association's TYL Magazine
EVENT
12.03.20
John Fleming to Discuss FTO Opinions for Strafford Webinar
EVENT
11.14.20
Liz Brodzinski to Moderate IPLAC Panel "IP and Political Campaigns"
NEWS
08.10.20
IP Alert | Still Contentious and “No More” Clear - AAM v. Neapco and its Take on § 101
NEWS
08.08.20
Bloomberg Law Quotes Scott M. Kelly on Challenge to USPTO’s Rejection of Artificial Intelligence as an Inventor
EVENT
07.23.20
Kirk Sigmon to Speak at Chulalongkorn University Bootcamp
NEWS
07.13.20
Kirk Sigmon Offers PR Strategies for Drafting Patents in Corporate Counsel
EVENT
07.13.20
Manav Das to Discuss Protecting Technical Innovations for Virtual Conference
NEWS
06.29.20
Banner Witcoff Sponsors Maryland Energy Innovation Accelerator
NEWS
06.02.20
Aseet Patel and Michelle Zhang Pen Article on USPTO's "P4P" Licensing Marketplace
NEWS
04.23.20
Banner Witcoff, Attorneys Earn Top Rankings in Chambers USA 2020
NEWS
04.14.20
IP Alert | Responding to the COVID-19 Crises: A Look at Potential Patent Infringement Immunity in View of the PREP Act
NEWS
10.18.19
Christian LaForgia Discusses IP-Backed Finance in Above the Law
NEWS
03.11.19
"Changes abound at IP firm Banner Witcoff," Chicago Lawyer features the firm's new Chicago office space
NEWS
02.26.19
Patent Ownership Disputes
NEWS
12.28.18