PTAB Litigation
We are routinely recognized as a top filer of inter partes review (IPR) petitions and have been a leader in Patent Trial and Appeal Board (PTAB) practices since the administrative body was formed in 2012. Our team obtained the first ever full denial of an IPR institution, and has developed a successful approach to PTAB matters that allows us to maximize efficiency, value, and quality for our clients.
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Representative Experience
Represent Ashworth Bros. Inc. in two IPR proceedings against Laitram, LLC, as well as an associated U.S. District Court patent infringement action involving Ashworth Bros. Posi-Drive Spiral™ Conveyor Belt System.
Clear-Vu Lighting Clear-Vu Lighting LLC v. University of Strathclyde, IPR2019-00431, U.S. Patent Trial and Appeal Board
Represented Clear-Vu Lighting as petitioner in an IPR proceeding against University of Strathclyde. Clear-Vu showed that the patent’s claims directed to using blue light to inactivate certain types of bacteria
RTC Industries Fasteners for Retail, Inc. v. RTC Industries, Inc. Nos. IPR2018-00741, IPR2018-00742, IPR2018-00743 and IPR2018-00744, USPTO Patent Trial and Appeal Board
Represented RTC Industries in its infringement lawsuit against Fasteners for Retail, and on Sept. 12, 2018, prevented inter partes review institution against four of RTC’s patents.
Mattel Spin Master Ltd. V. Mattel, Inc., IPR2018-01672, IPR2018-01673 and IPR2018-01674, USPTO Patent Trial and Appeal Board
Represented Mattel in three inter partes reviews, as well as in an associated patent infringement case involving Mattel’s Mecard line of transformable toys.
Comcast Cable Communications Comcast Cable Communications, LLC v. Rovi Guides, Inc., et al.; Nos. IPR2017-00217, et al., USPTO Patent Trial and Appeal Board
Represent Comcast in a large number of inter partes review petitions filed to defend our client against a series of ITC and district court attacks by Rovi.
NIKE In Skechers U.S.A., Inc. v. NIKE, Inc., Nos. IPR2017-00607, IPR2017-00608, IPR2017-00617, IPR2017-00619, IPR2017-00620, IPR2017-00621, IPR2017-00623, USPTO Patent Trial and Appeal Board
Represented NIKE against ongoing attempts to invalidate design patents related to its popular FREE midsole and outsole designs.
YETI Coolers, LLC. RTIC Coolers LLC v. YETI Coolers, LLC., Nos. IPR2016-01176, IPR2016-01207, IPR2016-01430, IPR2016-01432 and IPR2017-00468, USPTO Patent Trial and Appeal Board
Represented YETI in five inter partes reviews filed by RTIC Coolers against three of YETI’s patents for technology related to the latching mechanisms contained on its heavy duty premium hard-sided coolers, and the materials and properties of its soft-sided coolers.
NIKE In Adidas AG v. NIKE, Inc., Nos. IPR2016-00921, IPR2016-00922, USPTO Patent Trial and Appeal Board
Represented NIKE in inter partes reviews brought by adidas against two NIKE patents related to its FLYKNIT technology.
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
PTAB Highlights
PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
PTAB Highlights
PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
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PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
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PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
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PTAB Highlights | Takeaways From Recent Decisions in Post-Issuance Proceedings
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Banner Witcoff IP Alert, Nov. 7, 2019
https://bannerwitcoff.com/wp-content/uploads/2019/10/IP-Alert-Federal-Circuit-to-Decide-if-Patentee-is-Bound-by-Earlier-Statement-to-PTAB.pdf
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