IP Litigation

Harness Dickey Uses the Power of IPR to Knock Out Competitors before Entering the Market

Challenge

Inter Partes Review (IPR) proceedings are a valuable tool for defendants in patent infringement litigation, especially companies that have been sued by non-practicing entities. Quicker and cheaper than district court litigation and featuring a lower burden of proof and broader claim construction standard, the expanding popularity of IPR has made the PTAB the second busiest patent docket in the country.

Companies are finding that IPR can be useful in knocking out blocking patents well before litigation can ever ensue. With one of the most experienced IPR teams in the country, Harness Dickey was called upon by Laird Technologies (Laird) to implement a knock out strategy in a trio of IPR cases decided by the PTAB on March 25, 2015 (Laird Tech., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00023, -00024 and -00025).

Laird provides systems, components and solutions that protect electronics from electromagnetic interference and heat, and that enable connectivity in mission critical systems through wireless applications and antenna systems. Laird is considered an industry leader in the design, development and delivery of innovative technologies that enable people, organizations and applications to connect efficiently and effectively.

Solution

Instead of relying on the hope that the patent owner will not sue after entering the marketplace, Harness Dickey and the Laird team employed the power of IPR to knock out GrafTech’s unfair monopolization of the market by using weak patents that should never have been granted in the first place. In addition to the overall strategy relative to the filing of the Laird IPRs, the Final Written Decisions from the PTAB held several key determinations.

First, one of the patents contested had been through ex parte reexamination on two other occasions, so this was the third time it was challenged, demonstrating the power of IPR as compared to other tools to challenge patent validity. Second, the patent owner in this matter wanted to leverage the popularity of the iPhone, Kindle and other devices to prove that the claims were non-obvious. Multiple declarations and exhibits were submitted but the PTAB agreed with Laird that no nexus between those electronic devices and the patented heat management tool existed. Third, the Internet Archive Wayback Machine has proven to be a reliable source of prior art in IPR proceedings and otherwise. The patent owner tried to undermine art at issue from the Wayback Machine, but the board ultimately upheld this important source of prior art.

Additionally, a growing issue in IPR is the argument by the patent owner that the petitioner failed to articulate a “rationale to combine” the references-at-issue. GrafTech made this assertion in their response, but the board disagreed, finding that ample evidence, in the form of excerpts from the prior art and expert declaration testimony, was provided in the petition.

Our favorable result in the Laird decisions point out the absolute importance of crafting a persuasive petition in IPR proceedings, and in staying on top of changing views from the PTAB and strategies from IPR participants. With this expertise, Harness Dickey helped knock-out three patents that were blocking its client’s access to an entire industry. Harness Dickey is a thought-leader in Inter Partes Review proceedings and this location on the cutting edge of IPR practice provides our clients with innovative strategies and successful outcomes.