Adds to Recent IPR Successes on Behalf of Petitioners and Respondents
Attorneys from the Intellectual Property Practice of Mintz, Cohn, Ferris,Glovsky and Popeo, P.C successfully argued before the Federal Circuit Court of Appeals on behalf of Straight Path IP Group, Inc. resulting in the first Federal Circuit opinion to entirely reverse and remand a Patent Trial and Appeal’s Board’s (“PTAB”) decision that cancelled patent claims in an inter partes review (IPR) of a patent.
The challenged patent claimed certain protocols for establishing communication links through a network. A common element to all of the challenged claims was “program code for transmitting, to the server, a query as to whether the second process is connected to computer network.” The Federal Circuit agreed with Straight Path that this language requires a query as to the present online status, and rejected the Board’s construction that encompassed a query as to the past status. Accordingly, the Federal Circuit rejected the Board’s claim construction, reversed the Board’s decision, and remanded for further proceedings under the correct construction.
“This significant victory substantiates the value and quality of our client’s patent which the PTAB decision had called into question,” said James Wodarski, Member in Mintz’s Intellectual Property Practice. “It also demonstrates that the CAFC is not going to be a rubber stamp for the PTAB, which has a record of undermining patents.”
Mr. Wodarski, along with William A. Meunier and Michael C. Newman, Members in Mintz’s IP Section, led the appeal on behalf of Straight Path IP Group, Inc. Mr. Wodarski made the oral argument to the CAFC. Michael T. Renaud, a Member and Division Head of the Intellectual Property Section and a member of Mintz’s Policy Committee and IP Members Michael J. McNamara, Adam P. Samansky and Tom Wintner assisted in the appeal, as did associates Nicholas W. Armington and Sandra J. Badin.
Mintz’s IP group recently secured two additional IPR successes on behalf of their clients. On November 24, the PTAB issued a Final Written Decision invaliding all of the claims challenged in an IPR Petition the firm submitted on behalf of ACE Bed Co. Ltd. challenging the validity of a patent assigned to Sealey Technology LLC relating to bed springs. On October 21, the PTAB handed down a decision in favor of firm client and Respondent Kowa Company. Mylan, a generic pharmaceutical manufacturer, had filed an IPR in an attempt to invalidate claims integral to Kowa Company’s drug Livalo, and the PTAB declined to institute.