Mintz Levin Triumphs for SL Corporation and Hyundai Motor America, Inc. Before the Patent Trial and Appeal Board

03.16.2017 - Boston, MA

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. today announced a pair of victories before the Patent Trial and Appeal Board (PTAB) on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc. (AHT). On Wednesday, March 15, 2017, the PTAB decided in favor of SL Corporation and Hyundai Motor America, Inc. in two inter partes review (IPR) proceedings challenging the validity of U.S. patent 7,241,034 (‘034 patent) directed to an automatic control system to adjust automotive headlights.  AHT had asserted the ‘034 patent against Hyundai in the U.S. District Court for the District of Delaware which Mintz Levin successfully stayed pending the results of the IPR proceedings.  Those came in yesterday when the PTAB ordered that all patent claims challenged by Mintz Levin in a petition filed by SL Corp. and Hyundai were unpatentable.  Shortly thereafter in a second IPR which SL Corp. had joined as a petitioner, the PTAB held that most of the remaining claims of the ‘034 patent were unpatentable on similar grounds.  Between the two proceedings, all of the claims asserted against Hyundai in Delaware were invalidated.

These decisions represent two more in a string of recent victories before the PTAB since the beginning of the year. These include a March 8, 2017 win on behalf of global telecom solutions and products vendor RAD Data Communications, in which the PTAB denied a petition to institute an IPR against one of RAD’s patents. The victory, achieved in collaboration with the Israel-based Intellectual Property firm A.C. Entis IP, is significant as petitions to initiate IPR are granted in the vast majority of cases.

A day earlier on March 7, Mintz Levin further achieved positive results from four inter partes review proceedings for ParkerVision, Inc., which designs, develops and markets proprietary radio frequency (RF) technologies.

“We’re proud of our track record representing clients before the PTAB,” said Michael T. Renaud, Division Head for the Intellectual Property Section of Mintz Levin. “These accomplishments speak to the expertise of our deep and growing national bench of patent litigators and the value they provide to our clients.”

The Mintz Levin team in the most recent IPRs involving SL Corp. and Hyundai was led by Peter J. Cuomo, Of Counsel in the firm’s Intellectual Property practice with additional assistance from Adam P. Samansky, Kongsik Kim, both Members and Serge Subach, an associate in the firm’s Intellectual Property practice. Those IPRs are IPR2016-00193 and IPR2016-01368 (joined with IPR2016-00079).

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