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Case Study: Preserving Patent Claims at the USPTO

How a U.S. patent owner was able to fight off a competitor’s attempt to invalidate their patent before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, and thus thwart unfair competition by a potential infringer.

THE CLIENT: Anli Spring Co. Ltd., a Taiwanese metal spring manufacturer, faced competition from an overseas competitor looking to flood the U.S. market with below-market window blinds that infringed on its U.S. patent. Anli Spring has a patented spring for cordless window blinds.  Among other efforts by this competitor, it challenged the validity of a key client patent in a post-grant review before the U.S. Patent and Trademark Office (USPTO).

THE CHALLENGE: The USPTO post-grant review process is challenging for those defending their U.S. patents. The patent owner finds itself defending the USPTO-issued patent before the USPTO’s Patent Trial and Appeal Board (PTAB), which some in the patent community have found to be inclined more favorably toward patent challengers than federal courts. Should the petitioner prevail in its effort to invalidate the client’s patent, it would not only be free to continue undermining the client in the U.S. market, it would no longer face the possibility of infringement claims by the client. Our client faced an uphill battle after the PTAB, in its initial review, determined it was more likely than not that all of the patent’s claims were invalid, and instituted a trial to determine if that were the case.

After finding that competing window blinds were using its patented technology and being sold in the U.S. without its permission at a much lower price, which was eroding its market share and margins, Anli Spring asked Procopio to investigate these sales, notify retailers, and determine the source of the infringing products. While the client was able to settle with the competing distributor, the window blind manufacturer in China filed a PTAB challenge to Anli Spring’s patent, alleging 9 different grounds of invalidation in a patent challenge proceeding known as a Post Grant Review (PGR).

THE SOLUTION: Anli Spring asked Procopio to defend its patent against the attack. The Procopio client team reviewed the 9 grounds of attack, determining that all grounds lacked legal merit and that the patent should be upheld. The 9 invalidation allegations included a unique combination of asserted invalidity challenges rarely found in PTAB proceedings, such as obviousness, indefiniteness, and invalidity based on the on-sale bar. In fact, the allegations even included the submission of drawings purported to be by the plaintiff that were in fact those of Procopio’s client, lifted surreptitiously by an Anli Spring former employee.

THE RESULT: Anli Spring, a Taiwan-based manufacturer, working with Li & Cai Intellectual Property Office, an IP law firm headquartered in Taipei, coordinated regularly with Procopio’s attorneys to align the business and technology considerations with the substantive and procedural aspects of the PGR. Three patent attorneys in Procopio’s Silicon Valley office argued before the PTAB seeking to preserve key claims of the client’s patent.

After about 18 months of petitions, briefs, expert declarations, depositions, motions and hearings, including an early March video conference Oral Argument before a panel of three Administrative Patent Judges from the PTAB, the panel of judges and issued its Decision that the independent claims of the patent are valid, thus preserving the enforceability of Anli Spring’s patent rights while allowing them to continue to provide innovative window blinds to U.S. customers.

Learn more about our Patent Prosecution and IP Litigation practices and our Asia-Pacific Cross-Border group.

This case study does not constitute a guarantee, warranty, or prediction regarding the outcome of your legal matter.