Below are examples of large and small manufacturers successfully using the inter partes review (IPR) to defend themselves from patent infringement lawsuits based around bad patents the US Patent and Trademark Office (USPTO) should have never issued.
Unlike a trial in federal court, which could have taken these manufacturing companies over five years and cost over $3 million to litigate, an IPR takes no more than 18 months and on average costs between $300,000 and $1 million.
In each short example below, the patents used to sue the manufacturing company were invalidated as a result of the IPR. This is essentially a legal finding that they should have never been granted by the USPTO. Though very few bad patents slip through the system, they can be used to do immense harm to manufacturers.
Patent: U.S. Patent No. 6,029,111“Vehicle navigation system and method using GPS velocities,” owned by Beacon Navigation GmBH
Description:Patent owner Beacon Navigation is a non-practicing entity that had asserted U.S. Patent No. 6,029,111, titled “Vehicle navigation system and method using GPS velocities” against several U.S. auto manufacturers, including Chrysler Group LLC, Ford Motor Co., and General Motors LLC. The patent purported to claim a navigation system that uses “a GPS receiver which provides GPS velocity information” by calculating the distance moved over a certain time interval. In IPR2013-00026, Denso and Clarion successfully challenged the ’111 patent, finding that the prior art anticipated all elements of the challenged claims, and thus the claims were unpatentable.
Patent: U.S. Patent No. 7,630,802“Information Management and Monitoring System and Method,” owned by American Vehicular Sciences LLC (AVS)
Description:Patent owner American Vehicular Sciences LLC (AVS) is a non-practicing entity that had asserted U.S. Patent No. 7,630,802, titled “Information Management and Monitoring System and Method,” against several auto manufacturers with a U.S. manufacturing presence, including Toyota, BMW, Honda, and Mercedes-Benz. The patent purported to cover a system of sensors for monitoring components of a vehicle, a data processing system on the vehicle, and a wireless communication system for communicating the data being monitored on the vehicle to a remote location and notifies an occupant of the vehicle of any component that is not operating properly or may fail. It also claimed a method for using this system while driving, and for using the information to schedule servicing.
In IPR2013-00414, Toyota successfully challenged the ’802 patent, with the PTAB finding that it was unpatentable as either anticipated or obvious due to a combination of known concepts.
Patent: U.S. Patent No. 6,837,590“Illuminated cap and shoe set” owned by Jezign Licensing LLC
Description:Jezign Licensing asserted its patent against Nike, Bebe Stores, and Skechers U.S.A. Specifically, Jezign alleged Nike’s “Mag” shoes, modeled after the ones worn by Michael J. Fox in “Back to the Future Part II” of infringement. The supposed invention in the ’590 patent was directed to “shoes including soles that are switchably illuminated,” and claimed to solve the problem of night safety for outdoor exercisers. The specification of the patent acknowledged that other athletic shows with “illuminated portions on the shoe upper,” “in the heel,” and “in the instep portion of the shoe” already existed. However, the ’590 patent disclosed a push-button switch for continuous illumination of the light source when it was activated.
In IPR2017-00246, Nike successfully challenged the ’590 patent, with the PTAB finding that it was unpatentable as either anticipated or obvious due to a combination of known concepts for illuminating shoes.
Patent: U.S. Patent No. 7,669,678“Textured all-terrain vehicle fenders,” owned by Arctic Cat Inc.
Description:Polaris Industries, Inc., headquartered in Minnesota, is best known for its snowmobiles and off-road vehicles. It successfully challenged Arctic Cat’s patent, U.S. Patent No. 7,669,678, titled “Textured all-terrain vehicle fenders,” which claimed an invention related to body fenders for all-terrain vehicles with textured regions in high scuff areas to protect against scratches.
The PTAB found that the ’678 patent was obvious based on concepts known in the prior art, including patents for off-road vehicles with fenders (U.S. Patent No. Des. 429,663, issued Aug. 22, 2000); the method of producing embossed designs on work surfaces (U.S. Patent No. 4,321,105, issued Mar. 23, 1982); an off-road vehicle in which a rear fender and storage receptable are an integral unit (U.S. Patent No. 5,107,952, issued Apr. 28, 1992); and a molding process that uses a textured film layer to form a composite article with a textured surface (U.S. Patent Appl. Pub. No. 2003/0030177 A1, issued Feb. 13, 2003).
Patent: U.S. Patent No. 9,155,408“Information Management and Monitoring System and Method,” owned by American Vehicular Sciences LLC (AVS)
Description:St. Louis-based Fredman Bros. Furniture Co., which makes adjustable beds, successfully challenged the validity of Bedgear’s patent, U.S. Patent No. 9,155,408, titled “Pillow protector,” after Bedgear asserted infringement in district court. The ’408 patent claimed a pillow cover that comprised a first panel and a second panel connected together to form a cavity, in which the panels were made of the same material, the first panel has an opening, and the pillow cover has a filter on the first panel.
In a decision that relied heavily on the disputed meaning of the word “pillow,” the PTAB found that the ’408 patent was obvious based on concepts known in the prior art, including hypoallergenic pillows that had covers with filters in them.