Inter Partes Review Worthwhile Alternative to Patent Litigation

06 February 2014 Dashboard Insights Blog

The United States Patent and Trademark Office (USPTO) recently issued its second decision in a new inter partes review proceeding. In the decision, the USPTO Patent Trial and Appeal Board invalidated all of the claims of the patent under review.

The patent was related to a no-idle air conditioning system used for long haul trucks. In July 2012, the patent owner, Bergstrom Inc. filed a patent infringement litigation against Idle Free Systems Inc. in the U.S. District Court for the Northern District of Illinois.  In response to Bergstrom’s infringement allegations, Idle Free Systems responded with its own allegations that the patent was not infringed and invalid. However, instead of challenging the validity of the patent in district court, Idle Free Systems filed a request for inter partes review in the USPTO. After the USPTO agreed to institute the inter partes review proceeding, Idle Free Systems  was able to convince the district court in Illinois to place the litigation on hold while the USPTO evaluated the validity of the Bergstrom patent.

For Idle Free Systems, the inter partes review proceeding resulted in a complete victory. Bergstrom’s patent was invalidated by the USPTO, which held that all of the claims of the patent were invalid over the prior art. The USPTO also denied Bergstrom’s attempt to amend the claims of the patent in order to avoid the prior art. By invalidating the patent in the inter partes review proceeding, Idle Free Systems was able to effectively stop the litigation before it started. Within about 18 months of the filing of the district court litigation by Bergstrom, Idle Free Systems was able to invalidate the patent-on-suit and completely avoid the disruption and expense of a patent infringement litigation. The Board’s decision reinforces the potential value of the new inter partes review proceedings as an alternative to litigation. These proceedings will likely continue to be utilized by accused patent infringers, especially when the validity of a patent is suspect.

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