Defendants chances r even LOWER because their IPR petitions are weak.
Quote:
Here, the chances of at least one claim surviving the defendants’ IPR petitions is much higher than the above-described general PTAB statistics due to the fact that defendants’ petitions
are unusually weak. For example, defendants do not assert any anticipation grounds. This means that despite Duo’s counsel knowing about the ’698 patent since it was the subject of the Delaware case in 201310—i.e., for four years—they never identified a single prior art reference that describes the same thing as the ’698 patent. This comes as no surprise since the PTO already reexamined and confirmed the validity of the parent of the ’698 patent, the ’599 patent.
Having no anticipating reference, defendants are forced to resort to obviousness invalidity grounds. According to defendants, it would have been “obvious” for a person of ordinary skill in the art to combine three, and sometimes four, different prior art references to
somehow arrive at the claimed invention.
Another glaring weakness with defendants’ IPR petition is that their own commercial success demonstrates why the ’698 patent is not obvious. It is one of the tenets of patent law that the commercial success of the invention—either the patentee’s commercial success or that of an
infringer—is strong evidence that the invention was not obvious to a person of ordinary skill in the art. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988) (“The commercial response to an invention is significant to determinations of
obviousness.”). Here, defendants’ infringing products, and especially Duo’s, have enjoyed spectacular commercial success. This further weakens their chances of success in the IPR petitions.
Moreover, in the IPR petitions, defendants make the same mistake they did in the prior Delaware case and the same mistake they made in their Markman briefing in this Court.
Defendants rely heavily on the definition of “out-of-band” previously included in the long abandoned grandparent application to the ’698 patent, the ’297 application.
many thanks to
ZPAUL DD
Quote:
Here, the chances of at least one claim surviving the defendants’ IPR petitions is much higher than the above-described general PTAB statistics due to the fact that defendants’ petitions
are unusually weak. For example, defendants do not assert any anticipation grounds. This means that despite Duo’s counsel knowing about the ’698 patent since it was the subject of the Delaware case in 201310—i.e., for four years—they never identified a single prior art reference that describes the same thing as the ’698 patent. This comes as no surprise since the PTO already reexamined and confirmed the validity of the parent of the ’698 patent, the ’599 patent.
Having no anticipating reference, defendants are forced to resort to obviousness invalidity grounds. According to defendants, it would have been “obvious” for a person of ordinary skill in the art to combine three, and sometimes four, different prior art references to
somehow arrive at the claimed invention.
Another glaring weakness with defendants’ IPR petition is that their own commercial success demonstrates why the ’698 patent is not obvious. It is one of the tenets of patent law that the commercial success of the invention—either the patentee’s commercial success or that of an
infringer—is strong evidence that the invention was not obvious to a person of ordinary skill in the art. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988) (“The commercial response to an invention is significant to determinations of
obviousness.”). Here, defendants’ infringing products, and especially Duo’s, have enjoyed spectacular commercial success. This further weakens their chances of success in the IPR petitions.
Moreover, in the IPR petitions, defendants make the same mistake they did in the prior Delaware case and the same mistake they made in their Markman briefing in this Court.
Defendants rely heavily on the definition of “out-of-band” previously included in the long abandoned grandparent application to the ’698 patent, the ’297 application.
many thanks to
ZPAUL DD
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