Tiajoloff and Kelly successfully defends four patents attacked in Inter Partes Review proceedings at the U.S. Patent & Trademark Office
IPRs are initiated by a petition filed with the Patent Trial and Appeal Board (the PTAB) in which the challenger sets out theories for invalidity of a challenged patent. The patent owner can respond to the challenge, after which the PTAB decides to institute an IPR or not. If instituted, a longer procedure of submissions and arguments follows, and the PTAB then issues a Final Written Decision in a year as to whether the challenged patent is valid or not.
One of our clients, Gamon Plus, Inc., sued Campbell Soup for infringement of several of its patents, and Campbell Soup challenged the patents in suit using the post-patent-grant inter partes review process (referred to usually as IPRs) created recently under U.S. patent law.
Our opposition to the petitions convinced the Patent Trial and Appeal Board to refuse to institute an IPR against one of the utility patents challenged by Campbell Soup (the decision not to institute an IPR in IPR2017-00093 is provided here).
The PTAB also instituted full-scale IPRs proceeded against some claims of the other utility patent and two design patents. After undergoing the full IPR procedure for the utility patent and two design patents, we ultimately prevailed against Campbell Soup’s challenge, and the PTAB upheld the validity of contested claims of the utility patent and the validity of the two contested design patents.
An article from Law360 reporting our success in the inter partes review of the utility patent is also reproduced below:
PTAB Upholds Soup Rack IP Claims Contested By Campbell
By Matthew Bultman
Law360 (May 3, 2018, 6:36 PM EDT) — The Patent Trial and Appeal Board on Wednesday upheld part of a display rack patent that was challenged by Campbell Soup Co., setting the stage for an infringement case against the soup maker to resume in Illinois federal court.
The PTAB said that several disputed claims in Gamon Plus Inc.'s patent had not been shown to be invalid as obvious. The board noted that Gamon sold roughly $31 million worth of display racks to Campbell during a seven-year stretch in the early to mid-2000s.
“Based on the complete record before us, patent owner’s evidence of nonobviousness outweighs petitioner’s evidence of obviousness,” the board wrote. “Accordingly, petitioner has not demonstrated … that [the challenged claims] are unpatentable.”
Illinois-based Gamon sued Campbell and Trinity Manufacturing LLC, which makes competing display racks, in the Northern District of Illinois in 2015 and
accused them of patent infringement. The complaint also named The Kroger Co. and Meijer Inc., which use allegedly infringing racks to sell Campbell’s soup.
Gamon's lawsuit included six patents: four design patents and two utility patents. Design patents protect how a product looks, while the more common utility patents protect how it operates. The case was put on hold after Campbell and Trinity challenged each patent at the PTAB.
Wednesday's decision was the last to come from those challenges. The PTAB previously found two of Gamon's design patents were invalid either as obvious or anticipated. The board either upheld challenged patent claims or denied review in the other four cases.
Andrew L. Tiajoloff of Tiajoloff & Kelly LLP, an attorney for Gamon, said Thursday that they were pleased with the result.
"I felt we had a very strong case and was relieved to see the board recognized that," he said.
Attorneys for Campbell and Trinity could not immediately be reached for comment.
This particular proceeding dates back to October 2016, when Campbell and Trinity filed their petition seeking inter partes review. The companies argued that
a host of claims in the patent would have been obvious based on various references, including some earlier inventions.
Following the challenge, Gamon canceled more than a dozen claims in the patent. Those that remained in the inter partes review were addressed in Wednesday's decision.
In its ruling, the PTAB said that the millions of dollars worth of display racks that Campbell purchased from Gamon, which were installed in thousands of stores, along with evidence that Trinity copied Gamon’s rack weighed heavily against finding the claims obvious.
"Petitioner's access to the patented product combined with the substantial similarity of Trinity’s product to the patented product provide unrefuted evidence that patent owner's display racks were copied," the board wrote.
The PTAB did grant Campbell's request to exclude certain testimony from Gamon's CEO and one of the inventors of the patent, Terry Johnson, who said
that Campbell made "hundreds of millions" of dollars in increased sales as a result of using the patented sales rack.
The board said that Johnson didn't have the expertise to reach that conclusion.
It is rare for the board to grant motions that seek to exclude evidence. One recent analysis found that since inter partes reviews and other America Invents
Act reviews were established in 2012, just 101 of the almost 1,330 decided motions have been granted, either in full or in part.
The patent at issue is U.S. Patent Number 8,827,111.
Campbell is represented by Gerard M. Donovan, Mark T. Vogelbacker and Tracy Zurzolo Quinn of Reed Smith LLP.
Trinity is represented by Martin B. Pavane and Darren Mogil of Cozen O’Connor and Ira Jay Levy of Goodwin Procter LLP.
Gamon is represented by Andrew L. Tiajoloff and Edward P. Kelly of Tiajoloff & Kelly LLP.
The case is Campbell Soup Co. et al., v. Gamon Plus Inc., case number IPR2017-00087, at the Patent Trial and Appeal Board.