Client Successes

Eliminating Spillover via an Inter Partes Victory

Eliminating Spillover

The Firm secured a complete victory for SSW Holding Company, Inc., in an inter partes review proceeding challenging the validity of an SSW patent, making its client one of just a handful to emerge from the newly established inter partes review process with every challenged patent claim fully intact.

Inter partes review (IPR) is a streamlined process for challenging patents created through the Leahy-Smith America Invents Act of 2011 and, to date, has proven favorable to those challenging patents. Of the 78 decisions issued in IPR proceedings through June of 2014, the Patent Trial and Appeal Board cancelled or invalidated nearly 80 percent of the patent claims before it. In only 14 percent of such cases did the board find in favor of the patent owner with respect to all of the patent claims under consideration, as it did in Schott Gemtron Corp. v. SSW Holding Company, Inc. The Patent Trial and Appeal Board’s decision rejected arguments that SSW’s patent—which covers spill-containing refrigerator shelving technology used by major appliance manufacturers—was “obvious” and therefore invalid. Oral argument in the case took place on June 23, 2014.

Protecting Carbon-Capture Technologies

Protecting Carbon-Capture

Marshall, Gerstein & Borun LLP obtained a successful result for CO2 Solutions, Inc., in an Inter Partes Review (IPR) of one of CO2 Solutions’ patents covering its enzyme-based technology for capturing carbon dioxide from exhaust gas. The Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office ruled in favor of CO2 Solutions on four of the five grounds of review, upholding CO2 Solutions’ commercially significant claims of the challenged patent.

CO2 Solutions’ proprietary carbon-capture technologies, as covered by the upheld patent claims and by other patents in CO2 Solutions’ portfolio, provide environmentally-friendly, efficient, and cost-effective methods for reducing carbon emissions. As stated by Evan Price, President and CEO of CO2 Solutions, “We believe this confirms CO2 Solutions’ possession of the least expensive and most environmentally friendly carbon capture technology available on the market.”

IPR Win for ACCO’s ClickSafe® Locks

Marshall Gerstein successfully represented ACCO Brands Corporation and ACCO Brands USA LLC in Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB), appeal of that decision to the U.S. Court of Appeals for the Federal Circuit, and in related infringement litigation in the Eastern District of New York, in which Think Products accused ACCO’s ClickSafe® line of computer locks of infringing two Think Products patents.

Marshall Gerstein petitioned for IPR of each asserted patent, arguing that the Think Products patents were obvious over combinations of prior-art references, and anticipated by a published video disclosing the accused ClickSafe® product.

In both IPRs, the PTAB ruled in favor of ACCO on all grounds of review, cancelling all challenged claims of the patents, and these decisions were upheld on appeal to the Federal Circuit.

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