Arent Fox Scores Dual Inter Partes Review Wins for Olympus at USPTO

Mr. Weisburd’s co-counsel in these proceedings are his former partners, Deborah Fishman, Katie Scott, and Robert Bugg of Kaye Scholer LLP. All were aided by the in-house team of Eric Kurtycz and Andreas Noack.

The patents at issue are USP 6,682,527 directed towards a radio frequency generator and UPS 6,030,384 directed towards a forceps, both used in electrosurgery. A three-judge Inter Partes Review panel ruled that the challenged claims in patents both patents were invalid. Inter Partes Review proceedings are an administrative process at the PTO established by Congress as part of the American Invents Act of 2012. The reviews are intended to provide a less expensive, faster alternative to litigation and, it is hoped, help patent-holders defend against aggressive lawsuits brought by non-producing entities, or “patent trolls.”

The Patent Trial and Appeals Board granted Olympus’s Petitions for Inter Partes Review on June 16, 2014. In accordance with the statutory framework requiring a speedy trial, the Patent Trial and Appeal Board hand down its Final Decision within one year of that date. Perfect Surgical Techniques, incorporated in Delaware and operating out of Palo Alto, CA, originally sued three Olympus subsidiaries in 2012, seeking compensatory damages and royalties.

After several victories in the District Court, Olympus filed Petitions for Inter Partes Review of the two patents with the United States Patent and Trademark Office. What remained of the District Court action was stayed pending the outcome of the Inter Partes Reviews.

“We are very pleased that the Patent Trial and Appeals Board agreed with our argument that the challenged claims of the two patents are unpatentable,” said Mr. Weisburd. “We demonstrated to the judges’ satisfaction, using both domestic and overseas patents, that one of PST’s asserted patents was obvious and the other both obvious and anticipated. This is a tremendous outcome for our client.”

Mr. Weisburd has a wide-ranging practice that span transactions and prosecution of patents, as well as litigation and enforcement of IP rights. He routinely advises international technology clients in patent, trademark, copyright, and computer law matters and represents companies in litigation, licensing agreements, and in strategizing and procuring patent and trademark rights.

Chambers Global, Chambers USA, and Legal 500 have recognized Arent Fox’s Intellectual Property practice and its attorneys as industry leaders. Arent Fox is one of the few “go-to” firms for novel and high-profile intellectual property issues. With more than 100 full-time IP professionals, the group offers a full range of services across copyright, patent, and trademark matters.