Alston & Bird client McWane Inc. recently won an inter partes review (IPR) proceeding before the USPTO’s Patent Trial and Appeal Board (PTAB), successfully invalidating a reissue patent relating to centrifugally cast utility poles.
One of the world's largest manufacturers of ductile iron products, McWane was sued for infringement of U.S. Patent No. 8,567,155 by Seamless Pole, Inc., in November 2013. In response, McWane filed a first petition for IPR against the ‘155 patent, leading the PTAB to institute the IPR and eventually issue an adverse judgment cancelling all of the ‘155 patent’s claims.
During the first IPR, however, the inventor of the ‘155 patent pursued a reissue application based on the ‘155 patent, which issued as Reissue Patent No. RE45,329 on the same day the first IPR concluded. McWane was again sued for infringement of the reissue patent and responded with a second IPR petition.
Based on McWane’s second petition, the PTAB instituted an IPR of the reissue patent and, following a year-long proceeding, issued its final decision. In a comprehensive win for McWane, the PTAB held all of the reissue patent’s claims invalid, citing an earlier patent by the same inventor as a key piece of prior art. The PTAB’s final decision not only held the reissue patent’s existing claims unpatentable under a pair of separate obviousness grounds, but also denied proposed replacement claims offered by Seamless Pole in a motion to amend.
Representing McWane are Alston & Bird partner Mike Connor and senior associate Chris Kelly of the firm’s Intellectual Property Practice.
The patent-in-suit is U.S. Patent No. RE45,329 E.
The case is McWane Inc. v. Tom W. Waugh, Case No. IPR2016-00266 before the Patent Trial and Appeal Board.