Press Release June 11, 2018

Federal Circuit Rules in Favor of McWane in PTAB Appeal

Alston & Bird client McWane Inc. secured a major victory before the Court of Appeals for the Federal Circuit in a ruling upholding a decision by the USPTO’s Patent Trial and Appeal Board (PTAB) that invalidated a reissue patent relating to centrifugally cast utility poles.

The Federal Circuit action came in response to an appeal from a PTAB inter partes review (IPR) proceeding in which McWane successfully invalidated the subject reissue patent.

One of the world’s largest manufacturers of ductile iron products, McWane filed a first IPR petition after being sued for infringement of U.S. Patent No. 8,567,155 by Seamless Pole, Inc., in November 2013. The first IPR led the patent owner to concede that the ‘155 patent claims were invalid, terminating the proceeding early.

McWane then filed a second IPR petition after the patent owner was granted a reissue patent based on the ‘155 patent and again sued McWane for infringement, this time over the reissue patent.

Based on McWane’s second IPR petition, 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 substitute claims offered by the patent owner in a motion to amend.

On appeal, the Federal Circuit affirmed the PTAB’s invalidity rulings for the reissue patent’s claims and the PTAB’s denial of the motion to amend.

Representing McWane are Alston & Bird partners Mike Connor, Chris Kelly, and Kirk Bradley of the firm’s Intellectual Property Practice.

The patent-in-suit is U.S. Patent No. RE45,329 E.

The case is Waugh v. McWane, Inc., Case No. 17-2343, United States Court of Appeals for the Federal Circuit.

Media Contact
Alex Wolfe
Communications Director

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