Wolf Greenfield Wins Complete IPR Victory for Saint-Gobain

On March 23rd, Wolf Greenfield achieved a significant victory on behalf of our client Saint-Gobain Performance Plastics Rencol Ltd. A competitor filed an inter partes review (IPR) challenging a Saint-Gobain patent, and our team won a complete victory with all the challenged claims confirmed as patentable—marking a rare instance of a patent surviving an America Invents Act review intact.

The Patent Trial and Appeal Board (PTAB) ruled that the competitor could not show that Saint-Gobain’s design for disk drive assemblies was obvious. Though the competitor argued that similar designs were in the prior art, the decision turned on secondary factors of non-obviousness: commercial success and copying of the specific design Saint-Gobain invented. Proving significant commercial success was an indication that the design was not trivial or obvious. Also, the PTAB rejected the competitor’s excuses for the resemblance between its own products and Saint-Gobain’s design, and agreed with Saint-Gobain that this resemblance was evidence of copying, which reinforced the commercial success finding. This is the first time the PTAB has found claims patentable in an IPR based on secondary factors.

The Wolf Greenfield team included Jerry Hrycyszyn, Ed Walsh, Michael Albert and Josh Miller. Read more about this decision in Law360. Wolf Greenfield was also recognized as a Legal Lion in Law360’s Legal Lions & Lambs.