Drinker Biddle’s Intellectual Property Practice achieved victory on Tuesday, May 5, for client Autel in a Patent Trial and Appeal Board (PTAB) proceeding.  The Board found every challenged claim of the patent in question unpatentable.

As background, German automobile-part conglomerate Bosch Automotive Service Solutions sued Autel for patent infringement in the U.S. District Court for the Eastern District of Michigan.  Autel responded by filing a petition for inter partes review in the U.S. Patent and Trademark Office and Drinker Biddle successfully prosecuted the matter through oral argument, which took place in January 2015.

Opposing counsel argued that the invention claimed in the Bosch patent was patentable because of convenience resulting from the incorporation of known elements into a single universal device.  By way of rebuttal, the Drinker Biddle team directed the three PTAB judges to prescient arguments in the firm’s original petition, citing U.S. Supreme Court precedent that had held that convenience is not a recognized basis for patentability. 

“Autel has shown by a preponderance of the evidence that claims 1, 4–15, and 20–22 of the ’796 patent are unpatentable,” the Board said in its final decision.

The Drinker Biddle team was led by John Smith and Zhun Lu and included Brianna Silverstein, Nick Colic, Chris Bruenjes, Thatcher Rahmeier, and Nate Gallup.

Speaking to Law360 after the decision, John Smith said that “Autel was very pleased that the Board found all of the challenged claims of the ‘796 patent to be unpatentable. In basic terms, the Board agreed with Autel that each of the claims was directed to an obvious combination of admittedly known components,” he said.

He added that the Board denied Bosch’s attempt to amend the claims, and that he considers the decision “to be a total validation of each and every one of Autel’s positions.”

Drinker Biddle lawyers regularly blog on PTAB trials and outcomes. Click here to visit the PTAB Trial Blog.