Larkin Hoffman IP Appellate Team Secures Favorable Ruling for Client by United States Supreme Court


Larkin Hoffman’s intellectual property appellate team won a significant victory in the U.S. Supreme Court on Monday that clarifies patent holders’ rights in certain Patent Office proceedings. The case involves the developing area of inter partes reviews (IPRs). “This decision is a great result for patent owners, and a big step toward vindicating our client’s rights in his valuable patent,” said David Swenson, chair of the firm’s IP appellate practice.

The Court granted a petition for certiorari filed by Larkin Hoffman on behalf of Richard Gramm and his company Headsight, Inc., vacated the judgement of the U.S. Court of Appeals for the Federal Circuit against Mr. Gramm, and remanded the matter for further consideration by the Federal Circuit. Headsight and Mr. Gramm sued Deere & Company in March 2014 for infringing Mr. Gramm’s 2001 patent on a combine header height control apparatus. Deere challenged the validity of the claims of U.S. Patent Number 6,202,395 in multiple IPRs before the Patent Trial & Appeal Board (PTAB), which invalidated 19 of the 34 claims. Deere next challenged remaining claims 12-26 in a separate petition for re-examination in the Patent Office. A patent examiner rejected those claims as obvious, and thus invalid, based on arguments indistinguishable from those that had failed with respect to claims 12-26 in the IPRs. On August 31, 2018, a PTAB appellate panel reversed the examiner’s decision on claims 12-26. In the meantime, the suit in district court against Deere has been stayed since September 12, 2016.

On April 24, 2018, the Supreme Court decided in SAS Institute, Inc. v. Iancu that “partial-institution” decisions addressing only some challenged claims of a patent in IPR proceedings, like the IPR decisions adverse to Mr. Gramm, violate the American Invents Act (AIA), which created IPRs as a new avenue to challenge issued patent claims. In light of SAS, Mr. Gramm asked the Supreme Court to return the matter to the Federal Circuit, and in turn seeks that it be returned to the PTAB, to argue that new final written decisions must be issued in the IPRs that include the determination that claims 12-26 have not been shown to be invalid. Under the AIA, such a determination triggers estoppel against further assertions of the same or similar invalidity defenses against those claims in either additional Patent Office proceedings or district court. 

In addition to David Swenson, Larkin Hoffman’s team of John CotterTom Oppold and Katie Muller represented Headsight and Mr. Gramm in all of these proceedings.

The order can be found here:

SAS is one of the most important patent law decisions of 2018, and it triggered a wave of remands from the Federal Circuit to the PTAB, and reopened IPRs in the PTAB, along with new procedures and guidelines. Monday’s decision is the first time the issue has made it back up to the Supreme Court to address a case that already had been ruled on by the Federal Circuit.