ROYAL OAK, Michigan – Brooks Kushman recently secured a significant victory in an IPR dispute involving 4G wireless technology as USPTO Director Vidal recently overturned a lower panel ruling. Neo Wireless sued several automakers including Ford Motor Company for patent infringement. Ford and Volkswagen individually challenged the validity of U.S. Patent No. 10,447,450 through their independent inter parte review (IPR) petitions. Despite Ford and Volkswagen being direct competitors, a lower panel ruled that Ford had a “special relationship” with Volkswagen by virtue of their status as defendants in separate cases consolidated for pretrial purposes in Multi-District Litigation (“MDL”). The lower panel discretionarily denied Ford’s petition in view of the earlier filed Volkswagen petition under General Plastic.
Viewing this as an erroneous application of General Plastic, Ford requested director review of the panel’s denial. On March 22, 2024, Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, vacated the panel’s discretionary denial, holding that Ford and Volkswagen lacked any “special relationship” and that the General Plastic factors did not favor denial of Ford’s petition as the lower panel previously found.
The Director’s reversal of the lower panel’s denial on procedural grounds permits Ford’s IPR petition to proceed to an institution decision on the merits.
Ford was represented in this matter by Brooks Kushman attorneys John LeRoy, Christopher Smith and Kyle Konz. The case is IPR2023-00763.
The notification from the USPTO can be seen here.
About Brooks Kushman P.C.
Founded in 1983, Brooks Kushman P.C. has built a national reputation as a premier intellectual property and technology law firm. We accomplish this with the understanding that the most effective IP solutions come from putting great minds together—our clients’ and our own. With offices in Michigan, California, Washington D.C., and Nevada, we forge strong relationships with corporations, small to medium-sized businesses, and leading universities across the country.
Brooks Kushman counts a number of Fortune 100 Corporations across a variety of industries among its clients. Our attorneys have a deep understanding and broad range of experience in a variety of industries and technologies, including consumer electronics, manufacturing, medical device, computer technology, aerospace, chemicals, biotechnology, and retail. We are also recognized by leading legal publications and rankings, including, Best Lawyers, Law360, Intellectual Asset Management, Managing Intellectual Property, and World Trademark Review. For more information, please visit www.BrooksKushman.com.
