In January 2015, Leapfrog Product Development, LLC, filed an inter partes review petition against Lifefactory, Inc., challenging the patentability of the latter’s claims directed to protective silicone sleeves for glass containers. Lifefactory designs sensible, modern, and eco-friendly sleeved glass containers that can be used for drinking or storage, and it has spent years investing in its proprietary technology and intellectual property. With so much at stake, Lifefactory was highly selective in choosing the right firm to defend its asset.
Lifefactory CEO Roy Mabrey said, “We made it a strategic priority to win the case. Many of the lawyers we talked to gave us great odds, but Fish & Richardson was straightforward about the challenges and potential difficulty we faced. I did not feel like we were being sold but instead like we were talking to a partner who was always going to be straightforward and honest.”
Lifefactory is an industry leader, holding a 25% market share for reusable bottle sales in the natural channel, including all materials, and 95% of the market share for glass bottles in the channel. Fish understood the value Lifefactory’s technology holds for the company’s continuing success. Working together, the Fish team, led by David Hoffman, and Lifefactory developed an effective strategy to combat Leapfrog’s complaint that all claims were anticipated or rendered obvious by the prior art.
“It felt like Fish was always working,” said Mabrey. “Responses came nearly immediately, and I was never left hanging on any question. I felt well prepared for my deposition and generally in sync with the strategy as it progressed. They knew the rules and knew the framework, which provided a significant advantage to Lifefactory and gave us a leg up in the case. We knew the facts were on our side, but without knowing how to navigate the Patent Trial and Appeal Board [PTAB], the facts might not have mattered.”
The petitioner relies on the PTAB to scrutinize and challenge every claim in a patent, in the hope that the board will invalidate the entire patent. The PTAB rules in favor of the petitioner 73% of the time, a clear indication that this is often an unfavorable forum for patent owners. Fish and Lifefactory, however, defied the odds, earning the validation of 13 of the 21 challenged claims. This was a victory for not only Lifefactory and Fish, but also their current and future customers.
“The PTAB’s decision was incredibly validating, from bringing the team together to giving us confidence that we own this market,” said Mabrey. “We now have a proven asset that we can use to prevent our customers from having to settle for knockoffs and inferior products.”
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