Jenner & Block

Firm Wins Patent Office Inter Partes Review Proceeding for Great Dane LLC

Jenner & Block recently earned an important win in a Patent Office inter partes review proceeding challenging a patent related to tire inflation systems for tractor-trailers that was asserted against client Great Dane LLC. 

The plaintiff and patent owner, Trans Technologies, had alleged patent infringement against Great Dane as well as Hendrickson USA LLC and Quest Global, Inc. in a federal district court action in the Northern District of Georgia.  Trans Technologies claimed damages for a reasonable royalty, lost profits and willful infringement.

In response to the allegations, the defendants filed the petition for inter partes review with the Patent Office.  The Patent Office adopted Great Dane’s arguments that the patent was invalid and should not have issued from the Patent Office.   The Patent Office analyzed what it called the “strong evidence” presented that the invention would have been obvious to those of skill in the art at the time of invention under 35 USC Section 103.   The Patent Office adopted each of the three separate grounds of invalidity on all of the claims challenged by Great Dane. Read the opinion here.

The Patent Office credited Great Dane’s argument that the patent owner had not invented the first tire inflation system with the ability to both inflate and deflate mechanical means.   For example, Great Dane showed that US Patent No. 2,317,636 to Parker teaches a foundational mechanical system that both inflates and deflates tires for World War II-era trucks using standard check and relief valves, as claimed by the patent owner.  Applying Parker’s tire inflation system in the context of a tractor-trailer of later years as claimed, such as the basic tire inflation system of US Patent No. 4,387,931 to Bland, would have been a straightforward rearrangement of mechanical parts.  The obvious combination of Bland and Parker would require no more than a few hand tools.   The Patent Office also rejected the patent owner’s arguments that other evidence of non-obviousness outweighed this kind of evidence from the extensive prior art presented in the proceeding.  The Patent Office ruling was on December 3, 2018, and became public on February 14, 2019.

Following the Patent Office’s decisive ruling, the parties agreed to dismiss the accompanying district court litigation with prejudice.  This dismissal resolves the parties’ dispute.

The team representing Great Dane included Chair Craig C. Martin; Partners Timothy J. Barron, Sara Tonnies Horton and Michael G. Babbitt; Litigation Counsel Lisa M. Schoedel; and Paralegal David Nelson.  This team worked closely with co-counsel for Hendrickson USA LLC and Quest Global, Inc.