Tampa Bay (or should we say “Champa Bay“) has become a dominant force in the professional sports arena. Even more great news is that our sports teams are not the only ones winning. Tampa Bay tech companies are seeing a surge of growth and success. Recently, our client emerged victorious in a Federal Circuit IPR Appeal in an impressive manner. After Smith & Hopen won the IPR trial for our client (more details below), the losing party appealed the case to the Federal Circuit. However, the parties reached a settlement before the appeal began, requiring that Smith & Hopen sit out the appeal process. Nevertheless, the Federal Circuit upheld our IPR win and did so with a single word: AFFIRMED.

The Federal Circuit decision affirming the IPR win

The facts of the case

This case pertains to water blasting machines used to strip road markings and remove airport runway rubber.

Patent drawing from a patent that was the basis for the Federal Circuit IPR win
Patent drawing from US Pat. No. 7,255,166

In 2018, Blasters, Inc.–a prominent Tampa business and a longtime Smith & Hopen client–was accused of patent infringement. Smith & Hopen partner Nicholas Pfeifer–the lead attorney in this case–immediately went to work. After researching a ton of prior art, we knew that the asserted patent claims should have never been issued. Although this may sound strange to those not familiar with the patent practice, the USPTO makes mistakes. Patent examiners are generally extremely knowledgeable in their technical fields, but may not be able to unearth all relevant prior art due to the time constrains of patent examination. When such mistakes happen, the most effective route for invalidating a wrongly issued patent is through an IPR.

Without getting into the details of the IPR trial, Smith & Hopen prevailed. We proved that the key claims of our client’s competitor’s patent were invalid. Faced with inevitable loss of its patent and litigation, the losing party appealed the IPR decision to the Federal Circuit.

The settlement

At the onset of the appeal, our client’s competitor offered a settlement. One of the terms of the settlement required that Smith & Hopen sit out the appeal process. Although we don’t like watching from the sidelines, the settlement made business sense for our client. And so, the parties signed the settlement agreement, and Smith & Hopen withdrew from the appeal.

The Federal Circuit IPR Appeal win

With Smith & Hopen sidelined for the duration of the appeal, our client’s competitor presented its strongest case for reversal of the IPR decision. All to no avail. The Federal Circuit judges deemed the IPR case so decisive that they didn’t even write an opinion explaining why they were upholding the IPR win. Indeed, the entire appellate decision contained just a single word: AFFIRMED.

There are close wins, and then there are statement wins (like Tampa Bay Buccaneers defeating Kansas City Chiefs 31-9 in the Super Bowl LV). With close wins, a single overturned call can change the final outcome. However, when a win is decisive, it is impervious even to the most one-sided review. Congratulations Blasters and Nick Pfeifer on the job well done. Let’s go Champa Bay!