Board sides entirely with Spectrum in IPR proceedings against Longhorn Vaccines & Diagnostics; in unprecedented move, cancels all Longhorn patent claims and sanctions Longhorn for “egregious abuse” of PTAB process
Irvine, Calif., May 23, 2023 – A team from Knobbe Martens led by Ali Razai secured a decisive, complete and unprecedented victory for Spectrum Solutions LLC in inter partes review (IPR) challenges of five separate patents owned by Longhorn Vaccines & Diagnostics.
In an Order granting Spectrum’s Motion for Sanctions, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) found that Longhorn “committed an egregious abuse of the PTAB process” during the IPR proceedings and—as a sanction—cancelled all 183 claims across the five challenged patents. This marks the first time since Congress enacted the IPR process that the PTAB has cancelled all claims of a patent based on the patent owner’s “unwarranted disregard relating to its duty of disclosure and fair dealing before [the PTAB].”
The PTAB also issued Final Written Decisions on the merits of Spectrum’s IPRs, concluding that 176 out of the 183 claims were unpatentable as obvious. Nonetheless, the PTAB cancelled all 183 claims as a result of its Sanctions Order. The Board also rejected Longhorn’s attempt to amend the claims.
Background
Spectrum’s novel whole saliva collection device became the first product granted Emergency Use Authorization by the Food and Drug Administration for the collection of samples for RT-PCR Covid testing. In November 2020, Longhorn filed suit against Spectrum alleging that Spectrum’s SDNA product infringed several of Longhorn’s patents. The Knobbe team petitioned for inter partes review of the asserted patents at the USPTO. The district court litigation was stayed after the PTAB instituted IPRs on five asserted patents.
In responding to Spectrum’s IPR petitions, Longhorn commissioned a third-party lab to perform testing on a chemical composition disclosed in a prior art reference. The Knobbe team subsequently learned that Longhorn had selectively and improperly withheld material results of this testing that were inconsistent with Longhorn’s arguments and also served as evidence of unpatentability of the original patent claims and Longhorn’s proposed substitute claims.
Spectrum filed a Motion for Sanctions against Longhorn and requested that the Board enter judgment against Longhorn as a result of the misconduct. The PTAB issued contemporaneous Orders cancelling all 183 claims in the five patents as a sanction for Longhorn’s egregious misconduct and separate decisions on the merits of the five IPRs, finding that Spectrum had proven by clear and convincing evidence that 176 out of the 183 claims were obvious and unpatentable. A copy of the Sanctions Order may be found here.
Commenting on the Board’s orders, Mr. Razai said, “It was a very difficult decision to request sanctions, but Spectrum was left with no choice under the circumstances. The PTAB’s unprecedented Order cancelling all claims in the five Longhorn patents validates Spectrum’s decision and allows Spectrum to continue focusing on its innovative technology without the threat of meritless legal action posed by these patents.”
In addition to Mr. Razai, the Knobbe Martens team included Joe Jennings, Paul Conover, Ben Anger, Nicholas Zovko, William Adams, Nathanael Luman, Brandon Smith, David Kim, Nick Belair, and Brian Barnes.
About Knobbe Martens
Knobbe Martens is one of the most highly respected intellectual property law firms, offering all aspects of intellectual property and technology law. The firm’s litigation group handles cases throughout the U.S. and coordinates strategy for disputes worldwide. Founded in California in 1962, the firm has about 300 lawyers and scientists based in offices located in Orange County, Los Angeles, New York, San Diego, San Francisco, Seattle and Washington D.C. Knobbe Martens serves a diverse international client base, from multinational corporations to emerging businesses of all stages. More information about the firm can be found at www.knobbe.com.
