Haynes Boone Partner Gregory Webb spoke to World IP Review on the firm’s successful representation of EagleView in two inter partes review challenges at the PTAB the significance of the cases for petitioners and patent owners. Read an excerpt below:
Webb said the team, which included partners Debbie McComas and Jonathan Bowser and associates Angela Oliver, Adam Erickson and Laura Vu, was “very pleased the board agreed with our positions and denied the institution of both IPRs.”
“The rulings help protect EagleView’s competitive edge in the geographic-imaging space,” he added.
Webb offered WIPR some insight on how his team won the cases, sharing why they highlight the critical importance of detailed and well-organised arguments in IPR petitions.
What is the background of this case?
The two IPRs at issue are related to a district court litigation where EagleView accused Nearmap of infringing several patents related to EagleView’s geospatial technology.
In filing the IPRs earlier this year, Nearmap sought to invalidate claims of two of the asserted patents. More specifically, with IPR2024-00716 Nearmap pursued invalidation of claims 1–2, 4–6, 9–13, and 15 of US patent number 10,671,648 related to integrated centralised database systems and methods.
Similarly, with IPR2024-00729 Nearmap pursued invalidation of claims 1–5, 14, 19–21, and 26–27 of US patent number 9,182,657 related to systems for capturing images and corresponding geolocation data.
How did your legal strategy lead to a win?
The legal strategy employed in both IPRs involved countering Nearmap’s arguments by highlighting deficiencies in the IPR petitions. For each case, we emphasised that the petition failed to provide a clear and detailed explanation of how the prior art references disclosed or rendered obvious the claimed limitations of the patent.
Also, for IPR2024-00729 we focused on the fact that the petition failed to show how the prior art met a specific claim construction proposed by Nearmap.
In the end, the board agreed with us and determined Nearmap had not established a reasonable likelihood of prevailing as to any of the challenged claims for either patent. More specifically, the board found that Nearmap’s petitions lacked the necessary specificity and clarity in mapping the prior art to the claimed limitations required for institution of a trial.
The board also agreed with us that, for the ’657 patent, Nearmap had failed to establish how the prior art taught the claim construction proposed in the petition.
Read the full article at World IP Review.
