PASADENA, CA – May 6, 2016 – Leech Tishman Fuscaldo & Lampl LLC (Leech Tishman) is pleased to announce a recent ruling by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) in the first inter partes review (“IPR”) hearing held in San Jose, CA. Leech Tishman intellectual property partners Jeffrey G. Sheldon, located in the firm’s Pasadena office, and Dr. Laura M. Lloyd, located in the firm’s San Diego Office, participated in this hearing, representing the firm’s client, Tre Milano, LLC. The statement of decision, released by the PTAB on May 3, 2016, determined that the asserted claims of a patent licensed to Conair Corp. are invalid due to anticipation.

Leech Tishman previously issued an alert about the IPR hearing here.

The patent at issue, a hair curler owned by TF3 Ltd. and licensed to Conair, was asserted against Leech Tishman’s client Tre Milano, LLC, in the District Court of Connecticut in October 2014. Leech Tishman was successful in getting the District Court case stayed in favor of the IPR, which is beneficial to Tre Milano, as IPR proceedings are much less expensive than District Court infringement cases.

The PTAB’s written decision stated that six of the asserted claims of the patent owned by TF3 are anticipated by a U.S. patent and a Japanese patent application that both predate the patent licensed to Conair.

“Our client Tre Milano is pleased with the Board’s decision to invalidate claims 1-5 and 11 of the ‘118 patent,” said Sheldon. “The decision was very thorough and well written. Of particular importance for the practitioner is to think twice before ‘incorporating by reference’ another document in a patent application. As stated in my treatise ‘How to Write A Patent Application’ (PLI ): ‘Care must be taken when using incorporation by reference.’ In this case, incorporation by reference of a prior patent application prevented the patentee from obtaining a narrow claim interpretation to avoid the prior art that was held to anticipate the claims at issue.”

For more information about the PTAB’s decision in Tre Milano LLC v. TF3 Ltd., please read this article recently published in Law360.

About Jeffrey G. Sheldon and Dr. Laura M. Lloyd
Jeffrey G. Sheldon is a partner at Leech Tishman and serves as Chair of Leech Tishman’s Intellectual Property Practice Group. Jeffrey is based in Leech Tishman’s Los Angeles office and focuses his practice in all aspects of intellectual property, from prosecution and litigation to domestic and international licensing. Jeffrey is the author of the foremost treatise on how to write patent applications, “How to Write A Patent Application,” first published in 1992 by the Practicing Law Institute.

Dr. Laura M. Lloyd is a partner in Leech Tishman’s Intellectual Property Practice Group and is based in Leech Tishman’s San Diego office. Combining her law degree with her doctorate in Molecular Biology, Dr. Lloyd focuses her practice on intellectual property matters including patent and trademark application preparation and prosecution, both foreign and domestic, negotiation of patent licenses, and trademark coexistence agreements.

About Leech Tishman
Leech Tishman Fuscaldo & Lampl is a full-service law firm dedicated to assisting individuals, businesses, and institutions. Leech Tishman offers legal services in alternative dispute resolution, bankruptcy & creditors’ rights, construction, corporate, employee benefits, employment, energy, environmental, safety & toxic torts, estates & trusts, family law, government relations, immigration, insurance coverage & corporate risk mitigation, intellectual property, internal investigations, international legal matters, litigation, real estate, and taxation. Headquartered in Pittsburgh, PA, Leech Tishman also has offices in Chicago, Los Angeles, New York and Wilmington, DE. For more information call 412.261.1600 or visit us at www.leechtishman.com.