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St. Onge IP Wins Patent IPR with Swear Behind

April 22, 2022 by in General

St. Onge IP attorneys Fritz Schweitzer III, Stephen Zimowski and Jonathan Winter successfully defended U.S. Patent 7,353,555 in an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB). The patent is owned by Sun Pleasure Co. Limited (formerly by Ideal Time Consultants Limited).

St. Onge IP was able to overcome all allegations of anticipation and obviousness asserted in the IPR through legal argument and evidence, including expert testimony and an uncommon “swearing behind” of one of the asserted prior art references.

In its Decision, the PTAB adopted the primary arguments and evidence presented by St. Onge IP, weighing key evidentiary issues in favor of the Patent Owner, and upheld all challenged claims as patentable.

The swear behind defense was available to the Patent Owner because the ‘555 Patent was filed in 2005 and is subject to the patent laws in effect at that time, which permit inventors to “swear behind” prior art references by proving a date of invention earlier than the date of the alleged prior art. In this case, the PTAB agreed that the patent is entitled to a date of invention before a key prior art reference asserted by the Petitioner, due to an earlier conception and commercial production of the claimed invention.  It is rare for the PTAB to rule in favor of a patent owner in a swearing behind defense because it requires very detailed and convincing proof, and many inventors do not retain sufficient evidence of the date and circumstances of making their invention.  The success in this case was due in large part to the inventor’s archive of detailed evidentiary materials, which corroborated his testimony of the earlier conception and reduction to practice of the invention. 

Also of note, St. Onge IP successfully blocked the Petitioner’s attempt to obtain privileged documents through additional discovery. The Petitioner was seeking documents that a witness had in his possession during his deposition, which was conducted remotely over videoconference due to the witness’s location overseas and the Covid-19 pandemic and related restrictions.  St. Onge IP successfully argued against the production of the documents, and the PTAB agreed that the materials were not subject to the limited discovery available in an IPR despite the Petitioner’s assertions that the witness had “used” them to prepare for and during the deposition.

The ‘555 Patent relates to a novel air mattress construction that gives the appearance of a conventional multi-layer pillowtop mattress. The patented air mattress has been widely and successfully commercialized through online and physical stores, including Amazon and Walmart/Sam’s Club, and the patent has been enforced by St. Onge IP and the Patent Owner through Amazon’s UPNEP (now APEX) utility patent enforcement program to effectively exclude a multitude of infringers.