Kaye Scholer Secures Significant PTAB Decision for Olympus

Kaye Scholer IP attorneys secured a significant victory for Olympus America Inc. in a patent infringement dispute brought by Perfect Surgical Techniques Inc. when the Patent Trial and Appeal Board (PTAB) on June 10 struck down the claims of two of Perfect Surgical’s electrosurgery-related patents as obvious and anticipated. Olympus was represented by Deborah Fishman, Katie Scott and Robert Bugg of Kaye Scholer, along with co-counsel Steven Weisburd of Arent Fox LLP.

“The PTAB ruling for Olympus did exactly what these America Invents Act reviews are supposed to do: short-circuit baseless patent claims that were brought to thwart innovation rather than promote it,” said Kaye Scholer’s Silicon Valley-based IP partner Deborah Fishman. “The Board’s decision validated Olympus’ commitment to fighting spurious patent assertions both before the Board and in district court litigation if necessary.”

In November 2012, Perfect Surgical asserted U.S. Patent Numbers 6,682,527 and 6,030,384, in the Northern District of California court claiming that Olympus and Gyrus Medical Inc.’s surgical products infringed them. The '527 patent discloses a radio frequency generator for use in bipolar electrosurgery and the '384 patent relates to bipolar forceps.

Fishman and Scott were able to get three of the four products accused of infringing the '527 patent dismissed, and filed an early motion for summary judgment of invalidity of the '384 patent, which they won after they had already filed for inter partes review.

In filing petitions with PTAB for inter partes review of both patents, Fishman and Scott argued that the patents were invalid as obvious and anticipated. A three-judge PTAB panel ruled that Olympus showed that the claims under review were either anticipated or obvious over the prior art, and were therefore unpatentable.

With the PTAB finding, Olympus has now successfully invalidated Perfect Surgical’s '384 patent twice, invalidated many of the '527 patent’s claims, and limited the products accused on infringing the '527 to only a single product.