Tonkon Torp has won a significant patent case for its client, CamelBak Products. CamelBak, based in Petaluma, California and founded in 1989, invented the hands-free hydration category and is the global leader in personal hydration gear.
In November 2014, CamelBak was sued for patent infringement on a lid assembly for a beverage container that included cleaning features. Tonkon Torp was selected by CamelBak to defend the litigation, and the firm recommended seeking review of most of the patent claims through the then relatively new process called inter partes review (IPR), available under the America Invents Act of 2011. An IPR allows a defendant to challenge the validity of claims in a patent before the United States Patent and Trademark Office. The procedure has grown in popularity; as compared to district court litigation, it provides a more efficient and effective process for challenging the validity of a patent’s claims. An IPR involves very limited discovery and is heard by a panel of three administrative patent judges at the Patent Trial and Appeal Board (PTAB). The process is front-loaded and requires a diligent team effort to include all the necessary evidence and advocacy in the initial petition.
The Tonkon Torp team, led by Intellectual Property litigators Steven Wilker, Jon Stride, and Eric Beach, worked closely with CamelBak’s outside patent attorney to prepare and file a petition to the PTAB in April 2015 in which they challenged 10 of the 11 patent claims at issue in the case. After the PTAB instituted trial on all 10 of the challenged claims in August 2015, the district court stayed the infringement action and the parties focused their efforts on the IPR. Following depositions of the parties’ experts and additional response and reply submissions, Steven Wilker argued the case at the PTAB in May, 2016. Less than one month later, the PTAB ruled in CamelBak’s favor on all 10 of the challenged claims.
After rehearing was denied by the PTAB, our opponent appealed to the Federal Circuit. The Tonkon Torp team again worked closely with CamelBak’s outside patent attorney to defend the appeal. Steven Wilker argued the appeal at the Federal Circuit in Washington, DC and in the fall of 2017, the Federal Circuit affirmed – once again giving CamelBak the win on all 10 claims. After the Federal Circuit ruled, the parties returned to the district court for proceedings regarding the one remaining patent claim that was not challenged in the IPR. The parties then agreed to the dismissal with prejudice of the plaintiff’s complaint.
Not only was this a major legal victory for CamelBak, but by successfully navigating the IPR process, Tonkon Torp also helped CamelBak significantly reduce the cost and uncertainty of the litigation.