Company Filed Non-Infringement Suit Pending Before the U.S. District Court for Eastern District of Tennessee
Procon Analytics, a global leader in connected car telematics, confirmed that the pathway to invalidate Spireon’s ‘598 Patent has been paved. The Patent Trial and Appeal Board has held that Spireon’s ‘598 Patent is eligible for post-grant review “for several reasons.” This finding is the first in a series of steps that Procon Analytics strongly believes will result in the invalidation of Spireon’s ‘598 Patent. The fight now continues in federal court, where Spireon is named as a Defendant.
At issue is Spireon Inc.’s U.S. Patent No. 10,089,598. Procon Analytics believes so strongly that its products do not infringe the claims of this ‘598 Patent, that in addition to requesting a U.S. Patent Trial and Appeal Board review, it has filed a suit pending before the U.S. District Court for the Eastern District of Tennessee (Case No. 3:19-cv-00201-PLR-HBG) asking that the Court find non-infringement and that the claims of the ‘598 Patent are invalid.
While the Patent Trial and Appeal Board chose not to institute a full review, the Board did find that the priority date previously asserted by Spireon is not applicable. This means that public disclosures by Spireon or anyone else, prior to April 21, 2015, amount to prior art that can invalidate the patent. As the PTAB stated:
We agree with Petitioner (Procon Analytics) that the ‘598 Patent is eligible for post-grant review for several reasons. To begin with, we determine Petitioner met its burden to show that at least one claim of the ‘598 Patent is lacking written description support in the parent ‘325 application.
Procon Analytics looks forward to proving to the Court that its system does not infringe the very narrow claims of the ‘598 Patent and that the claims of the ‘598 Patent are invalid. The ‘598 Patent is directed at a well-known technology approach to managing an automotive dealership’s vehicle inventory, by pairing a tracking device to a vehicle. This approach is broadly described by a number of earlier patents in the field.
Procon Analytics’ CTO, Bill Cheney commented, “Given the clear support this PTAB decision provides to strengthen our case, it’s amazing that Spireon management is claiming a win here. Perhaps they didn’t actually read the decision. They certainly didn’t understand it.”
As a technology leader, Procon Analytics respects the intellectual property of others and takes all such claims very seriously. The company continues to develop new technology in this area, while also recognizing that certain technology has been in use in the industry for a long time, making it open for all to use. We look forward to Procon Analytics’ position being fully validated in Federal Court.