Merchant & Gould Successfully Protects Vexilar’s Patent

PTAB Denies Petition and Rehearing Request; Designates Decision “Informative”
Wednesday, April 17th, 2019

MINNEAPOLIS – April 17, 2019 – Merchant & Gould, a national intellectual property law firm, is pleased to announce that Vexilar, Inc., a Minneapolis-based pioneer in sonar technology, fish finders, and the marine business, won an important IPR victory against Deeper UAB, which unsuccessfully challenged the validity of Vexilar’s patent directed to wireless fish finders using independent displays, such as smart phones and tablets.  (Deeper UAB v. Vexilar Inc., No. IPR2018-01310)

The Merchant & Gould team filed a laser-focused Patent Owner’s Preliminary Response, arguing Deeper did not meet its burden to show a reasonable likelihood that the prior art invalidated Vexilar’s patent and that Deeper’s expert’s declaration was conclusory. The Patent Trial and Appeal Board (PTAB) denied Deeper’s IPR petition, as well as its request for rehearing. Notably, the PTAB increased the status of the denial decision by designating the decision as “Informative,” which indicates that the decision should be followed in most cases because it provides important guidance from the PTAB.

“We are very pleased with the result, which shows that it’s critical for petitioners to make sure they have strong evidence for each ground before going to the PTAB and challenging the validity of a patent,” said Thomas Leach, partner, Merchant & Gould.  “The PTAB exercised its discretion finding Deeper’s validity challenge would not be a good use of the Board’s resources and denied the IPR petition.” 

“Particularly after the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), this decision, and its designation as Informative, serves as an indication and a guidepost from the PTAB that it is willing to entirely deny institution if the Petitioner does not have good arguments for every challenged claim in the petition,” stated Joseph Dubis, Ph.D., associate, Merchant & Gould.

The Merchant & Gould team included Thomas Leach, partner, Minneapolis; Joseph Dubis, Ph.D., associate, Minneapolis; Andrew Lagatta, partner, Minneapolis; and support from others.

“It’s been rewarding to watch the Merchant & Gould team develop and execute a strategy to successfully defend our patented technology and market,” said Steve Baumann, President, Vexilar, Inc. 

About Vexilar, Inc.

Vexilar, Inc. has been in the marine business since 1960, with a history of innovation in fishing products.  Based in Minneapolis, the company is considered to be a “pioneer in sonar technology.”