October 17, 2023

Harness IP Team Secures Significant Victory at the Federal Circuit and USPTO in Patent Infringement Battle

Harness IP attorneys Glenn Forbis, Brad Luchsinger, and Jewell Briggs secured a significant dual victory at the Federal Circuit and United States Patent and Trademark Office (USPTO) on behalf of clients Stahls’ Inc. and Siser North America Inc.

The legal battle unfolded when plaintiff Jodi Schwendimann accused Stahls’ and Siser of infringing five of her patents related to printable ink-jet image transfer sheets used for adorning colored t-shirts and various clothing items. Schwendimann initiated litigation in the Eastern District of Michigan and District of Delaware, and her suit also targeted companies Neenah and Avery Dennison. Adding to the complexity, Schwendimann had previously triumphed in a separate case in the District of Minnesota, securing a substantial $4.5 million award for patent infringement against a different company.

The Harness IP team, wielding a multi-faceted defense strategy, boldly challenged the validity of Schwendimann’s patents at the USPTO by initiating petitions for inter partes review (IPR) against each patent. Their argument contended that Schwendimann’s patents should never have been granted, as prior art patents had already disclosed the technology in question. Last year, the USPTO issued comprehensive opinions in the IPRs, ultimately rendering all claims in four out of the five patents as unpatentable. The USPTO also arrived at the same conclusion regarding these four patents through parallel IPRs initiated by Neenah and Avery Dennison.

Schwendimann’s subsequent appeal to the Federal Circuit Court of Appeals was met with an unequivocal denial of the appeal, affirming the USPTO’s decision. This victory in the Federal Circuit stands as a testament to the unwavering defense presented by Harness IP, effectively marking the end of litigation concerning those four patents for Stahls’ and Siser. The future of the remaining patent is currently undergoing USPTO review through ex parte re-examination.