29 MARCH 2018

A.C. Entis IP achieves another Litigation Success in developing and defending intellectual property for high tech enterprises in Israel and abroad.

Continuing the string of successes in developing and defending intellectual property for high tech enterprises in Israel and abroad, Dr. Allan C. Entis of A.C. Entis IP, Israeli IP Counsel, together with Dr. Tobias Reker of Olswang Germany LLP on behalf of RAD Data Communications, have convinced the European Patent Office to discontinue opposition proceedings initiated by Adva Optical Networking SE, against one of RAD’s patents. The Opposition Division of the European Patent Office issued a formal letter announcing its decision on March 22, 2018.

A.C. Entis IP, longtime patent counsel to RAD Data Communications, notes that the EPO decision completes a third victory in defending RAD against oppositions in Japan, the US, and Europe. Although the same RAD patent was challenged in all jurisdictions, the nature of the challenge differed in each case and required different rebuttal strategies. In an Inter Partes Review at the USPTO Patent Trial and Appeal Board (PTAB), the opposition argued that the RAD patent should be revoked because the invention claimed in the RAD patent would have been obvious to a person of ordinary skill in the art (POSITA). The rebuttal successfully argued that the RAD invention involved a technological paradigm shift and noted to the Board that “POSITAs do not do paradigm shifts”. At the EPO, the opposition argued that the RAD patent claimed an invention that was no more than a genus to a species device that had long been known in the art. The rebuttal pointed out that for the RAD invention to be a genus to the prior art device, a claim to the RAD invention would have to read on the prior art device and that the opposition not only did not provide such a claim but could not draft such a claim.

Dr. Entis said “the victory at the PTAB, the EPO and the JPO indicates the depth of the legal and technological expertise that A.C. Entis provides its national and international clients” and thanked Dr. Yaakov Stein, RAD’s Chief Technical Officer for his nuanced input in both clarifying technical issues and reviewing arguments.