Allen & Overy secures victory with patent dismissal and PTAB win in cutting-edge IP litigation case

In July 2017, Reversible sued MSI and others for infringement of its patent, which the company believed covered USB connectors that could be plugged in with either side, facing up. Reversible claimed that standard USB-C connectors infringed this patent. MSI initiated IPR proceedings and moved to stay the district court case; the judge ultimately denied MSI’s motion in the first instance. Four months later, the A&O team renewed the motion, and the judge granted the stay in August of 2018.

The Patent Trial and Appeal Board (PTAB) issued a decision in February of 2020 determining that all claims of the patent were unpatentable based on MSI’s arguments. Reversible appealed to the Federal Circuit and lost to MSI, however, simultaneously, Reversible filed an ex parte reexamination and obtained new claims from the U.S. Patent and Trademark Office (USPTO). Reversible then attempted to insert these claims in an Amended Complaint against MSI.

In response, A&O used a combination of recent cases out of the Federal Circuit to persuade Judge James V. Selna to dismiss the Amended Complaint because of a collateral estoppel bar that fell when the Federal Circuit affirmed the PTAB proceedings—a major win for MSI and A&O’s U.S. IP Technology Disputes team, led by Bijal Vakil, David Tennant and William Wray.

“The result of this case is the best we could hope for, and was years in the making,” said Mr. Vakil, global co-head of A&O’s Technology practice and partner in A&O’s Intellectual Property practice.

“This victory demonstrates the strength of A&O’s end-to-end offerings and global depth of the firm’s technology capabilities, and we’re pleased to celebrate this amazing win on a cutting-edge patent litigation case.”

For further information, please contact Kris Cole at pro-a&o@prosek.com.