Mar 02 2018

WASHINGTON, D.C.—Womble Bond Dickinson/Moyles IP client DynaEnergetics US, Inc. once again has earned a critical victory in an ongoing IP dispute with a competitor company.

On March 1, the USPTO Patent Trial and Appeal Board ruled in DynaEnergetics’ favor in an inter partes review (IPR), finding that the claims of GEODynamics’ U.S. Patent No. 8,544,563 were unpatentable. The ruling invalidates all claims challenged by DynaEnergetics, including all claims asserted in parallel district court litigation.

In the 43-page opinion in which the Board found invalidity based on three separate grounds, it found that “[b]ased on the evidence in this record, we conclude that there is strong evidence of obviousness and that the weak evidence of nonobviousness does not tip the scale in favor of patentability.”

The PTAB’s decision invalidating the ‘563 patent claims is the latest in DynaEnergetics’ string of victories over GEODynamics.

In 2015, GEODynamics sued DynaEnergetics and co-defendants Anderson Perforating Services, LLC (“API”), and Tong Petrotech, Inc. (“Tong”), for alleged infringement of a separate method patent, U.S. Patent No. 9,080,431, over the use of DynaEnergetics’ DPEX® shaped charges in oil and gas well perforations.

The case was heard in March 2017 in the U.S. District Court for the Eastern District of Texas and after a four-day trial, the jury found in favor of DynaEnergetics, API, and Tong on all counts, and also found that every asserted claim of the ‘431 patent was invalid. One month later, a federal judge in the Eastern District of Texas sided with DynaEnergetics and canceled a trademark held by GEODynamics. Then, in December 2017, the Court granted DynaEnergetics’ request for attorneys’ fees and expenses stemming from the trademark dispute.

DynaEnergetics was represented in the IPR by the Womble Bond Dickinson team of Barry Herman, Preston Heard, and Michael Nullet (in addition to Will Hubbard), and Lisa Moyles of Moyles IP.

Barry Herman is an intellectual property litigation partner working in Baltimore. He represents both domestic and foreign clients in a wide range of intellectual property matters, with an emphasis on patent litigation in district courts, the International Trade Commission, and the USPTO.

Preston Heard is an intellectual property litigation partner who has represented clients in U.S. District Court in numerous states, as well as before the International Trade Commission, and before the PTAB in post-grant proceedings. His practice is focused primarily on patent litigation and covers a broad range of technologies, from oil and gas well drilling and recovery to computer networks to carpet tufting machines.

Michael Nullet is a registered patent attorney and focuses his practice on intellectual property and patent-related disputes. Before pursuing a legal career, Nullet worked for an IT startup that coordinated a multimillion-dollar autism research initiative across a dozen universities.

Lisa Moyles founded Moyles IP, LLC in April 2011. A mechanical engineer by training, she has over 20 years experience in Intellectual Property (IP) law providing clients with practical, actionable advice including training on various aspects of routine and complex IP matters. Her practice encompasses a wide array of technologies in the mechanical, chemical, and electrical arts.