ROYAL OAK, Michigan – Brooks Kushman recently secured a significant victory in an IPR dispute involving 4G wireless technology. Neo Wireless sued several automakers including Ford Motor Company for patent infringement. Ford and Volkswagen individually challenged the validity of U.S. Patent No. 10,447,450 through their independent inter parte review (IPR) petitions. Despite Ford and Volkswagen being direct competitors, a lower panel ruled that Ford had a “special relationship” with Volkswagen by virtue of their status as defendants in separate cases consolidated for pretrial purposes in Multi-District Litigation (“MDL”). The lower panel discretionarily denied Ford’s petition in view of the earlier filed Volkswagen petition under General Plastic.

Viewing this as an erroneous application of General Plastic, Ford requested director review of the panel’s denial. On March 22, 2024, Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, vacated the panel’s discretionary denial, holding that Ford and Volkswagen lacked any “special relationship” and that the General Plastic factors did not favor denial of Ford’s petition as the lower panel previously found.

The Director’s reversal of the lower panel’s denial on procedural grounds permits Ford’s IPR petition to proceed to an institution decision on the merits.

Ford was represented in this matter by Brooks Kushman attorneys John LeRoy, Christopher Smith and Kyle Konz. The case is IPR2023-00763.

The notification from the USPTO can be seen here.