Cases & Deals

Avid successfully defends PTAB patentability ruling before Federal Circuit

Clients Avid Technology Inc.

Jones Day, on behalf of Avid Technology, Inc. ("Avid"), successfully obtained a unanimous panel decision of the United States Court of Appeals for the Federal Circuit on March 1, 2016, affirming the PTAB's final written decision confirming the patentability of claims of Avid's U.S. Patent No. 5,495,291, directed to video decompression technologies.

Avid, a pioneer in video and audio production technology, has developed and patented solutions for creating and editing digital video, including movies and television programs. Avid had originally sued Harmonic, Inc., in the District of Delaware, accusing Harmonic of infringing several claims of Avid's '291 patent. In response, Harmonic challenged Avid's patent at the PTAB (Case No. IPR2013-00252), alleging the claims of the '291 patent were unpatentable based on a variety of prior art grounds. Avid, represented by Jones Day, was successful in defending the patent from the start, garnering an early ruling at the institution stage of the proceedings that Harmonic's challenges to four of the '291 patent claims were without merit. At the conclusion of the trial, the PTAB's final written decision confirmed that six additional claims (claims 11-16) of the patent were not unpatentable.

On appeal, the Federal Circuit unanimously affirmed the PTAB's rulings in favor of Avid, agreeing with Avid that Harmonic had failed to make a case that the claims of the '291 patent were unpatentable. The Federal Circuit stated: "On this record, we conclude that there is substantial evidence to support the Board's finding that [the prior art] neither teaches nor suggests the [] limitation in claim 11." The PTAB's patentability holding for claims 11-16 was, thus, affirmed.

The cross-office, cross-practice Jones Day team representing Avid included Greg Castanias in Washington, DC, who argued the case in the Federal Circuit on behalf of Avid, Joseph Sauer in Cleveland, and Matt Johnson in Pittsburgh.

Harmonic, Inc. v. Avid Technology, Inc., IPR2013-00252 (PTAB); 815 F.3d 1356 (Fed. Cir. 2016)