Arent Fox Wins Inter Partes Review for Acronis Before Patent Trial and Appeal Board

On September 24, Administrative Patent Judges Jameson Lee, Thomas L. Giannetti, and Garth D. Baer of the U.S. Patent and Trademark Office found for Acronis, Inc., in a patent challenge against Realtime Data, LLC.

Arent Fox LLP patent attorneys Janine A. Carlan and Jasjit S. Vidwan represented Acronis in an inter partes review before the Patent Trial and Appeal Board that resulted in the panel finding that claims 12–14, 20, and 21 of U.S. Patent No. 8,717,204 B2 (“the ’204 patent”) are unpatentable. The decision can be found here.

“We are thrilled with the panel’s decision,” said Ms. Carlan. “We’re very pleased that the administrative patent judges agreed that the prior art we found renders the claims obvious.”

The ’204 patent, titled “Methods for Encoding and Decoding Data,” describes a method of accelerated data transmission over a communications channel using data compression and decompression to provide secure transmission and transparent multiplication of communication bandwidth as well as to reduce latency. Acronis requested inter partes review of claims 12–14, 20, and 21 of the ’204 patent under 35 U.S.C. §103, asserting that the claimed method would have been obvious to a personal of ordinary skill in the art in view of the prior art references Dawson and Gormish. Dawson is a method for selecting an image compression process based on size and color resolution and Gormish describes a tool used for the compression and decompression of data using a state machine.

The judges concluded that Acronis demonstrated “by a preponderance of evidence that claims 12–14, 20, and 21 would have been obvious over Dawson and Gormish.”

“Arent Fox rigorously represents its clients against suits by non-practicing entities like Realtime Data in federal courts and the Patent and Trademark Office using creative defensive and offensive legal strategies,” said Patent Partner Mr. Fainberg, who advises Acronis.

“It’s not unheard of in the IT industry for non-practicing entities to abuse the legal system claiming they invented something that isn’t at all novel,” said James Tucker Bradley, General Counsel at Acronis. “Acronis has stood its ground making it clear that the company is determined to fight to win and will continue to do so with any would-be vendor challenging Acronis’ innovative technology.”

With a strong IP portfolio of 150 patents and patent applications, Acronis is one of the most innovative companies in the industry. More than 5 million consumers and 500,000 business customers in over 150 countries, use Acronis backup, disaster recovery, storage, and secure file sync and share solutions. Acronis delivers easy, fast, complete and affordable data protection of all files, applications and operating systems across any environment — virtual, physical, cloud, and mobile.

Arent Fox is a nationally recognized leader in patent litigation. The firm has been involved in hundreds of suits involving patent infringement and related IP issues. The patent litigation group includes a combination of patent lawyers with varied technical backgrounds and seasoned trial lawyers focusing only on patent litigation. In the past two decades, Arent Fox patent litigators have been lead counsel in more than 100 patent cases in numerous jurisdictions.

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