Inter Partes Review (IPR) - Oral Arguements Heard November 13,2020: US Patent #7,531,709
The IPR filed by Remediation Products, Inc. (RPI) reached its final stage on November 13th when oral arguments were heard before the United States Patent and Trademark Office (USPTO). A final ruling on the IPR is expected in the first quarter of 2021
Specifically, the filed IPR focused on Claim #1 of 7,531,709: https://pdfpiw.uspto.gov/
1) A method for accelerated anaerobic dechlorination of subsoil, comprising the steps of: supplying a mixture including a zero valent metal into permeable pathways in the subsoil that chlorinated solvents have migrated to in order to reduce concentrations of dissolved chlorinated solvents in groundwater via chemical reactions with a surface of the zero valent metal providing a hydrogen source via hydrolysis of the groundwater at the surface of the zero valent metal and evolution of hydroxides; and supplying an organic hydrogen donor into the permeable pathways to provide a hydrogen source via the fermentation of the organic hydrogen donor and produce dechlorinating conditions such that indigenous anaerobic bacteria biodegrade residual concentrations of chlorinated solvents, wherein combined use of the zero valent metal and the organic hydrogen donor together in the permeable pathways accelerate dechlorination of contaminants in the subsoil and dechlorinate intermediates of the chlorinated solvents.
The IPR process is complex and expensive. For this reason, IET had attempted to negotiate in good faith with RPI a reasonable solution outside of the IPR. IET had offered a reasonable and appropriate royalty agreement in an effort to avoid the expense and distractions associated with a Patent Office IPR filing. IET's "olive branch" was tossed aside by RPI. RPI instead moved forward with the IPR process.
If successful in its IPR, RPI would invalidate the 709' patent and be free to continue to apply the combination of BOS products with CAT amendments. Further, the historical application of this combination of RPI products would not be considered to be infringements on the 709 claims.
However, in the event RPI's IPR is found to be without basis by the USPTO, past and future in situ remediation projects utilizing the combination of RPI products will expose RPI, their clients, implementers and end users to infringement claims.
The defense of infringement claims by RPI will be hampered by what defenses may be used in future litigations. According to 35 U.S.C. §315(e)(1) and (2), a petitioner in an inter partes review (IPR) that results in a final written decision (FWD) may not raise in the USPTO or a civil action or an ITC proceeding "any ground that the petitioner raised or reasonably could have raised during that inter partes review."
IET is committed to defending and enforcing our intellectual property. We recognize the responsibility we have to our customers and our licensees. We at IET take these responsibilities very seriously. It is unfortunate that RPI has chosen such an adversarial position. As a result of the position RPI has taken, we cannot in good conscience offer RPI, their clients, associated companies, implementors of their products or the consulting engineers that recommend the RPI products a license to 709' moving forward, if as we anticipate, 709' is upheld by the USPTO.
We will continue to update and inform our industry of the status of the 709' IPR and subsequent litigations.
Michael Scalzi, President
Innovative Environmental Technologies, Inc.
Page Updated Last on: Nov 16, 2020