Meredith Martin Addy, co-founder and managing partner of Atlanta-based patent litigation firm AddyHart P.C., was tapped by nonprofit advocacy organization Fair Inventing Fund to write an amicus curiae brief in support of Jump Rope Systems in its petition for certiorari to the US Supreme Court in Jump Rope Systems, LLC v. Coulter Systems, LLC dba Rogue Fitness.
Jump Rope is appealing a decision in the US Court of Appeals for the Federal Circuit to uphold a decision of the Patent Trial and Appeal Board (PTAB) during an inter partes review proceeding (IPR) in Jump Rope v. Coulter holding Jump Rope’s patent invalid.
Fair Inventing Fund argues that the Federal Circuit’s decision sets a dangerous precedent, presenting to the Supreme Court a constitutional question whether a determination of unpatentability during an IPR under the PTAB’s lower evidentiary standard—a preponderance of the evidence—has the effect of estopping concurrent or subsequent infringement lawsuits in the federal district courts, in which the burden of proving invalidity is clear-and-convincing evidence.
Fair Inventing Fund argues such collateral estoppel effect renders the nation’s Article III courts powerless to consider infringement claims as they have done throughout the history of American jurisprudence in patent cases. It further argues that the Federal Circuit’s decision evidences a two-class system, disproportionately favoring litigants with ready access to capital and other resources.
“A decision in the PTAB to render “not patentable” a previously issued patent should not preclude an infringement action in our district courts,” says Addy, “especially for damages that occurred prior to the PTAB’s determination,” says Addy. “Unlike the PTAB, Article III courts derive their authority and purpose from our Constitution and obey a higher burden of proof. The collateral estoppel effect of such a determination by an administrative tribunal delivers a devastating blow to inventors.”
Addy notes that the cost of prosecuting an IPR is significant and well-capitalized companies can more easily access the courts than can entrepreneurial firms or solo inventors: “By filing in the PTAB, defendants gain access to a tribunal that routinely invalidates patents, but under a lower burden of proof,” Addy says. “The costs of an IPR are high. And the negative outcomes that result are more damning to inventors than the costs.”
Jump Rope’s invention uses a bearing shaft and pivoting eye-style design that allows a jumper to create swings much faster than with a traditional jump rope. Jump Rope Systems filed suit against Rogue Fitness in July 2018, alleging Rogue’s willful and intentional infringement of Jump Rope’s unique jump rope handle, describing how it had approached Rogue Fitness asking Rogue to license Jump Rope’s pivoting-eye speed jump rope technology, but that after good-faith negotiations Rogue broke off communications then began marketing and selling no fewer than fourteen different styles of infringing products imported from overseas.
Facing Jump Rope’s lawsuit in the district court, Rogue’s filed a petition for IPR, during which proceeding under its lower evidentiary standard the PTAB determined that Metz’s previously issued patents were unpatentable. The Federal Circuit affirmed the PTAB on a Rule 36 ruling.
The patents at issue are U.S. Patent Nos. 7,789,809 and 8,136,208. The petition for certiorari of Jump Rope Systems, LLC, is on appeal of a nonprecedential decision per curiam on June 28, 2022, to affirm a panel decision of the Federal Circuit in Jump Rope Systems, LLC v. Coulter Systems, Inc., No. 22-1624 (Fed. Cir. 2022). Fair Inventing Fund was joined by amicus curiae Eagle Forum Education & Legal Defense Fund in filing a brief in favor of Jump Rope. DivX LLC filed a brief in support of neither party. AddyHart attorneys Gregory J. Gulliver and Brandon C. Helms joined Meredith Addy in writing Fair Inventing Fund’s brief.
About Fair Inventing Fund
Fair Inventing Fund was established in 2020 to advocate for the rights of people who invent but who are not equally and/or equitably represented under prevailing conditions in the US patent ecosystem. Creating, commercializing, and patenting new technology is capital-intensive, and Fair Inventing Fund believes these costs pose barriers to those without access to capital and disproportionately so for women, people of color, veterans, and people from socioeconomically disadvantaged areas.