April 26, 2019
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The United States Patent and Trademark Office (USPTO) has denied for a second time a company’s application to invalidate a competitor’s patent relating to auto-activated body cameras.
The USPTO rejected a request from Scottsdale, Arizona-based Axon Enterprise, Inc. to re-consider its application for inter partes review (“IPR”) of the validity of certain patents held by Digital Ally, a company based in Lenexa, Kansas that produces body-worn and vehicular cameras for use in law enforcement.
Inter partes review is a statutory process administered by the USPTO that allows parties to challenge the validity of one or more claims in a patent through an application to the Patent Trial and Appeal Board. The USPTO will initiate a review if the challenging party can demonstrate a reasonable likelihood of success in challenging the patent.
Axon initially filed for IPR in December 2016, and, on July 6, 2017, the USPTO released its decision denying review on the grounds that the request was deficient. This request to reconsider followed and the USPTO has recently rejected IPR for a second time, citing Axon’s attempt to present new arguments or evidence through the reconsideration request. Axon is now barred from filing any additional challenges through the IPR process.
In a separate infringement proceeding in the United States District Court in Kansas, Digital Ally is seeking $204 million from Axon for willful infringement of Digital Ally’s auto-activation patents. Axon maintains that the USPTO’s decisions on its IPR applications do not necessarily mean that Digital Ally will be successful in its infringement lawsuit, and Axon is not yet liable for any damages as a result of the USPTO’s IPR decision.
In a press release following the USPTO’s decision, Digital Ally suggested that the IPR decision limits the ability of competitors to establish the invalidity of Digital Ally’s auto-activation patents and may serve as a prediction for the outcome of the company’s ongoing infringement action against Axon.
Body-worn cameras of the kind at issue in these proceedings are the subject of significant debate regarding their usefulness in recording and reducing uses of force by law enforcement.
Authors: Jaclyn Tilak and Wes Dutcher-Walls
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