LITIGATION NOTE: ScentAir Prevails Again in Pair of Patent Rulings, Leaving Prolitec Only Narrow Claims

Washington - May 11, 2022: Crowell & Moring secured another win on behalf of ScentAir Technologies, LLC, a global leader in scent marketing, in its long-running patent infringement dispute with competitor Prolitec Inc.

Prolitec sued ScentAir in Delaware in 2020 with four patents claiming removable cartridges for liquid diffusion scenting devices. The Crowell team successfully caused Prolitec to withdraw one patent, leaving 18 claims of the remaining three patents asserted against ScentAir in Delaware. The team then achieved institution of inter partes review as to the validity of two of those patents before the U.S. Patent & Trademark Office.

On April 22, in a clear win for ScentAir, the Patent Trial and Appeal Board handed down a pair of rulings that invalidate 11 of the 18 remaining asserted claims. As reported by Law360, the PTAB’s three-judge panel found those eleven claims obvious in light of various pieces of prior art—including one of ScentAir’s own patents—predating Prolitec’s asserted patents.  This pair of rulings leaves only seven narrow claims that ScentAir does not infringe remaining in Prolitec’s Delaware case. Meanwhile, ScentAir has countersued Prolitec in that case for infringing 78 claims of four ScentAir patents which Prolitec has notably not challenged at the PTAB.

These two PTAB decisions are the latest ScentAir wins in the long-running fight with Prolitec. It has been a decade since Prolitec’s first 2012 complaint in Wisconsin, alleging ScentAir infringed two older Prolitec patents. The key victory for ScentAir there was invalidating all original claims of Prolitec’s asserted patents by inter partes review at the PTAB and the U.S. Court of Appeals for the Federal Circuit, leaving Prolitec only a single narrow amended claim not subsequently asserted by Prolitec against ScentAir.  ScentAir was then declared the prevailing party on its counterclaims of invalidity in Wisconsin and further awarded attorney fees and costs from Prolitec.

“Prolitec has seemingly sought to disrupt ScentAir with nearly 10 years of patent litigation,” says ScentAir CEO Brian Edwards. “With Crowell & Moring at our side, ScentAir has successfully risen to counter each court challenge, all the while bolstering our place as the global leader in the scent market.”

The Crowell team is led by partner Josh Pond and includes partner Vincent Galluzzo, and counsel Robert Kornweiss.