Lewis Roca Secures PTAB Win for Hyperice, Recovery and Movement Enhancement Technology Company, Clearing Way for Patent Infringement Case Against Sharper Image

Press Release

08/9/2022

LOS ANGELES (August 5, 2022) – A Lewis Roca team representing Hyperice, the maker of the Hypervolt line of percussive massage devices and other wellness products for athletes and consumers, prevailed in a Patent Trial and Appeal Board action that sought to invalidate a Hyperice patent covering the company’s Hypervolt massage guns. The ruling clears the way for Hyperice to pursue a patent infringement action it filed last year against a significant infringer of Hyperice’s patented technology, MerchSource d/b/a Sharper Image.

“We are gratified by the Board’s ruling, which validates our litigation strategy and, more importantly, removes all obstacles to the aggressive pursuit of Hyperice’s patent infringement claims against Sharper Image in federal court,” said Lewis Roca partner Brian Arnold, who represents Hyperice before the PTAB and in the district court case, along with Lewis Roca partner Kyle Kellar and associate Kurt Prange. “In refusing to open a review of the patent at issue, the PTAB’s ruling spares our client the time and expense of a prolonged proceeding regarding patent validity.”

The dispute dates back to June of last year, when Hyperice filed a patent infringement action against Sharper Image in the Central District of California. In early 2022, Sharper Image asked the PTAB to rule on the validity of the patent through a proceeding known as “inter partes review” (IPR), effectively pausing the infringement case.

Most petitions for IPR are granted, and in 2018 the U.S. Supreme Court held, in its SAS decision, that the Board must issue a final written decision with respect to every challenged patent claim if an IPR is instituted. Facing that landscape, the Lewis Roca team leveraged the USPTO’s statutory-disclaimer rule, which allows patent owners to disclaim any claims in a patent, preventing the PTAB or courts from considering any challenges to the relinquished claims. By strategically disclaiming six of its patent’s 18 claims – claims which were not asserted in the district court litigation – Hyperice and its counsel focused the dispute on the patent’s most important claims.

“By eliminating the chance that one insignificant claim would open an IPR of the entire patent, we were better able to protect Hyperice’s most valuable claims,” said Arnold.

The Board determined that Sharper Image failed to show a reasonable likelihood that it would prevail with respect to any single one of the challenged claims.

Hyperice made news last December in a case led by Arnold, convincing the U.S. International Trade Commission to block imports of handheld massage guns from China that infringed the company’s patented percussive massage technology. Hyperice has also leveraged Amazon’s Utility Patent Neutral Evaluation Program to remove hundreds of other infringing products, and Hyperice has filed district court actions against numerous other infringers. The PTAB decision is the latest success in the ongoing effort to protect Hyperice’s unique technology. 

About Lewis Roca

Lewis Roca is an Am Law 200 law firm serving clients globally in complex litigation, intellectual property, business transactions, gaming, government relations, labor and employment, and regulatory counseling. Its offices are located in Albuquerque, Colorado Springs, Denver, Las Vegas, Los Angeles, Phoenix, Reno, Silicon Valley, and Tucson. To learn more about the firm, please visit us at our new website at www.lewisroca.com.

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