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Higgs successfully defends client from patent claim

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Once a company files a patent infringement lawsuit, it's extremely difficult to get them to withdraw their complaint for no consideration.

Yet that's exactly what attorneys from the San Diego law firm Higgs, Fletcher & Mack were able to do recently.

Led by partner Phillip Samouris, the Higgs legal team was able to get Exhart Environmental Services Inc. to dismiss its complaint against Rancho Bernardo-based Global Products Resources Inc.

Exhart accused GPR's line of animal-shaped decorative fans, called Deco Breeze, of infringing on one of its utility patents.

The plaintiff sought a significant royalty payment and tried to get GPR to stop selling the product.

Samouris, along with fellow attorney Charles Reidelbach -- chair of Higgs' intellectual property group -- researched all the prior art of the plaintiff's patent and found it had been the subject of several previous inventions.

GPR then filed a petition for re-examination with the U.S. Patent & Trademark Office, which granted the request and, in a tentative ruling, rejected every claim in Exhart's patent, stating it was obvious and not patentable.

"Given the USPTO had issued such a strong office action, (the plaintiff) strategically decided to dismiss it and instead try to convince the USPTO that they were wrong," Samouris said.

"It's just not that often that a patent plaintiff, with very good patent council, will voluntarily dismiss a case."

Higgs attorneys will continue to pursue the case in the patent office.

Exhart will try to convince the USPTO that they have a legitimate invention and it was not obvious based on prior art.

"We firmly believe the patent will ultimately be invalidated," Samouris said. "GPR came up with it on their own with their design team in collaboration with their manufacturer."

GPR's products are sold at retailers throughout the United States.

"This was important for our client because this line of fans is an important product for them," Samouris said. "They didn't feel it was fair or right to be paying any royalties (to the plaintiff).

"They're a good client, and a good local company. They came up with a nice idea about a decorative line of fans, Samouris said."

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Higgs Fletcher & Mack LLP

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Higgs Fletcher & Mack LLP Executive(s):

John Morrell

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Steve Cologne

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Jim Harrigan

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