Clear skies ahead for drone maker DJI after defeating NPE at the PTAB and in the Western District of Texas

Finnegan secured a significant win for client DJI, a leading Chinese drone maker, defeating patent infringement accusations against most of DJI’s products. Synergy Drone, LLC (later joined by Drone-Control, LLC, collectively “Drone-Control”) filed a complaint in the Western District of Texas, accusing SZ DJI Technology Co., Ltd. (DJI) of infringing five patents directed to control of unmanned aerial vehicles (UAVs, or drones). Drone-Control asserted U.S. Patent Nos. 8,200,375 (“the ’375 patent”), 8,380,368 (“the ’368 patent”), 8,649,918 (“the ’918 patent”), 9,079,116 (“the ’116 patent”), and 9,568,913 (“the ’913 patent”). Drone-Control sought damages and a permanent injunction against DJI’s drones with intelligent flight modes, including course lock and home lock.

Finnegan worked with DJI to immediately prepare and file petitions for inter partes review (IPR) on the asserted patents. The Patent Trial and Appeal Board (PTAB) instituted review on all five patents and held a five-hour hearing. Shortly thereafter, the PTAB declared all challenged claims of all five patents unpatentable. The Board also denied Drone-Control’s request to substitute claims for four of the five asserted patents. DJI completely prevailed against 76 original claims and 66 substitute claims in five asserted patents. None of the 142 claims survived.

Drone-Control did not appeal the PTAB’s final written decision for the ’375 patent, and subsequently, Drone-Control dropped its case in the Western District of Texas.