ScentAir Wins Delaware Jury Verdict Against Prolitec Patent Claims

Washington – February 8, 2024: Crowell & Moring secured a resounding victory for ScentAir Technologies, LLC on Friday, January 26^th in ScentAir’s long-running patent infringement battle against competitor Prolitec, when a Delaware federal jury found ScentAir did not infringe Prolitec’s asserted patents. This win marks another milestone in ScentAir's history of successfully defending its innovative technologies and intellectual property from Prolitec’s misguided assertions of patent infringement.

“As a company that strives to do the right thing the right way, ScentAir feels vindicated,” said Samantha Lloyd Parker, Vice President and General Counsel for ScentAir. “As ScentAir has resolutely defended its technologies with the support of skilled counsel over the past twelve years, the U.S. Patent Office, the Federal Circuit, and the District of Wisconsin have all ruled for ScentAir over Prolitec. And now, ScentAir is especially heartened with the ruling by this Delaware jury of our peers.”

After ScentAir beat Prolitec’s original 2012 lawsuit in Wisconsin by invalidating Prolitec’s asserted patents at the Patent Office and Federal Circuit (and winning an award of attorneys’ fees), Prolitec filed the current lawsuit in July 2020 to the U.S. District Court of Delaware, alleging ScentAir’s Breeze product infringed four different patents directed to removable cartridges for use with liquid diffusing scent devices. Within months, ScentAir secured its first strategic win, causing Prolitec to withdraw one of its patents, narrowing Prolitec’s case to eighteen claims across three patents. In April 2022, ScentAir secured its next win at the Patent Office, when it successfully invalidated eleven of those eighteen remaining claims through Inter Partes Review (IPR). In May 2023, Crowell & Moring secured its next win for ScentAir when Prolitec was forced to withdraw the assertion of another one of its patents, leaving Prolitec to assert just six narrow claims across two patents.

ScentAir’s success continued in December 2023, when Judge William Bryson, presiding by designation from the Federal Circuit, ruled the accused ScentAir Breeze product could not literally infringe any of Prolitec’s remaining claims. Judge Bryson further excluded testing of Prolitec’s technical expert as unreliable under Daubert, and similarly excluded much of the opinions of Prolitec’s damages expert because he failed to properly apportion value to the asserted claims. The jury’s verdict of no equivalent infringement at the conclusion of the January 2024 five-day trial—covered by Law360, “Del. Jury Finds ScentAir Didn't Infringe Liquid Air Freshener IP”—once again extends ScentAir’s wins in defending against Prolitec.

After the years of litigation that it instigated, Prolitec walked away with a mere fraction of its patent claims standing and no monetary or injunctive relief to show for its wasted efforts. “The jury got this one right. ScentAir’s own history of innovation impressed, and Prolitec’s patent claims fell flat,” said ScentAir counsel Josh Pond. 

ScentAir next looks to trial back in Delaware of its U.S. Patent 10,838,388 infringement counterclaims against Prolitec’s top-selling Aera product, featuring the system’s app-controlled scent programming and delivery. In stark contrast to ScentAir’s successful IPR against Prolitec’s patents, in which a majority of the asserted claims were cancelled, Prolitec’s request for Ex Parte Reexamination of ScentAir’s ’388 patent proved fruitless: On January 23, 2024 (Day 3 of the Delaware trial), the U.S. Patent and Trademark Office notified the parties it agreed with ScentAir that all original claims 1-20 of the ’388 patent should be confirmed as patentable.

ScentAir’s Crowell team is led by partners Josh Pond and Vincent Galluzzo, and includes counsel Molly A. Jones and associate Ryan Fitzgerald. The team garnered a “Shout-Out” from American Lawyer’s “Litigators of the Week” listing for the win.

About Crowell & Moring LLP

Crowell & Moring is an international law firm with operations in the United States, Europe, MENA, and Asia. Drawing on significant government, business, industry and legal experience, the firm helps clients capitalize on opportunities and provides creative solutions to complex litigation and arbitration, regulatory and policy, and corporate and transactional issues. The firm is consistently recognized for its commitment to pro bono service, as well as its programs and initiatives to advance diversity, equity, and inclusion.  

Media Contact:

Email: prteam@crowell.com