Successful Trial Work for Satisfied Clients
Patterson + Sheridan has established a strong track record of performing repeat trial work for satisfied clients. Working in close consultation with our clients, we use strategic motions to maximize opportunities for a favorable settlement. At the same time, we prepare a focused case for trial, if necessary. As a result, we've secured successes for clients as both plaintiffs and defendants – and developed long-lasting relationships with clients who use our services again and again.
One of the major players in the smartphone patent wars, for example, hired us to defend it in a patent infringement lawsuit. We have since defended the company in a series of such lawsuits filed across the country. On the plaintiff side, we filed a patent infringement lawsuit on behalf of a Texas company seeking to enforce its patents on mixed-signal devices against a competitor, obtaining a favorable settlement. The client subsequently retained us to file additional suits against other competitors. In each instance we obtained favorable settlements. We later resolved patent infringement claims asserted against the same client by a well-known patent holding company.
Filing Amicus Briefs with the U.S. Supreme Court
Lawyers from Patterson + Sheridan have filed amicus briefs on behalf of clients at the Federal Circuit and the United States Supreme Court. In Limelight Networks, Inc. v. Akamai Techs., Inc., for example, we filed an amicus brief on behalf of a broad spectrum of clients at the Federal Circuit and filed another amicus brief in support of a petition for certiorari at the United States Supreme Court.
Patterson + Sheridan Team’s Deep ‘Means-Plus-Function’ Knowledge Instrumental in Infringement Suit Dismissal for Large Tech Client
Patent law is complex and ever changing, especially in the rapidly growing technology sector. When one of our global clients was sued in federal court along with 14 other defendants for patent infringement, we worked in close collaboration with a joint defense group, taking a strategic approach to resolve a key issue in the case.
Leveraging extensive knowledge in means-plus-function claims, our team was instrumental in presenting arguments that asserted the claims were invalid. While means-plus-function is an area of IP law that is in flux (rules have changed multiple times in the past two decades), the statute allows for claims on functionality when complex, technical devices can be better described by the function they perform versus their structure, materials or equivalents.
Citing specific sections of the statute, we argued that the patent didn’t adequately describe the structure associated with the functions in this claim, rendering it invalid as indefinite (invalidated due to lacking definiteness).
Court-appointed special master validates our argument
Initially, the judge decided that the patent adequately described the structure at hand. But the court appointed a special master to review the claim. The special master agreed with our argument, finding insufficient structure described to support the claim and declaring it invalid as indefinite. The judge ultimately adopted the special master’s recommendation and dismissed the case in the defendants’ favor.
Our team’s knowledge in this complex, ever-changing area of IP law helped the client win the case before having it go all the way to trial. Working with a joint defense group also provided our client and the other 14 defendants with significant savings in avoiding trial.
Using Subject-Matter Eligibility as a Sword and Shield When Protecting Clients’ IP
Patent law is constantly evolving, due in large part to subject-matter eligibility. The latest Supreme Court decision on this subject, known as the “Alice” case (Alice Corp v CLS Bank), held that subject-matter eligibility for claims directed to abstract ideas is based on a two-part test:
- First: determine if the claims are directed to an abstract idea or general principle.
- Second: if so, evaluate all claim elements individually, and in combination, to determine if the claims include an inventive concept sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself.
As this area of patent law remains fluid, patent examiners are actively (and inconsistently) using subject-matter eligibility to examine applications. That’s where our vast experience on both sides of the IP process — preparation and prosecution and litigation — becomes a competitive advantage for our clients in industries ranging from computers, the internet, biotechnology, and oil and gas.
Our team has a deep understanding of the level of detail required to ensure a claim is valid when analyzed under the two-part subject-matter eligibility test — even if what we receive from the clients is a high-level description of the invention. We collaborate and dig deep to deliver a more holistic view of our clients’ inventions on the front end, and have developed an arsenal of strategies when drafting applications, including arguments and amendments should a rejection arise.
We’ve helped many of our clients address this issue for years, and their continued business is a testament to our track record in drafting patent applications that can withstand stringent and ever-changing subject-matter eligibility requirements.
Shutting down a patent troll before a costly trial
Building on our experience in drafting solid applications, we also leverage subject-matter eligibility knowledge to defend clients from frivolous infringement claims.
For example, our team represented one of the oil industry’s largest players as lead defense counsel in a multi-party infringement suit brought by a patent troll. Working alongside 12 other firms to represent more than 20 defendants, our deep understanding of subject-matter eligibility was brought to bear against the plaintiff’s broad claim related to “controlling a device over a network.”
Arguing the broadness of the claim and demonstrating that many everyday activities would infringe the plaintiff’s patent — from printing to a network printer to uploading photos to social media sites — our team successfully leveraged the plaintiff to voluntarily dismiss the case at the pleading stage, saving our client and the other defendants from a costly trial.
How Persistence and Storytelling Helped Secure a Federal Preliminary Injunction to Protect Trade Secrets
Facts are paramount in any case, but how they are leveraged is what wins cases. While technology is second nature to us, in litigation, we also craft stories that make judges and juries understand the facts, the technology and care about our clients.
That’s exactly what we did when representing The Systems Group. The family-owned company designs, develops and provides equipment for cooling industrial furnaces used for making steel. The Systems Group’s Spray-Cooled™ technology is a safer alternative to traditional pressurized water-cooling.
The Systems Group is the only supplier of spray cooling technology for the steel industry, so when an executive and an employee left the company, established a competing business, and attempted to poach The Systems Group’s biggest client, The Systems Group believed the ex-employees had taken and used trade secrets and other proprietary information.
Thorough and fast: Leaving no stone unturned
After an investigation, we formulated a strategic response and quickly filed suit for trade secret misappropriation and breach of employment contract. In addition to immersing ourselves in the underlying technology and business practices of this industry sector, we quickly determined that the underlying facts didn’t tell the whole story. When the data wasn’t adding up, we didn’t settle for the defendants’ mysterious explanations.
By persistently pursuing evidence and calling upon a computer forensic expert, we were able to solve the data “mystery”: the defendants had destroyed evidence.
Painting a compelling portrait of injustice
We put three witnesses on at the bench trial — The Systems Group CEO, the industry expert, and a forensic computer expert — and cross-examined the defendants.
Through these witnesses, we established that:
- The Systems Group had developed trade secrets and proprietary information that were not generally known
- The Systems Group protected the trade secrets and proprietary information
- The trade secrets and proprietary information could not be duplicated without monumental engineering effort and inside knowledge
We also established that defendants were in possession of and had used the trade secrets and proprietary information in competing with The Systems Group. Based on our forensic investigation, we obtained from the Court an adverse inference that the defendants had misappropriated The Systems Groups’ trade secrets and proprietary information because of the defendants’ intentional destruction of evidence.
In addition to supporting the legal requirements, however, we told our client’s unique story, including the energy and hard work that went into developing the technology and the business. We illustrated how this family’s 50-year-old business was lawfully built on hard work and ingenuity, and how it had been damaged by the ex-employees’ actions.
Our efforts culminated when we secured a preliminary injunction — which is rarely granted in federal court. The injunction forced the defendants to stop using Systems’ trade secrets and forbid the defendants from “using design drawings and internal pricing worksheets to design and supply low pressure, spray-cooling equipment for the steel industry.”
Securing a rock-solid consent decree
Eventually, the defendants agreed to a consent judgment and injunction that barred them from competing using spray-cooled technology for six years, with few exceptions. This agreement was broader than the preliminary injunction and, because it was a public, enforceable court order signed by the judge, it carried more power and authority than a settlement agreement.
At Patterson + Sheridan, we believe that you always need to understand the facts and the technology to back everything up, but the way you ultimately win the jury and the judge is with the story. At the end of the day, every case is about people and their stories — that’s our focus.
Defending a Fortune 500 chemical company against multimillion-dollar patent infringement allegations
When an international manufacturer and supplier of chemicals was facing claims of patent infringement, they turned to John Barr, Jay Yates and their team to help navigate the litigation process. The company was being sued by a larger competitor for alleged patent infringement of a chemical method patent in a U.S. District Court. The competitor sought a multimillion-dollar award for past damages in addition to a permanent injunction requiring our client to immediately stop manufacturing a successful specialty chemical product.
Translating complex subject matter into a compelling argument at trial
Effectively addressing complicated technologies to a jury is challenging. At trial, cases are presented through the witnesses and the documentary evidence. Unlike in a classroom, where students can ask questions when learning new and difficult material, juries generally are prohibited from asking any questions.
Effective trial lawyers must:
● Tailor their presentation to the courtroom
● Anticipate the questions that the jurors would ask
● Select the most impactful exhibits
● Anticipate the counter-arguments that will be presented by opposing counsel
Our litigators know how to explain even the most technical subjects to a jury, and we’ve sharpened those skills through decades of handling significant trial matters.
A two-pronged attack on infringement and validity claims
This case was challenging. It involved complicated polymer chemistry and the patents to be presented at trial lacked any drawings to help teach the processes involved.
Our lawyers decided that the best way to present the case to the jury involved a two-pronged attack on infringement and validity that clearly demonstrated that the client’s process both did not infringe because it worked in a different way than the patented method, and that the asserted patent was invalid based on prior patents from well-known competitors.
Overcoming obstacles to secure a litigation victory
While the jury ultimately did not find the asserted patent invalid based on the prior patents, the intense debate of the prior processes and the explanatory trial demonstratives that our team created to illustrate the processes to the jury forced the patent owner to adopt a very narrow position to distinguish its patent from prior technologies. The resulting limited infringement position required to escape invalidity made the infringement claim easier to defeat, which resulted in a victory for the client.
After a five-day trial, the jury found that the client did not infringe the patent and rejected the plaintiffs’ request for damages and an injunction. The verdict was upheld on appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Today, the company is able to compete in the market and grow its business.
Ten Years of Tools: Helping Olympia International develop new products and avoid litigation from competitors
Ten Years of Tools: Helping Olympia International develop new products and avoid litigation from competitors
For more than a decade, Patterson + Sheridan has helped Olympia grow from a small hand tool company to a major supplier to the largest retailers in the country. Our firm provides strategic counsel to help the company develop new products while mitigating the risk of litigation.
Determining the “path of least resistance” for product development
When Olympia is exploring new product lines, our attorneys help them identify existing patents and navigate the protected intellectual property of competitors. Through extensive research and analysis, we provide efficient pathways to bring new products to market without infringing on prior utility patents, design patents or trademarks. Over the years, Patterson + Sheridan has helped Olympia bring dozens of new products to market.
From lawsuit defendants to selling millions of units annually
A major breakthrough for the company was the introduction of a low cost, high volume consumer product at a major big box retailer. After identifying an excess production capacity and significant market demand, Olympia started producing and importing the products. There were no existing design patents for the products in place; however, a competitor ultimately sued for unregistered trade dress infringement.
Shortly after the suit was filed, we helped Olympia develop an alternative, more attractive product design that was free of infringement claims and a better product overall. This quick pivot in designs mitigated damages in the lawsuit and impressed Olympia’s customer. To this day, Olympia sells millions of these products each year.
Business growth fueled by a strategic partnership
Thanks to this ongoing relationship, we have been able to help Olympia grow its business by identifying workarounds to existing products, providing strategic insight into the marketplace and helping the company manufacture new products while avoiding competitors’ intellectual property.
Associated attorneys: Bruce Patterson, Jessie Herrera, Aaron Perkins, Jerry Selinger, Susan Powley
Associated practices: Litigation + Dispute Resolution