As technology makes vast improvements year after year, IP attorneys are rolling up their sleeves to stay ahead of the game. In California, established Silicon Valley and booming Silicon Beach have created global hubs for innovation. IP attorneys face many hurdles as they try to protect the branding of companies for consumers and a range of venues for those who want to protect their innovations. The attorneys chosen took those challenges head-on and pushed technological progress forward.
Intellectual Property: Robert A. Van Nest
Van Nest won a smashing victory for Alphabet Inc.-owned Google in May when he persuaded a San Francisco federal jury that his client’s actions qualified as fair use under copyright law, instead of the infringement claimed by Oracle Corp.
He successfully argued that Google’s use of elements of the Java programming language in its Android mobile operating system was not infringement. Oracle America Inc. v. Google Inc., 10-CV03561 (N.D. Cal., filed Aug. 12, 2010)
Google has been battling with Oracle for six years over whether Google wrongfully took code from 37 Java application programming interfaces, or APIs, when building Android and didn’t get a license from Sun Microsystems Inc. Oracle bought Sun in 2010.
During the first trial in 2012, Van Nest’s team defended Google against patent and copyright claims and also argued that the damage estimates were exaggerated. Oracle’s copyright claims were dismissed, and that at trial the jury delivered a unanimous verdict rejecting all claims of patent infringement.
Oracle appealed and the U.S. Court of Appeals for the Federal Circuit remanded the case to U.S. District Judge William Alsup for trial on the fair use question. The jury had deadlocked on that issue during the 2012 trial.
After a two-week trial this spring, the federal jury unanimously rejected Oracle’s claims of infringement.
“I think it was a plus to have a single-focused issue, fair use, for the second trial. It focused the case for jurors,” Van Nest said.
Oracle is appealing, first to Alsup and then to the Federal Circuit if that fails.
Van Nest is now focused on a similar fair case, co-representing defendant Arista Networks Inc. Cisco Systems Inc. v. Arista Networks Inc., 14-CV5343; 14-CV5344 (N.D. Cal., filed Dec. 5, 2014)
He said he sees similarities in the cases and applies the same procedure to all his IP disputes.
“Given the complexity, it hurts you if you have too many issues,” Van Nest said. “Sometimes, you have to leave even good issues out of the case. Simplify, limit the number of issues and select the smartest jurors you can.”
Intellectual Property: Christa M. Anderson
Anderson served as second chair to Robert A. Van Nest for client Alphabet Inc.-owned Google Inc. on 2016’s biggest IP trial, defending against Oracle Corp.’s patent and copyright claims with billions of dollars allegedly at stake.
Oracle, which bought the Java programming language by acquiring Sun Microsystems in 2010, alleged that Google’s Android mobile technology infringed Oracle’s Java patents and copyrights.
A first trial ended with a Google near-total win and zero damages. After a two-week retrial on remand from the U.S. Court of Appeals for the Federal Circuit, a San Francisco federal jury in May unanimously found that Google’s Java programming language in the Android operating system was a fair use, rejecting Oracle’s claims of infringement. Oracle America Inc. v. Google Inc., 10-CV3561 (N.D. Cal., filed Aug. 12, 2010)
“A very tense and intensive case,” Anderson said, “like the first trial in 2012, a busy trial. I hadn’t had before first hand experience with a trial almost literally tweeted out as it happened.”
“But I have had the privilege to work with Bob [Van Nest] for 20 years, from my first Keker case,” she added. “He’s a great team player who gives everyone wonderful opportunities in the courtroom.”
Now, Anderson is lead counsel for San Francisco-based software analytics client New Relic Inc. in a patent infringement suit over claims by CA Technologies of New York that New Relic infringes three application performance management patents.
CA Technologies is seeking unspecified damages for lost profits and legal costs and an injunction prohibiting further misuse of its intellectual property. CA Inc. v. New Relic Inc., 12-CV05468 (E.D., filed Nov. 5, 2012)
Anderson pointed out that while both companies participate in the application performance management software industry, historically CA has focused its business on a different sector of that industry. CA claims that New Relic violated patents that came into its possession through acquisitions.
“In any case, there are really two important processes in preparing for trial,” Anderson said. “There’s logistics: you need to become very organized. You work out a marching plan.”
“How much time will you have for your presentation? Which are the important documents? Once you’re in trial, things move so quickly that you don’t have time to waste minutes revising your plan.”
Intellectual Property: Ashok Ramani
With clients like Netflix Inc., Hulu LLC, Broadcom Ltd., and Square Inc., Ramani has found a niche resolving patent disputes for some of the nation’s leading technology companies.
He recently defended Netflix and Roku Corp. in a lawsuit filed by Rovi Corp., a company that provides online guide services to content providers like Comcast Corp.
By creating their own interactive guides similar to the ones provided by Rovi, Netflix, Roku, and other content providers named as defendants in the case violated eight of the company’s patents, Rovi’s complaint contended. Rovi Corp., et al. v. Roku Inc., 12-CV2185 (N.D. Cal., filed May 1, 2012)
By the time the case reached trial, all of the other defendants named in the case had settled and the number of contested patents had narrowed to five.
Two patents were related to the storing of a user’s viewing history, which was used to make recommendations based off the user’s preferences, while another two related to how interactive program guides categorized its programming. The final patent related to bookmarking programs.
“We were faced with five patents, and we kind of had to bat around whether to move on one of them or all of them at once,” Ramani said. “We sort of wondered. “Well, are we biting off more than we can chew, here?” As opposed to just going for two or three. But we figured we might as well just bet big and see what happens here.”
The bet paid off, as the ITC found that four of the patents were not infringed and the remaining patent was invalid. Rovi then pursued the matter before U.S. District Judge Phyllis J. Hamilton on the Northern District of California with three of the patents at issue on the ITC investigation and two additional patents.
Hamilton granted summary judgment of invalidity in July 2015 for Ramani and his team on all five patents. Netflix Inc. v. Rovi Corp., 11-CV6591 (N.D. Cal., filed Dec. 21, 2011)
Isaac Peterson, vice president and assistant general counsel for Netflix, praised Ramani’s ability to keep the client informed without inundating them with unnecessary information.
“He’s been a strong advocate for us, he runs a very organized team,” Peterson said. “It’s a tough balance for partners managing a team on cases, but I’ve been very happy working with him, knowing I’m going to learn the things I need to know without being overwhelmed.”
Intellectual Property: David J. Silbert
Technology licensing company Summit 6 LLC was fresh from two major patent infringement victories against Facebook Inc. and Samsung Electronics Co. Ltd. When it went after Silbert’s client, Twitter Inc.
It was the same patent before the same judge – U.S. District Judge Reed C. O’Connor of the Northern District of Texas – but unlike Facebook, which settled for $20 million, and Samsung, which lost an $18 million judgment, Silbert managed to have Twitter’s case dismissed with prejudice.
The San Francisco-based social media giant and its co-defendants paid nothing. Summit 6 LLC v. HTC Corp., et al., 15-CV0014 (N.D. Texas, filed Feb. 18, 2014)
Silbert’s dogged research was key. He and his team tracked people down around the U.S. and in Canada to prove the system in question had been used prior to Summit’s priority date of June 1993. One meeting with a particularly meticulous witness in Tamp, Florida led to a declaration that proved fateful.
Summit 6 “called and said, ‘We’re dismissing the case, now do you want to talk about settlement?’” Silbert recalled, calling it “the nail in the coffin.”
“It’s all about building leverage,” Silbert said. “I enjoy the process of analyzing the case when you get it, finding where you do have leverage, then really working hard to increase that leverage.”
His next major case involves defending Arista Networks Inc. in a case that raises new questions about copyright protections for computer commands and interfaces.
Cisco Systems Inc. has accused Arista of infringing copyright on more than 400 commands used to configure networking devices as well as 14 patents. Trial is scheduled for November. Cisco Systems Inc. v. Arista Networks Inc., 14-CV053 (N.D. Cal., filed Dec. 5, 2014)