Defending patent owner Gracenote, Erise IP shareholders Jennifer Bailey, Jason Mudd, Megan Redmond and senior associate Robin Snader recently obtained a merits-based non-institution for three IPRs filed by Petitioner, Free Stream Media (d/b/a Samba). The U.S. Patent Trial and Appeal Board deemed Samba failed to demonstrate a reasonable likelihood of prevailing at trial as to any challenged claim.

The Board concluded that the petitioner 1) had not sufficiently shown that prior art teaches or suggests at least one of the claimed features, and 2) that neither the petitioner nor the petitioner’s expert testimony explains why the prior art would be obvious to configure.

Erise IP is pleased to announce the addition of Jason Gorden as senior counsel in the firm’s Kansas City office. He focuses his practice on patent, trademark, trade secret, and copyright law with an emphasis on helping software companies protect their content, brands, and innovation.

Gorden has more than two decades of experiencing building and protecting his clients’ intellectual property portfolios. Prior to joining Erise, Gorden returned to private practice for three years after spending 13 years at SAP as intellectual property counsel where he managed a team of patent professionals all while continuing to hone his software development skillset and helped integrate various platform systems. In addition, he worked closely with in-house and outside European Patent counsel to refine a harmonized patent drafting strategy to bridge the gap between U.S. and EP drafting approaches.

“Jason brings unique experience to Erise IP having worked in-house for a Global 500 company where he spent time in both Europe and Silicon Valley,” said Jennifer Bailey, a shareholder in Erise IP’s Kansas City office. “His experience in the areas of software and high-tech patent law as well as his connections to Silicon Valley are immensely valuable as we continue to serve clients in a wide range of venues throughout the world. We are thrilled to have an attorney of Jason’s talent join our team.”

Gorden received his Juris Doctor from the University of Missouri School of Law and holds a bachelor’s degree in Computer Engineering from the University of Missouri, Columbia. He is an adjunct professor at the University of Missouri – Kansas City School of Law and was highly reviewed by his students.

A Texas federal judge sided with Erise IP shareholders Eric Buresh and Mark Lang and senior counsel Abe Kean after denying the plaintiff’s request to retry a more than $50 million infringement case after Erise scored a complete defense verdict on behalf of NetScout.

Law360 reported U.S. District Judge Rodney Gilstrap ruled that the inventor “wasn’t entitled to retry its claims that NetScout’s system for monitoring computer data traffic infringed on three of its patents. The judge said the evidence shows the patents and NetScout’s system were different enough to support the jury’s finding of noninfringement.”

Judge Gilstrap added that the plaintiff’s counsel “didn’t raise any objections during trial either, preventing the company from using this argument as a reason for a new trial.”

Prior to the result, the plaintiff had filed 38 lawsuits against multiple household name technology companies with each case resulting in a settlement. NetScout was the first defendant to take its case by this plaintiff to trial.

Led by shareholders Jason Mudd and Eric Buresh and associate Hunter Horton, Erise IP has filed a petition for inter partes review on behalf of Unified Patents against a monetary transfer system patent. The filing helped Unified Patents last Friday reach 200 total PTAB challenges filed by Unified in less than seven years of operation.  The petition was the 19th IPR petition filed by Erise IP on Unified’s behalf since the firm began representing Unified in 2016.

“We are privileged and honored to have been able to assist Unified in achieving this significant milestone in its important ongoing mission to improve patent quality and deter unsubstantiated or invalid patent assertions in our country,” said Erise IP shareholder, Jason Mudd, on behalf of the firm.

Erise IP is pleased to announce it received top accolades from Managing Intellectual Property’s 2020 IP Stars awards. In addition, five shareholders earned individual recognition.

For the eighth year in a row, the firm was named a “Highly Recommended” firm in Intellectual Property – the top ranking a firm can receive in the awards program. In addition, shareholders Adam Seitz, Eric Buresh, Jennifer Bailey, Marshall Honeyman and Jason Mudd were named Patent Stars.

Find the complete list of attorney honors here and firm honors here.

In selecting the winners, Managing Intellectual Property’s team of research analysts surveyed thousands of Intellectual Property attorneys in private practice and in-house in addition to conducting interviews with attorneys.

On Thursday, May 14, the U.S. International Trade Commission affirmed Erise’s noninfringement, invalidity, and inequitable conduct win in a baby carrier investigation that initially started with 20 respondents.

Law360 reported on the decision that closes the book on the ITC investigation, which began in March 2019. It reported that the Commission affirmed Judge Clark Cheney’s determination that Erise shareholders Adam Seitz and Michelle Marriott’s clients, Baby Tula and Ergobaby, did not infringe on LilleBaby’s patent. The commission also affirmed the patent claim in question was found invalid as anticipated under 102 and invalid as obvious under 103.

The patent owner — a Norwegian citizen — and her American husband during the ITC case said that “though they told the USPTO that they were both inventors to the patent, it was actually the Norwegian wife who was the sole inventor.” They believed having an American on the patent application would strengthen their position. The Administrative Law Judge at the ITC found there was “clear and convincing evidence that the [patent owner] intended to deceive the patent office by filing their false declaration.”

Erise IP shareholder Adam Seitz recently spoke to the Kansas City Business Journal about his and Michelle Marriott’s victory at the International Trade Commission on behalf of Ergobaby and Baby Tula.

“Trade disputes heard by the ITC are typically the realm of huge, expensive law firms on the East Coast, but Kansas City-area firms are proving it doesn’t have to be that way,” the Business Journal wrote.

Erise teamed up with Kansas City-based Husch Blackwell attorney Beau Jackson to prove that the rival company’s patent wasn’t valid. In addition, they showed the original patent owner committed inequitable conduct, which invalidates the patent.

“The damages can be significant in these cases, from the standpoint of having your entire supply line shut off,” Seitz said. “If Lillebaby had won this, they’d be one of the only parties in the U.S. to supply a certain type of baby carrier. So (an ITC case) is a pretty big hammer to use if you want to get rid of your competition.”

Erise IP shareholders Adam Seitz and Paul Hart scored another win at the Patent Trial and Appeal Board when the panel invalidated claims after Erise “persuasively demonstrated that a skilled artisan would have been motivated to combine elements of several prior art references — earlier patents and printed publications — to arrive at the patent owner’s claimed invention,” Law360 reported.

“Petitioner’s showing that the claims are taught by the asserted art is strong, particularly in comparison to patent owner’s weak showing with respect to the asserted secondary considerations of non-obviousness,” the decision said.

Erise IP shareholders Adam Seitz and Michelle Marriott were recently recognized by Law360 and Law.com for their resounding victory at the International Trade Commission on behalf of Ergobaby and Baby Tula.

Law360 named Erise, along with Husch Blackwell’s Beau Jackson, as Legal Lions for clearing the baby carrier markers of infringing upon a rival company’s patent, and that the patent was found invalid as anticipated under 102 and invalid as obvious under 103.

In addition, the court ruled the patent is unenforceable due to “egregious” inequitable conduct by the co-inventors in an effort to deceive the patent office and bolster the strength of the patent.

Defending The Ergo Baby Carrier Inc. and New Baby Tula, LLC, Erise IP shareholders Adam Seitz and Michelle Marriott, working with Beau Jackson at Husch Blackwell, secured a huge victory at the International Trade Commission.

This case involved litigation asserting the infringement of two patents and 30 claims against more than 20 respondents (including Britax, BabyBjörn and Beco Baby Carrier) seeking to stop the importation of nearly all competitive products. The case was left with only three respondents after nearly everyone settled. By the time of the trial, the case was whittled down to alleging infringement of one claim of a single patent.

After a week-long trial at the ITC, the Court found for Ergo and Tula on an overwhelming number of issues. All of Ergo’s and Tula’s products were found to not infringe. The patent was found invalid as anticipated under 102 and invalid as obvious under 103. And, in what has become a rare circumstance, the Court found the inventors committed inequitable conduct.

On the inequitable conduct, the ITC judge found the original inventors lied about the role of the co-inventor in order to bolster the strength of the patent. The named inventors then attempted to fix the error at the Patent Office to remove the co-inventor, but did not disclose any of the details about the original plan to deceive the Patent Office.