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.

Shareholders Eric Buresh, Megan Redmond and Carrie Bader were recognized by Law.com after successfully defeating 12 patents for FanDuel.

Erise previously whittled down the case to one claim involving a single patent. On March 5, a federal judge in Delaware ruled the final patent was invalid under § 101 pursuant to the U.S. Supreme Court’s Alice ruling.

Erise IP shareholders Eric Buresh, Megan Redmond and Carrie Bader landed what a Delaware federal judged called “the jackpot” when they successfully won a motion on behalf of FanDuel that killed the entire case. Buresh, Redmond and Bader argued a trial wasn’t necessary on grounds the targeted patent was invalid under § 101 pursuant to the U.S. Supreme Court’s Alice ruling. The Court agreed killing the single remaining patent in the dispute.

This victory marks the end of an incredible string of wins in a case that originally involved allegations of infringement by FanDuel of 12 different patents, Law360 reported. Erise managed to kill all 12 patents without a trial, a win that is nearly unprecedented in today’s patent litigation environment. After defeating eight of the patents through a §101 challenge, Erise filed four IPRs against the remaining patents. Only one claim of a single patent escaped being invalidated in those IPRs and that final claim was the last one to fall in the most recent ruling.

Managing IP recently released rankings for the Patent Trial and Appeal Board for 2019, which looked at top petitioners, patent owners and law firms based on data listed in the Docket Navigator database.

Among the findings, Erise IP ranked No. 16 for “Petitioner Law Firm,” with 26 petitions before the PTAB. The firm ranked 21^st for total PTAB disputes.

Erise, which represents two of the top four filers, is the highest ranking boutique firm on the petitioner law firm list and is the only Kansas City-based firm that is ranked in the top 50 of either “Petitioner Law Firm” or “Patent Owner Law Firm.”

Individually, shareholder Adam Seitz is ranked among the top 50 petitioner attorneys in 2019, a tremendous accomplishment for a boutique firm.

Erise IP shareholders Adam Seitz and Paul Hart picked up another win at the Patent Trial and Appeal Board when the panel invalidated nine claims of a mobile technology patent.

Law360 reported the petitioner showed, “it would have been obvious to modify existing technology to arrive at the claimed invention.”