Erise IP shareholder Jason Mudd was recently featured by Missouri Lawyers Weekly in a story looking at how the COVID-19 pandemic could be a reason for an uptick in non-practicing entities (NPEs) asserting patents.

Erise client Unified Patents, in April, released a study that found the number of lawsuits filed by NPEs and other patent-assertion entities nearly doubled in the years following the Great Recession of 2008.

Mudd noted he saw “a slight uptick in NPE activity in the early months of the pandemic that is consistent with Unified’s hypothesis,” Missouri Lawyers Weekly wrote.

Mudd urges companies that are facing financial difficulties due to the pandemic and considering selling IP that they’re no longer using to not sell it to NPEs.

“In other words, transfer it to an actual operating entity, as opposed to going to an NPE,” he said.

Patexia, the world’s largest network for intellectual property professionals, released its fourth annual IPR Intelligence Report 2020, which found that three Erise IP attorneys at the firm are among the most active at the Patent Trial and Appeal Board (PTAB).

Over a five-year period between July 1, 2015 to June 30, 2020, Patexia evaluated 915 law firms, 7,708 unique cases, 4,886 unique patents and 79,523 unique claims. Patexia evaluated overall activity and success to develop a weighted average to determine rankings.

Erise, as a law firm, ranked 16 out of the Top 100 firms in the US. The only firms ahead of Erise were Am Law 100 firms with far more attorneys than Erise, a remarkable statement on the amount and quality of work done by the attorneys at Erise.

Individually, Erise’s attorneys also outperformed their BigLaw peers. Shareholders Eric Buresh, Adam Seitz and Paul Hart rank among the top 60 most active practitioners representing petitioners. Buresh is the 24^th most active petitioner attorney, Setiz ranks 41^st and Hart is 59^th. In addition, Buresh is the 67^th most active overall.

Jason Mudd, who is among the top 200 most active, is ranked as the 38^th best performing attorney for petitioners.

These rankings place Erise attorneys in the top 6% of all attorneys in the US.

Erise IP shareholder Marshall Honeyman was recently published by LEDs Magazine on the timely interest in Ultraviolet light C-band (UV-C) LED technologies and how they may complicate the patent process.

Honeyman believes the COVID-19 pandemic will trigger a deluge in the number of patent filings as it relates to this type of technology that can disinfect illuminated surfaces. Because the United States Patent & Trademark Office (USPTO) maintains patent applications in secret for 18 months after filing, we won’t know final numbers for some time, Honeyman is basing his prediction on what he’s seen in practice and historical metrics.

He writes that the “leveraging for patent rights relating to UV-C LED-based antimicrobial technologies will happen much in the same way they did in the development of white-light LEDs. Many filings will be made for concepts that are never implemented.”

Erise IP was recognized by Patexia, the world’s largest network for intellectual property professionals, in the fourth annual IPR Intelligence Report 2020 for being one of the top 50 best performing law firms at the Patent Trial and Appeal Board (PTAB).

Over a five-year period between July 1, 2015 to June 30, 2020, Patexia evaluated 915 law firms, 7,708 unique cases, 4,886 unique patents and 79,523 unique claims. Patexia evaluated overall activity and success to develop a weighted average to determine rankings.

Erise IP is ranked as the 16^th most active law firm representing petitioners at the PTAB and was the 25^th most active firm overall. In addition, Patexia found that Erise is the 41^st best performing petitioner law firm and the 45^th best overall.

This ranking places Erise in the top 4% of all firms in the US.

Erise IP is pleased to announce shareholder Marshall Honeyman has been named the 2021 Intellectual Property “Lawyer of the Year” for Kansas City-KS in the 27^th edition of “The Best Lawyers in America” a directory produced by Best Lawyers. It’s the fifth straight year of inclusion for Honeyman.

In addition, shareholder Adam Seitz has been recognized for the sixth consecutive year as being one of the best attorneys in Kansas for “Litigation – Intellectual Property.”

Attorneys are selected through a survey process in which attorneys cast more than 5.5 million votes on the skills of their peers.

Erise IP is pleased to announce the Patent Trial and Appeal Board issued a final written decision on behalf Unified Patents, holding that all but one dependent claim of a non-practicing entity’s patent is unpatentable.

Led by shareholders Jason Mudd and Eric Buresh, Erise IP filed the IPR a year ago on a patent that is “directed to a recommendation engine that generates a user profile based on a user’s interests and suggests content based on similar user profiles.”

The day before Erise filed its inter partes review, the PTAB denied institution of another IPR petition filed against the same patent by a major music business, which is currently in active litigation.

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.