Members of the intellectual property litigation group successfully resolved a patent infringement suit filed by a prolific patent troll in the online retail industry against our client, one of the world’s largest manufacturers of outdoor camping gear. In early 2013, the troll filed a series of patent infringement suits against our client and a group of similarly situated online retailers in the Eastern District of Texas asserting patents claiming web-based technology related to online product brochures. The troll had successfully asserted the same patents against a car company in a related case filed several years earlier, obtaining an $11.6 million dollar jury verdict that was affirmed on all counts by the Federal Circuit. The troll leveraged the earlier verdict to extort six and seven figure settlements from more than 150 subsequent defendants. The troll attempted to do the same to our client and its co-defendants; however, our defense team in coordination with the joint defense group formulated a novel invalidity argument to contest the validity and enforceability of the asserted patents, which proved to be a game changer in the ongoing settlement discussions. The defense group filed a 12(c) motion challenging the troll’s patents based on ineligible subject matter under 35 U.S.C. § 101. Upon filing of this motion, the troll’s settlement demands significantly decreased in the face of the novel challenge to its patent portfolio. Our team ultimately negotiated a settlement on behalf of our client for a fraction of the troll’s original settlement demand.
Defense of Patent Infringement Against Patent Troll
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We represented nutritional supplement manufacturing company, Natural Alternatives International, Inc. (Nasdaq: NAII), in a Federal Circuit Court of Appeals case in which our client had brought claims against rival Creative Compounds LLC, accusing Creative Compounds of infringing six of its patents covering various forms of beta-alanine and its use as a muscle-building supplement. The Southern District of California had dismissed the suit, finding the patent claims to be directed toward a product of nature (beta-alanine) and a law of nature (that taking beta-alanine in sufficient quantities builds muscle) and thus patent-ineligible. On appeal, a split panel sided with our client, finding the district court applied too broadly the ineligibility doctrine of the “Alice/Mayo test” and that, although beta-alanine itself can occur as a natural substance, the claims containing beta-alanine as one aspect covered more than an unpatentable natural law.
Law360 provided analysis of the case in the article “Fed. Circ. Clarifies Alice In Reviving Supplement Co.’s IP Suit,” published on March 15, 2019.
Represented Genesco in its sale of Lids its hat-focused division
Represent the Nashville Soccer Club on sponsorship, corporate, intellectual property, media and event license matters