Intellectual Property Practice Wraps Up Big Year

February 13, 2017 | Spotlight

With wins in litigation and prosecution, Jackson Walker’s patent practice wrapped up 2016 proud of its continued success in guiding clients through the intricate patent process.

Patent Litigation and Dispute Resolution

In March of 2016, Jackson Walker attorneys Chris Rourk, John Jackson, Sara Chelette, John Edwards, and Amanda Zimmerman successfully represented Summit Energy Services in obtaining a judgment of invalidity against design patent D664,568, which was asserted by Top-Co Inc. Following a claim construction hearing in which inventor testimony and descriptions of the design features in Top-Co’s marketing literature were presented, the court found that the claimed casing centralizer design had no ornamental features.

Following the Summit case, Chris Rourk, who filed the lawsuit that resulted in the precedential Federal Circuit decision in BMC v. Paymentech, successfully obtained the cancellation of all claims of U.S. 7,806,228 in an ex parte reexamination proceeding at the U.S. Patent and Trademark Office (USPTO). The reexamination was filed roughly nine months prior to the decision cancelling all claims and was based, in part, on the admitted prior art discussed in the patent itself. These results reveal how an ex parte reexamination can be used to invalidate improperly granted claims faster and at a much lower cost than pursuing the same result via litigation in federal district court.

In August, Jackson Walker attorneys secured a dismissal in a case involving clients Expedia Inc.,, and The plaintiff, Cronos Technologies LLC, sought damages in excess of $20 million, claiming that the travel websites had infringed on its remote ordering patent. The defense team secured the dismissal based on the fact that none of the websites used the “item codes” required to infringe on the patent.

As patent litigation reform picks up steam, the Jackson Walker patent team will continue to explore ways to avoid, or at least minimize, costly litigation, effectively utilizing legal strategies and tactics such as ‘right to sue’ notices and ex parte reexamination proceedings.

Appellate Matters

Another big win came in July, when Jackson Walker successfully appealed a decision of the Patent Trial and Appeal Board (PTAB) on behalf of Magnum Oil Tools International, Ltd . In a precedential decision, the Federal Circuit held that the PTAB’s decision to invalidate Magnum’s patent (U.S. Patent No. 8,079,413) as obvious was improper because the petitioner failed to articulate a valid basis for a finding of obviousness.

Attorneys Nate St. Clair, John Jackson and Chris Rourk were recognized as ‘Legal Lions’ by Law360 as a result of their work on the Magnum case.

Patent Prosecution

On the patent prosecution front, a recent article in Above the Law named Jackson Walker the “Best Firm for Patenting Your Algorithm or Application” based on the firm’s advanced ability to counsel clients throughout the process from filing patents to defending them in litigation. According to partner Joe Lally, who has procured hundreds of patents for Fortune 100 technology clients, Jackson Walker’s success in intellectual property starts with the leadership of Raman Dewan.

“Raman has been able to market the Jackson Walker platform to lure a number of lateral partners with stellar resumes and incredible practices from national firms, where the pressure to bill and bill at the highest rate possible is in constant tension with the economic realities of high volume patent and trademark prosecution.”

With a wealth of prosecution and litigation experience, the Jackson Walker patent team serves its clients across the entire patent spectrum. The team will remain focused on executing patent activities that help clients achieve their business goals in a time-efficient and cost-effective way.

For more information on this topic, visit Jackson Walker’s Patent Procurement Practice homepage.

In This Story

Raman N. Dewan
Partner, Austin

Joseph P. Lally
Partner, Austin

Christopher J. Rourk
Partner, Dallas

Nathaniel St. Clair, II
Partner, Dallas