Experience

Client:

Asian Based Smartphone and Tablet Manufacturer

Issue:

An entity spun off from Apple, Inc. known as FlashPoint Technology, Inc. accused our client’s smartphones of patent infringement.  Our client had to choose between paying a substantial settlement for a license, as others had done earlier in the litigation, or taking the case to trial to avoid an infringement finding and an ITC order excluding our client’s entire line of smartphone products from the U.S. market.  

Challenge:

Perkins Coie needed to leverage the experience of a talented but small litigation team to defeat allegations of infringement at the ITC while remaining within the client’s tight budget.

Solution:

We identified the strengths and weaknesses of the asserted patents and remained within the budget by using a small team and litigating only those issues that had the best chance of success.  Specifically, we focused on certain claim limitations, license defenses and a very limited number of invalidity defenses.

Immediately prior to the hearing, FlashPoint dropped one of its three asserted patents, and we established that a second patent was invalid in view of the on-sale bar provision of 35 U.S.C. § 102(b).  We further established that our client had a license with respect to accused products that utilized Windows operating systems, based on agreements entered into between FlashPoint and Apple, and between Apple and Microsoft.  Finally, we defeated FlashPoint’s allegations that the third asserted patent was infringed.  FlashPoint appealed to the U.S. Court of Appeals for the Federal Circuit, and we worked closely with the ITC’s Office of the General Counsel to sustain the ITC’s decision, which was upheld without comment by the Federal Circuit just after oral arguments.

Perkins Coie’s successful, value-driven approach in this case was highlighted as an exemplar in the Financial Times’ U.S. Innovative Lawyers 2013 report.