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PITCH ENGINE


Deep Green Wireless LLC v. Mitel Networks Corporation et al

12/10/15 | TXED-2-2015-CV-02058 | Rodney Gilstrap & Roy S. Payne | Pacer

RE42714 & 6778662

Plaintiff counsel: Andrew W. Spangler

Sample data & format.


McDermott Will & Emery LLP


Executive Summary


Tech

Top 10% (20 / 241 firms)

92 % Relevancy

Fabio Marino | bio

District

Top 20% (39 / 196 firms)

50 cases

Brett E. Bachtell | bio

Judge

Top 25% (39 / 174 firms)

19 cases

Fabio Marino | bio

Mandy H. Kim | bio

Plaintiff

Top 10% (9 / 103 firms)

9 cases

Michael S. Nadel | bio

Daniel R. Foster | bio

Christopher D. Bright | bio

Thank you for considering our proposal. McDermott is uniquely qualified to handle this matter based on our experience. Leverage the knowledge of our proposed team and together we can resolve this matter efficiently.

Here are a few ways McDermott's experience sets us apart:

  • Tech Rank: Top 10% (20 / 241 firms) (led by Fabio Marino | bio)
  • District Rank: Top 20% (39 / 196 firms) (50 cases) (led by Brett E. Bachtell | bio)
  • Judge Rank: Top 25% (39 / 174 firms) (19 cases) (led by Fabio Marino | bio)
  • Plaintiff's Counsel Rank: Top 10% (9 / 103 firms) (9 cases) (led by Michael S. Nadel | bio)

Verify McDermott's rank at Patent Engine:

http://patentengine.net/cases/TXED-2-2015-CV-02058

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Technical Experience


Firm Rank

Top 10% (20 / 241 firms)

Firm Experience

Nomadix, Inc. v. Hewlett-Packard Company et al
CACD-2-2009-CV-08441

Pixion, Inc. v. Citrix Systems, Inc.
CAND-3-2009-CV-03496

ContentGuard Holdings, Inc. v. ZTE Corporation et al
CASD-3-2012-CV-01226

Brocade Communications Systems, Inc. et al v. A10 Networks, Inc. et al
CAND-5-2010-CV-03428

Unified Messaging Solutions LLC v. Google Inc et al
ILND-1-2012-CV-06292

Top Attorney

Fabio Marino | bio

We are able to offer you exceptional representation because we know this industry and area of technology better than almost any other firm. Patent Engine ranked McDermott number 20 out of 241 patent firms in the country for this case.

Fabio Marino are the leading litigators in our firm in this area of technology. They have worked together and function as an efficient team.

Fabio is particularly well suited to handle this case. Fabio’s unique background and extensive knowledge was forged over the past five years by litigating patent cases similar to this case. For example, Fabio recently handled Nomadix, Inc. v. Hewlett-Packard Company et al, which involved similar technology. See patents-­in-­suit: 6,130,892 7,088,727 6,636,894 6,868,399 6,789,110 7,194,554 7,554,995

Including this case, McDermott has been involved in several patent cases in this area of technology:

  • Nomadix, Inc. v. Hewlett-Packard Company et al
    CACD-2-2009-CV-08441
  • Pixion, Inc. v. Citrix Systems, Inc.
    CAND-3-2009-CV-03496
  • ContentGuard Holdings, Inc. v. ZTE Corporation et al
    CASD-3-2012-CV-01226
  • Brocade Communications Systems, Inc. et al v. A10 Networks, Inc. et al
    CAND-5-2010-CV-03428
  • Unified Messaging Solutions LLC v. Google Inc et al
    ILND-1-2012-CV-06292

Our knowledge of this technology area, including the prior art in this space (discussed below), can be leveraged to your advantage. Learn more about our technical team by visiting their bio pages and contacting them.

  • Fabio Marino | bio

District Experience


Firm Rank

Top 20% (39 / 196 firms)

Firm Experience

50 cases

Top Attorney

Brett E. Bachtell | bio

Analytics

All Firms

3432 cases since 2008
432 cases /yr
388 days duration /case

McDermott

50 cases since 2008
371 days duration /case

McDermott knows how to litigate patent cases in the Eastern District of Texas. Many firms say they are capable of handling cases here, but we actually litigate patent cases in this district. Since 2008, we have been involved in 50 patent cases in the Eastern District of Texas (among other non-patent cases). This means we are ranked in the Top 20% (39 / 196 firms) for experience in this District. We have direct experience working with and knowing how to handle the peculiarities of the judges, magistrates, clerks, and local rules. Our insider’s perspective is critical to successfully managing this case.

Brett E. Bachtell is particularly knowledge about litigating cases in the Eastern District of Texas because Brett has spent more time litigating patent cases in this district than just about anyone else in our firm.

Including Brett's cases, below is a sample list of patent cases our firm has handled in the Eastern District of Texas:

  • Parallel Networks LLC v AEO, Inc.
    TXED-6-2010-CV-00275
  • TQP Development LLC vs v. 1-800-Flowers.com Inc et al
    TXED-2-2011-CV-00248
  • Network-1 Technologies, Inc v. Alcatel-Lucent USA Inc. et al
    TXED-6-2011-CV-00492
  • First American CoreLogic, Inc. v. Fiserv, Inc. et al
    TXED-2-2010-CV-00132
  • TQP Development, LLC v. Branch Banking and Trust Company
    TXED-2-2012-CV-00055

As a result of Brett E. Bachtell's and our firm's experience in the Eastern District of Texas, we follow the patent litigation patterns and trends here. There have been over 3432 patent cases in this district since 2008, with an average of about 432 per year. This represents about 10 % of all patent cases in the country.

Cases in this district are usually pending for about 388 days and our firm resolves cases in about 371 days.

We resolve cases successfully for two reasons. First, we work closely with you to identify our best arguments early in the case. This allows us to push hard against the plaintiff when the facts are in our favor. Second, we engage opposing counsel to identify their client's bottom line settlement value. Coupled with our reputation for working constructively with the plaintiff's bar, this allows us to reduce and delay the burdens of early discovery. By minimizing your defense costs, you gain maximum negotiation flexibility, if you choose to enter into early settlement talks.

Unlike many firms that quickly settle, McDermott has a depth of experience actually litigating cases well beyond the initial discovery phase. This experience not only provides us unique insight into how to try a case in this district, it also contributes to our reputation as highly competent and strong advocates for our client. Put simply, the plaintiff's bar knows that we have the skills to take this case to trial.

Our knowledge of the Eastern District of Texas can be leveraged to your advantage. Learn more about our experience in this district by contacting Brett:

  • Brett E. Bachtell | bio

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Judicial Experience


Firm Rank

Top 25% (39 / 174 firms)

Firm Experience

19 cases

Top Attorney

Fabio Marino | bio

Analytics

All Firms

1661 cases since 2008
19 % of TXED cases
377 days duration /case

McDermott

19 cases since 2008
429 days duration /case

McDermott has also had the opportunity to appear before Rodney Gilstrap , Roy S. Payne 19 times. This ranks us in the Top 25% (39 / 174 firms) for experience before Rodney Gilstrap , Roy S. Payne . This experience positions us as trusted counselors to the Judge on both the substantive and legal issues that are likely to arise in this case. Earning the trust of the Judge is paramount to telling your story and positioning the facts in this case favorably for you. Our experience will help you craft the right story for Rodney Gilstrap , Roy S. Payne .

Fabio Marino is particularly knowledgeable about litigating cases before Rodney Gilstrap , Roy S. Payne because Fabio has spent more time litigating patent cases before the Judge than just about anyone else in our firm.

Below is a sample of our firm's relevant experience in patent cases before the Judge:

  • TQP Development LLC vs v. 1-800-Flowers.com Inc et al
    TXED-2-2011-CV-00248
  • First American CoreLogic, Inc. v. Fiserv, Inc. et al
    TXED-2-2010-CV-00132
  • TQP Development, LLC v. Branch Banking and Trust Company
    TXED-2-2012-CV-00055
  • Lennon Image Technologies, LLC v. Macys, Inc. et al
    TXED-2-2013-CV-00235
  • Stambler v. Northern Trust Corporation et al
    TXED-2-2012-CV-00679

As a result of our experience before the Judge, we also monitor their patent docket. Rodney Gilstrap , Roy S. Payne has presided over 1661 patent cases since 2008. This means they have handled about 19 % of the patent cases in Eastern District of Texas. On average, patent cases before Rodney Gilstrap , Roy S. Payne are pending for about 377 days. In our experience, we resolve cases in about 429 days.

Our significant time successfully litigating long, and sometimes contentious, patent cases before Rodney Gilstrap , Roy S. Payne also contributes to our reputation as adept and professional officers of this court.

Learn more about our experience before Rodney Gilstrap , Roy S. Payne Love by contacting Fabio:

  • Fabio Marino | bio

Plaintiff's Counsel Experience


Firm Rank

Top 10% (9 / 103 firms)

Firm Experience

9 cases

Top Attorney

Michael S. Nadel | bio

Analytics

All Firms

623 cases since 2008
337 days duration /case

McDermott

9 cases since 2008
329 days duration /case

Keep your friends close and your enemies closer. For many this is a cliché, but for us, it is a fact that you can use to gain a competitive advantage in this case. We know plaintiff's counsel better than just about anyone in the world. Our experience litigating against them in at least 9 patent cases ranks us in the Top 10% (9 / 103 firms). We know their strategy, tactics, and importantly the pressure points that it will take to force them to settle the case in our favor.

Michael S. Nadel is particularly knowledge about litigating cases against plaintiff’s counsel because Michael has spent more time litigating cases against them than just about anyone else in our firm.

Below is a sample list of cases that Michael and our firm have handled against Andrew W. Spangler :

  • TechRadium, Inc. v. Blackboard Connect Inc. et al
    TXED-2-2008-CV-00214
  • Blackboard Inc. v. TechRadium, Inc.
    TXED-2-2009-CV-00033
  • TechRadium, Inc. v. Blackboard, Inc.
    TXED-2-2009-CV-00035
  • Blackboard Inc. v. TechRadium, Inc.
    TXED-2-2009-CV-00042
  • TechRadium, Inc. v. AtHoc, Inc. et al
    TXED-2-2009-CV-00275

Learn more about our experience before Andrew W. Spangler by contacting Michael:

  • Michael S. Nadel | bio

Invalidity


Patents-in-suit

Prior Art (litigated)

6778662

7,620,703

7,480,233

6,842,459

6,757,275

7,486,662

Fabio's experience with similar cases, and knowledge of the patent landscape in this industry, has already allowed us to identify prior art and – importantly – high quality sources of additional prior art that we can access in a very cost effective manner. For example, we already know that the following similar patents were recently litigated.

Litigated prior art relevant to Patent-­in-­Suit No. 6778662:

  • Patent No. 7,620,703, entitled "Topical service provides context information for a home network," was filed on Aug 10, 2000 by Yevgeniy Eugene Shteyn. The USPTO published this patent on Nov 17, 2009.
  • Patent No. 7,480,233, entitled "Telephone communication system and method over local area network wiring," was filed on May 10, 2005 by Yehuda Binder. The USPTO published this patent on Jan 20, 2009.
  • Patent No. 6,842,459, entitled "Network combining wired and non-wired segments," was filed on Apr 19, 2000 by Yehuda Binder. The USPTO published this patent on Jan 11, 2005.
  • Patent No. 6,757,275, entitled "Method and system of managing connections between circuit-switched and packet-switched networks," was filed on Sep 12, 2001 by Bob Sorrentino. The USPTO published this patent on Jun 29, 2004.
  • Patent No. 7,486,662, entitled "Method and system of managing connections between circuit-switched and packet-switched networks," was filed on Dec 22, 2003 by Bob Sorrentino. The USPTO published this patent on Feb 3, 2009.

While these may not end up being the prior art references we rely on during summary judgement or at trial, they are important starting points because we can obtain the invalidity contentions from these cases if they progressed that far. This allows us to leverage prior work product to quickly create a short list of relevant prior art. In conjunction with our technical experience and our review of the file history, we will know very early in the case which one or two key claim limitations have not yet been found in the prior art.

Using this knowledge, our team can perform targeted prior art research or we can work with one of our trusted vendors to find the necessary prior art. This process has worked well in the past and allows us to operate quickly and cost effectively.

If all goes well, this strategy will likely lead to an invalidity defence in this case. Accordingly, we recommend selecting and using an invalidity expert early in the case. This will provide us with several important benefits.

First, their experience (usually from an academic setting) will further help us refine and target relevant prior art.

Second, their perspective on our claim construction positions will help us tailor our invalidity (and non­infringement) positions to maximize the effectiveness of the prior art references.

Third, their early involvement will significantly reduce the effort and cost associated with preparing their invalidity expert report later in the case.

Finally, if our prior art search strategy effort proceeds as well as we hope it to, then we will be in a strong position to challenge the claims at the United States Patent and Trademark Office (“USPTO”). Because an invalidity expert is also used in this context, we will have performed a lot of the heavy lifting necessary to draft and file a challenge to the claims without incurring substantial additional costs.

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Inter Partes Review & Ex Parte Reexamination


Challenging the validity of the claims through a USPTO procedure is often an effective and cost efficient strategy. If we identify prior art that anticipates the asserted claims under 35 U.S.C. § 102, or prior art the leads to a very strong argument for obviousness under 35 U.S.C. § 103, we can pressure the patent owner by threatening to file or actually filing an action before the USPTO. This may lead to an early – and low – settlement offer.

After we conduct our prior art investigation, as discussed above, we suggest discussing this topic in more detail. In the meantime, below is an explanation of the mostly likely USPTO procedural options.

One option is an inter partes review (“IPR”) and the other option is an ex parte reexamination. Morgan Lewis has experience with both procedures, and we generally suggest filing an IPR.

An IPR allows us to remain substantively involved in the challenge during its pendency. We are permitted to rely on an expert, afforded the opportunity to depose the patent owner’s expert, and will ultimately get to provide oral argument to the USPTO in a “mini trial” on the validity of the claims. The IPR is very likely to result in a decision from the USPTO in about 18 months from the filing of the initial petition. During its pendency, we can settle the IPR privately with the patent owners without the USPTO’s permission. Furthermore, during the pendency of the IPR, many courts stay the district court litigation, which helps keep costs down and sustains pressure on the patent owner.

One important aspect of an IPR is the creation of estoppels associated with any prior art or invalidity argument that was raised or could have been raised during the IPR. Once these estoppels apply, we will not be able to rely on this prior art or arguments during the district court litigation. This is why we generally only recommend filing an IPR when we believe the prior art and invalidity arguments are strong.

The other procedure, an ex parte reexamination request, allows us to challenge the claims anonymously in a single initial brief. After filing the request, the USPTO considers the challenge and only the patent owner may provide additional comments or arguments about the validity of the claims.

Filing this request is often less expensive than the entire IPR process, but it also provides us with much less control and input into the USPTO’s final decision on the claims. Because we are afforded less control there are no estoppels associated with an ex parte reexamination.

While courts do stay cases if an ex parte reexamination is pending, they are much less likely to do so as compared to an IPR. This is also because there are no estoppels associated with an ex parte re examination request.

One important aspect of an ex parte reexamination is that we cannot unilaterally stop the proceedings. As a result, one strategy to assert pressure against a patent owner is to threaten filing a request for reexamination, but also agreeing to not file the request if they are willing to settlement the case now.

Regardless of which procedure we employ, one factor to consider is the ability of the patentee to submit new patent claims or correct problems with the existing claims. In some cases, a patent owner is able to propose claims that read directly on your accused product. The ability to present new claims or edit current claims is much harder in an IPR, which is one reason why we generally prefer to file an IPR.

While this advantage may be significant for the patent owner, if the prosecution file of the patent family is still active, the patent owner may have the ability to propose new claims even if we don’t file an IPR or an ex parte reexamination. Accordingly, this advantage does not necessarily depend on whether we file an IPR or an ex parte reexamination.

In short, both the IPR and ex parte reexamination are powerful tools that we have used successfully in the past and recommend exploring for this case as well. We look forward to discussing these options in more detail after our prior art efforts yield results and as we get a better feel for the patent owner’s initial settlement demands and stance.


Additional Issues


Non-infringement
35 U.S.C. § 112 (enablement)
35 U.S.C. § 112 (indefiniteness)
35 U.S.C. § 112 (written description)
35 U.S.C. § 101
Failure to Mark
Prior Commercial Use
Laches
Estoppel
Inequitable Conduct
Licences
Exhaustion
Motion to Transfer
Motion to Dismiss
Indemnification
Early Settlement
Alternative Dispute Resolution

Non­-Infringement
**** Delete or add your firm’s initial strategy here. ****

35 U.S.C. § 112
**** Delete or add your firm’s initial strategy here. ****

Other Defenses
**** 35 U.S.C. § 101, Marking, Prior Commercial Use, Equitable defenses (laches, estoppel, and inequitable conduct), and Licenses and Patent Exhaustion ****

Motion to Transfer
**** Delete or add your firm’s initial strategy here. ****

Motion to Dismiss
**** Delete or add your firm’s initial strategy here. ****

Indemnification
**** Delete or add your firm’s initial strategy here. ****

Early Settlement
**** Delete or add your firm’s initial strategy here. ****

Alternative Dispute Resolution
**** Delete or add your firm’s initial strategy here. ****


Proposed Budget


We are open to a range of economic arrangements for handling this matter. We have structured relationships in patent cases based on traditional billable hours, billable hours with a cap per stage, and substantially reduced billable hour rates with a pre-defined success bonus.

Although each case is different, because we have significant experience with the technology in this case, we have a fairly good sense of the anticipated costs through each major stage of this case. Below is our initial perspective, and we are looking forward to working with you to tailor this budget to the needs of your company and its specific accounting and financial desires.


District Court Litigation

Phase 1
We are often able to settle cases during their infancy. If this case follows the same pattern, the costs below are representative of the maximum effort necessary for our firm to resolve this case.

  • Responsive Pleadings (answer, defences, and counterclaims): ****
  • Early Motion Practice (transfer, stay, dismiss, etc.): ****
  • Initial Invalidity Search & Analysis: ****
  • Initial Non­-Infringement Analysis with Your Team: ****
  • Initial Discovery (disclosures, documents, interrogatories, etc.): ****
  • Patent Disclosures (non-­infringement & invalidity contentions): ****
  • Phase 1 subtotal: ****

Phase 2
When a case is more contentions, or the patent owner is not attempting to settle for a low value, cases often proceed through a Markman hearing. These cases are often resolved by the court as a result of a dispositive motion, or settle due to the court’s perspective of the case as gleaned from their Markman order or dispositive motion opinion. If this case proceeds into Phase 2, the costs below are representative of the additional effort necessary to resolve this case.

  • Complete Fact Discovery (depositions, subpoenas, etc.): ****
  • Final Patent Disclosures: ****
  • Markman Brief & Hearing: ****
  • Expert Reports (affirmative and responsive): ****
  • Expert Depositions: ****
  • Dispositive Motions: ****
  • Phase 2 subtotal: ****

Phase 3
In very rare instances, a patent case proceeds to a jury trial. Morgan Lewis has handled numerous patent trials, including by our proposed technical team of Fabio Marino.

In fact, we prepare every case with the expectation that it will go to trial.

Despite our trial experience, this part of the budget is very difficult to predict because every trial is unique. The following budget is a representative sample of the anticipated effort to take this case through trial. As with all of the financial considerations in this case, we will keep you updated in advance if we anticipate the need to propose higher or lower figures.

  • Pre­Trial Disclosures: ****
  • Trial Exhibits & Evidentiary Objections: ****
  • Witness Preparation: ****
  • Mock Jury Trial: ****
  • Trial Motions (Daubert, Limine, etc.): ****
  • Jury Trial Preparation & Trial: ****
  • Post­Trial Motions: ****
  • Phase 3 subtotal: ****

District Court Litigation Total:

  • Phase 1 subtotal: ****
  • Phase 2 subtotal: ****
  • Phase 3 subtotal: ****
  • Estimated Total: ****

Inter Partes Review

As discussed above, if we find strong prior art, which we hope to give our extensive technical experience in this area, we can file an IPR. Below are the anticipated costs of this option. Because we are likely to request a stay of the district court litigation, a vast majority of the anticipated economic effort noted above will not have to be incurred.

  • Initial Request (excluding prior art search, see Phase I): ****
  • IPR Discovery & Supplemental Briefs (expert depositions, etc.): ****
  • IPR Oral Argument: ****
  • Estimated Total: ****

Ex Parte Reexamination

If we decide to challenge the claims before the USPTO, but want to keep the costs to a bare minimum, we can file an ex parte reexamination. If a stay is granted, a vast majority of the anticipated economic effort noted above will not have to be incurred. However, if a stay is denied, then we will also have to perform the work noted above for the district court litigation.

  • Initial Request (excluding prior art search, see Phase I): ****
  • Estimated Total: ****

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Conclusion


Tech

Top 10% (20 / 241 firms)

92 % Relevancy

Fabio Marino | bio

District

Top 20% (39 / 196 firms)

50 cases

Brett E. Bachtell | bio

Judge

Top 25% (39 / 174 firms)

19 cases

Fabio Marino | bio

Mandy H. Kim | bio

Plaintiff

Top 10% (9 / 103 firms)

9 cases

Michael S. Nadel | bio

Daniel R. Foster | bio

Christopher D. Bright | bio

McDermott is excited to help you resolve this matter.

We are also uniquely positioned to accomplish your goals. Based on our experience, Patent Engine ranks our firm as one of the top patent firms in the country for this case. Leverage our skills and knowledge and together we can successfully navigate and resolve this matter efficiently.

Thank you again for considering our proposal. We look forward to setting up a call to discuss your questions. If there is anything we can do in the meantime, please feel free to reach out to anyone on our proposed team.

  • Tech Rank: Top 10% (20 / 241 firms) (led by Fabio Marino | bio)
  • District Rank: Top 20% (39 / 196 firms) (50 cases) (led by Brett E. Bachtell | bio)
  • Judge Rank: Top 25% (39 / 174 firms) (19 cases) (led by Fabio Marino | bio)
  • Plaintiff's Counsel Rank: Top 10% (9 / 103 firms) (9 cases) (led by Michael S. Nadel | bio)

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