PATENT LITIGATION AND TRIAL

Our Experience and Results     Alternative Billing Arrangements


Our Approach to Preparing a Patent Case for Trial

At Williams Morgan, recognition of the following principle dictates all of our work: there is a difference between patent litigation and preparing a patent case for trial.  Patent litigation spawns exorbitant legal bills and often results in metastasizing discovery that will not impact an issue to be decided at trial.  Patent litigation results in half-day joint defense group conference calls and email exchanges spanning several days debating a non-controversial or non-dispositive point.  Patent litigation leads to the filing of five motions for summary judgment, all of which are eventually carried with the case through trial and subsequently denied.  Patent litigation causes, in fact necessitates, a loss of focus that results in surprise at trial.  Our experience representing both plaintiffs and defendants leads us to believe that too many companies expend an excessive amount of time and money on patent litigation.

Williams Morgan attempts to avoid patent litigation to the greatest extent possible.  Instead, Williams Morgan prepares our client’s cases for trial.  This means discovery focused on evidence necessary to prevail on a dispositive issue.  This means recognizing that an argument or theory will not be dispositive and having the courage to recommend to a client that it not be pursued or even that it be conceded.  In the long run, this approach results in less costly and more effective representation.

Many of our patentee clients engage us on a contingency basis.  Such an arrangement requires a focus on dispositive issues.  This experience, which is not shared by many of our competitors, spills over to all of our trial preparation work and manifests itself in superior and more efficient outcomes for our clients.


Our Experience and Results
The Firm is most proud of the settlement and courtroom results it has achieved in recent years.  When evaluating potential firms, Williams Morgan requests that you compare our experience, settlements, and verdicts against those of our competitors.  We believe you will find that the comparison favors Williams Morgan, particularly when the size of the Firm is taken into account.

Our lawyers have experience in virtually all of the presently popular venues for patent filings, including the Northern District of California and the District of Delaware.  Additionally, we have developed a particular expertise in the Eastern District of Texas.  We believe it is difficult to overstate the importance of our substantial exposure to the judges, courtroom personnel, lawyers, personalities, and customs and practices of this venue.  We can provide references upon request from a number of Eastern District local counsel to confirm both the importance and breadth of the Firm’s experience in this regard.

As reflected below, the Firm possesses particular expertise in Markman briefing and hearings.  Even if you have obtained separate counsel to handle your general patent litigation needs, the Firm periodically enters into engagements solely focused on successfully navigating the Markman process and remains interested in entering into such arrangements to assist in this vitally important stage of any patent case.

Notable Settlements and Verdicts since 2005
ReedHycalog UK, Ltd. v. Baker Hughes Oilfield Operations Inc., et al., Civil Action No. 6:06-CV-00222; In the United States District Court for the Eastern District of Texas, Tyler Division.  Williams Morgan handled all aspects of the Markman briefing and argued the three Markman hearings held in this action.  The Markman orders are available below. The case settled on the eve of jury selection after Williams Morgan defeated a number of fully dispositive summary judgment motions and related Daubert motions.  Defendants Baker Hughes and Halliburton paid our clients $100 million and $30 million, respectively, in settlement payments and/or guaranteed royalties.
 


ReedHycalog UK, Ltd.
v. Diamond Innovations, Inc., Civil Action No. 6:08-CV-00325; In the United States District Court for the Eastern District of Texas, Tyler Division.  In a case closely observed by virtually all major players in the fixed-cutter drill bit manufacturing industry, a Tyler jury found nine ReedHycalog patents valid and willfully infringed.   A multi-year licensing campaign preceded the verdict, an example of which is described above in connection with ReedHycalog UK, Ltd. v. Baker Hughes Oilfield Operations Inc., et al.  As a result of ReedHycalog’s licensing efforts (assisted by attorneys from Williams Morgan), all major domestic fixed-cutter drill bit manufacturers and their suppliers were licensed or authorized to practice the asserted ReedHycalog patents, except for Diamond Innovations.  Diamond Innovations sought to invalidate the asserted patents and, by doing so, eliminate an ongoing royalty stream estimated to approach ten figures over the life of the patents.  Williams Morgan handled all aspects of the Markman proceedings and, with the assistance of T. John Ward, Jr., tried the case to the jury.  The Markman order is available below.
 


Bruce N. Saffran, Ph.D, M.D. v. Johnson & Johnson & Cordis Corporation, Civil Action No. 2:07-CV-00451; In the United States District Court for the Eastern District of Texas, Marshall Division.   After deliberating for exactly two hours, a Marshall jury found the patent valid and willfully infringed and awarded $482 million in damages.  The verdict is the second largest verdict in the history of the Eastern District of Texas and the sixth largest patent verdict in U.S. history according to Bloomberg data.  Williams Morgan handled all aspects of the Markman briefing and argued the hearing.  The Markman order is available below.  Danny Williams and Matt Rodgers of Williams Morgan tried the case to the jury along with Eric M. Albritton and lawyers from Dickstein Shapiro.
 


Bruce N. Saffran, Ph.D, M.D. v. Boston Scientific Corporation, Civil Action No. 2:05-CV-00547; In the United States District Court for the Eastern District of Texas, Marshall Division. A Marshall jury found the patent valid and infringed and awarded $431 million in damages.  The verdict is the third largest verdict in the history of the Eastern District of Texas.  Williams Morgan handled all aspects of the Markman briefing and argued the hearing.  The Markman order is available below.  Danny Williams of Williams Morgan advised plaintiff’s counsel during trial.  The case settled after argument to the Federal Circuit.

 


Prism Technologies, LLC v. McAfee, Inc., et al., Civil Action No. 8:10-CV-00220; In the United States District Court for the District of Nebraska, Omaha Division.  In this matter, McAfee and other major anti-virus software providers obtained a continuance of a trial after the court ordered the plaintiff to produce documents wrongfully withheld as allegedly privileged documents.  In the interim, the defendants filed a joint supplemental motion for summary judgment of non-infringement which was ultimately granted approximately a month before trial.  The Federal Circuit summarily affirmed the district court’s finding.

Innova Patent Licensing, LLC v. McAfee, Inc., et al., Civil Action No. 2:10-CV-251; In the United States District Court for the Eastern District of Texas, Marshall Division. In this matter, all of McAfee, Inc.’s anti-spam software solutions were accused of infringement.  After a successful Markman hearing, the scope of the case was pared down significantly, and the case settled on extremely favorable terms.  The Markman orders are available below.
 

 

Maxama L.C., et al. v. ConocoPhillips, Inc., Civil Action No. 2:03-CV-00421; In the United States District Court for the Eastern District of Texas, Marshall Division.  Williams Morgan handled all aspects of the Markman briefing and argued the hearing.  The Markman order is available below.  Following the favorable Markman order, the case settled prior to trial on favorable terms.
 


Hewlett-Packard Co.
v. Compression Labs, Inc., et al.,
Civil Action No. M:05-CV-01654; In the United States District Court for the Northern District of California, San Jose Division.  This case involved approximately forty high-tech companies’ use of digital data compression.  Williams Morgan took the lead in the Markman briefing and argued the vast majority of the hearing on behalf of all defendants.  The favorable Markman ruling, available below, resulted in the defendants (including our client) remaining after the Markman ruling to settle for a fraction of the amount paid by defendants who settled prior to the ruling.

 

Typhoon Touch Technologies, Inc. v. Apple Inc., et al., Civil Action No. 6:07-CV-546; In the United States District Court for the Eastern District of Texas, Tyler Division.  In representing one of the defendants, Williams Morgan took a lead role in the Markman briefing and argued the vast majority of the hearing on behalf of all defendants.  The favorable Markman ruling, available below, resulted in the plaintiff’s stipulation of non-infringement as to all defendants.  The case has been affirmed by the Federal Circuit.
 


EpicRealm Licensing, LLC v.
Various, Inc., FriendFinder Networks, Inc, et al., Civil Action No. 5:07-CV-00125; In the United States District Court for the Eastern District of Texas, Texarkana Division.  A Texarkana jury found the patents valid and infringed and awarded $1.257 million.  The patentee requested $62 million in damages during closing argument. The $1.257 million award was the number proffered by defendant’s damages expert.  Danny Williams and Matt Rodgers of Williams Morgan tried the case with lawyers from Fenwick & West LLP.  The case settled shortly after trial.

 

Aloft Media, LLC v Yahoo!, Inc., et al., Civil Action No. 6:08-CV-00255; In the United States District Court for the Eastern District of Texas, Tyler Division; Aloft Media, LLC v. Microsoft Corporation, et al., Civil Action No. 6:08-CV-00050; In the United States District Court for the Eastern District of Texas, Tyler Division; Aloft Media, LLC v. Adobe Systems, Inc., et al., Civil Action No. 6:07-CV-00355; In the United States District Court for the Eastern District of Texas, Tyler Division.  In these actions, Williams Morgan handled all aspects of the Markman briefing and hearings, resulting in rulings available below.  Microsoft (a defendant in each action) settled these matters for a confidential amount.  All Defendants in these matters have since settled.
 

 

Gobeli Research, Ltd. v. Apple Computer, Inc. and Sun Microsystems, Inc., Civil Action No. 2:04-CV-00149; In the United States District Court for the Eastern District of Texas, Marshall Division.  Williams Morgan, along with lawyers from Wong, Cabello, Lutsch, Rutherford & Brucculeri, LLP and Howrey LLP, took the lead in the Markman briefing and at the Markman hearing.  The favorable Markman ruling, available below, invalidated one of the key patent claims.  The plaintiff subsequently settled for a fraction of its pre-Markman demand.
 


Deep Nines, Inc. v.
McAfee, Inc., Civil Action No. 9:06-CV-00174; In the United States District Court for the Eastern District of Texas, Lufkin Division.  Williams Morgan handled all aspects of the Markman briefing and argued the hearing.  The favorable Markman order is available here.  Prior to trial, the Court granted summary judgment which significantly narrowed the scope of accused products.  The ruling is available below.  Although the patentee requested approximately $155 million in damages during closing argument, the Beaumont jury only awarded $18 million.  Danny Williams of Williams Morgan tried the case with lawyers from Rose-Walker, LLP and Eric M. Albritton.  The case settled following the verdict.

 

 

In summary, since 2005, Williams Morgan attorneys have argued over 20 Markman hearings and collected well in excess of $300 million in settlements and approximately half a billion dollars in verdicts.  Notably, Williams Morgan attorneys tried cases in each of the Texarkana, Tyler, Marshall, and Beaumont/Lufkin divisions of the Eastern District of Texas in a period of approximately two years.
 

Alternative Billing Arrangements
As stated above, the Firm performs much of its work on a contingency basis.  In most cases, we prefer to be compensated relative to the results we achieve.  Accordingly, we are open to pure contingency arrangements, shared expense contingency arrangements, and mixed hourly fee/contingent fee arrangements.   For defense work, we are happy to discuss reverse contingency fee arrangements or other similar arrangements that share the risk between the Firm and our clients, rather than placing all of the risk on the client as in traditional hourly billing arrangements.
 
We are especially conscious of our client’s inside counsel and management’s need for as much certainty as possible when faced with the difficult task of budgeting for future legal expenses.  In addition to the engagements mentioned above, fixed fee periodic billing presents an interesting option we are willing to pursue in certain cases.

Of course, many of our engagements are traditional hourly rate arrangements, and we are well-versed in the need for litigation budgets, task-based billing, and other similar requirements attendant to such a client relationship.