March.26.2013
Orrick today announced an important victory with its client EMC Corporation in a patent infringement dispute brought by Oasis Research, LLC against EMC in the Eastern District of Texas. Following a six day trial in Sherman, Texas, a federal jury on March 22, 2013 returned a complete defense verdict in favor of EMC that invalidated all four patents asserted against the company for failure to name the correct inventors. The case, which spanned three years before going to trial, saw EMC file two petitions for writ of mandamus to the Court of Appeals for the Federal Circuit, which led to significant decisions related to patent litigation. It also gained national attention when National Public Radio ran a story called “When Patents Attack” which noted the role of Intellectual Ventures in supporting the infringement claim against EMC and the other defendants.
Key to EMC’s defense argument was that the patents being challenged were issued by the Patent Office with only one person named as an inventor, a computer engineer named Christopher Crawford. EMC, however, uncovered evidence that Crawford worked with co-workers when he allegedly conceived the ideas in the patents. These former co-workers came forward to claim they made significant contributions to the patents and should have been named as co-inventors. Documents dating back 20 years were located in the attic of one co-worker, supporting these claims. The jury sided with EMC’s argument and returned a verdict of invalidity, finding that one of Crawford’s co-workers should have been listed as a co-inventor thus making all four of Oasis’ patents invalid.
Chris Ottenweller, lead outside counsel for EMC, praised EMC’s resolve to try the case and the leadership that the company’s in-house legal team provided throughout the litigation. “We had a terrific team, both Orrick and EMC lawyers, and the case preparation was both intensive and rigorous. We were dealing with events of 20 years ago, which emphasized the importance of explaining to the jury exactly what happened when Crawford applied for the patents.”
The EMC in-house team included Krish Gupta, senior vice president and deputy general counsel and William Clark, assistant general counsel. The Orrick trial team, led by Ottenweller, consisted of Silicon Valley intellectual property partner Bas de Blank, Silicon Valley intellectual property managing associate Jake Snow and Los Angeles intellectual property managing associate Alyssa Caridis. Eric Findlay of Findlay Craft LLP served as local counsel, while the other defendant, Carbonite, was represented by Matt Lowrie and Kevin Littman of Foley & Lardner.