The timing was tight—less than six months before trial—when client Universal Remote Control (URC) brought in Sidley as trial counsel for the defense of a sophisticated patent infringement action. The jury found in favor of Sidley’s client on all issues, including equitable defenses that were presented to the jury.
The case involving URC, which sells remote control devices to major cable companies, had been initiated by Universal Electronics Inc. (UEI) more than two years ago, asserting four patents against multiple products of URC.
“Only a small fraction of the thousands of patent suits filed annually even make it to trial at all, and even fewer include presentations of equitable defenses to juries, as was done in this case, so this was a noteworthy victory,” explained Peter Kang, a partner in the firm’s Palo Alto office and member of its Intellectual Property Litigation group.
Sidley was brought in just as the final expert discovery process was under way, and quickly assembled an experienced team of IP litigators on short notice. Our lawyers basically hit the ground running and, given the team’s experience and skills, ramped up under a tight time deadline.
While the trial focused primarily on only one of UEI’s patents involving programming of cable remote controls to work with other devices like TVs and DVD players, UEI had originally claimed URC infringed four patents. In summary judgment and claim construction, pre-trial rulings, the judge had ruled against UEI on three of the four patents. The case went to trial on UEI’s claim that URC infringed on the one remaining patent, and on URC’s counterclaims that another patent was invalid and unenforceable.
The patent that went to trial features a method for programming a cable remote control to operate more like a universal remote control in order to use the same remote for not just a cable box, but also a television or other consumer device. Sidley argued that the patent was invalid because it duplicated the same method another company had introduced several years before UEI claimed the invention was its own. Thus, not only did URC not infringe on the patent, the patent was invalid from the start.
Following a two-week trial in Santa Ana, California, the jury found in URC’s favor on all claims and affirmative defenses, resulting in a decision of non-infringement, invalidity and unenforceability. The jury also found the second patent to be both invalid for improper inventorship and unenforceable. The jury further determined that UEI was guilty of patent misuse and unclean hands.
It was a complete victory on all counts.
Such talent hasn’t gone unnoticed by leading industry publications. Sidley’s Intellectual Property Litigation practice was recently honored as 2014 Intellectual Property Team of the Year by Chambers USA.
For Kang, the URC victory was particularly poignant. “When you consider how few diverse partners in the legal industry as a whole work as lead trial counsel or first chair on this type of very rare and high stakes litigation—you can probably count them on one hand. So, I am particularly gratified at the honor to serve this client in this role, and of course proud of my team’s accomplishments, given the outstanding result,” he said.