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Baker Botts Scores Patent Defense Win for Samsung  

September 24, 2018 Natalie Posgate

A group of Baker Botts lawyers said Thursday that they secured a patent invalidity win for Samsung Electronics America in a New York federal case that alleged the Samsung Pay app infringed on technology related to protecting digital content.

In a 28-page opinion, U.S. District Judge Richard Sullivan ruled earlier this month that all of the asserted claims of Philadelphia inventor William Grecia’s patent are indefinite, and therefore invalid. The opinion came after a construction hearing the parties argued before the court on May 24.

Tim Durst

Dallas Baker Botts partner Tim Durst, who was on the Samsung team, said he expects the ruling to “end the proceedings” in the district court for Samsung.

“The court’s claim construction order dealt a death blow to plaintiff’s claims by invalidating the asserted claims,” said Durst, who is partner in charge of Baker Botts’ Dallas office. “We expect this will terminate the district court litigation against Samsung, and are pleased to have helped our client achieve this outcome without the tie ad expense of trial.”

Chicago attorney Matthew Wawryzn, who represents Grecia, did not immediately respond to a request for comment.

According to the Sept. 8 opinion, Grecia is the “purported inventor” of technologies used to prevent the unauthorized copying of media, such as movies, music or games. He alleged Samsung as well as MasterCard infringed on his three patents (nicknamed the ‘555 Patent, ‘860 Patent and ‘308 Patent).

The opinion cites Grecia’s legal argument that his “claimed invention ‘teaches a more personal system of digital rights management’ that employs ‘electronic ID… to manage access rights across a plurality of devices.’ ”

The litigation is one of 50 patent-in-suit cases that Grecia has filed against various companies. In March, the U.S. Court of Appeals for the Federal Circuit affirmed a win that the Northern District of Illinois handed out to McDonald’s in 2016 when it found the fast food chain did not infringe on two of the same patents involved in Grecia’s case against Samsung.

The Baker Botts team also included New York intellectual property partner Neil Sirota, who argued the claim construction hearing, and New York associate Jonathan Cocks.

Natalie Posgate

Natalie Posgate covers pro bono work, public service and diversity within the Texas legal community.

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