Baker Botts

Firm overview:

Full-service global firm Baker Botts’ history is rooted in the energy industry, and has grown to establish deep benches of talent in intellectual property, technology, and life sciences. With offices spread across the Americas, Europe, and the Middle East, its US presence encompasses seven locations in North America.

Its intellectual property practice and lawyers have attracted many accolades, and the firm draws upon the diverse technical backgrounds of its lawyers in delivering its patent prosecution service.

Team overview:

According to a peer the firm has “a great set of practitioners, a really deep bench. It’s also very broad and covers many technologies.”

New York partner Paul Ragusa’s practice spans patent litigation, IP transactions and licensing, including of standard-essential patents (SEPs). An in-house counsel says Ragusa is “the king of client service”, always readily available to provide high-quality legal advice, and “an incredible resource across the whole of the patent practice”. Ragusa leverages his diverse technical expertise across numerous disciplines, from AI to semiconductor device fabrication, to advise high-profile clients on complex matters.

Chair of Baker Botts’ Federal Circuit Appellate practice group, Michael Hawes assists clients in negotiations and cases on patent and copyright infringement, trade secret misappropriation and violation of employment agreement IP provisions. Hawes has handled more than 60 appeals and mandamus proceedings. Hawes is noted by a peer for his work on design patent cases and for being among a group of attorneys adept at plaintiff and the defence side of patent disputes.

Christa Brown-Sanford is partner and department chair for Baker Botts’ firmwide Intellectual Property practice. She provides guidance on patent procurement, patent portfolio development, patent litigation, and patent licensing. Brown-Sanford’s industry specialisms include telecommunications, blockchain, electronics, artificial intelligence, semiconductors, software, personal mobility, and other technologies.

Samir Bhavsar and Sandra Lee are partners and practice group co-chairs in Patent Prosecution (firmwide) and both are recognised in the field for their patent prosecution work. Bhavar is considered to be a “rare talent in the field”, with a wealth of experience in patent transactional work, prosecution, and litigation. Lee’s practice is focused in the pharmaceutical, chemical, medical device and consumer products areas.

Highly regarded first-chair trial lawyer Doug Kubehl is co-chair of Baker Botts’ patent litigation department. He has approximately 30 years’ experience handling complex patent litigation and licensing in courts throughout the US as well as in Europe and Japan.

Daniel Hulseberg, who is firmwide sector chair for life sciences, handles extensive IP diligence, transactions, product development, patent prosecution, and litigation strategy.

Key matters:

Prosecution

• Baker Botts assisted Supportiv, a Berkeley startup, in patents and trademarks relating to a machine learning-driven platform for matching patients to mental health-related chat groups and resources.
• Baker Botts assisted 7-Eleven with a US patent application for “Item Identification Using Multiple Cameras”.
• Baker Botts assisted Upstart Network, a Bay Area Finserv startup, in patents relating to low-bias, AI-driven, automatic evaluation and approval of consumer loan applications and prediction of consumer loan performance over time.
• Baker Botts assisted Brother Kogyo Kabushiki Kaisha of Japan with a US patent application for an “Information Processing System for Identifying Identification Information of Object Using Machine Learning Model and Determining Detection Settings for Object Based on Identified Identification Thereof”.
• Baker Botts assisted Bolt Financial of California with a US patent application for a “Model-Based Chargeback Representment”.

Litigation:

• Textron Innovations v SZ DJI Technology, Civil Action No. 2:22-CV-351-RWS-RSP, US District Court, Eastern District of Texas, 2024

US aerospace company Textron sued Chinese drone manufacturer SZ DJI Technology (DJI) over drone technology in 2021. Textron alleged that DJI's drones infringe on its patents for drone flight control systems.

In April 2023, a jury in Waco, Texas found in favour of Textron and awarded almost $279 million in damages. Textron requested that the judge triple the amount of the verdict, claiming that DJI’s behaviour was egregious.

In July that year, a US District Judge ordered DJI to turn over portions of its source code. In February 2024, the Patent Trial and Appeal Board (PTAB) denied DJI’s request to review a drone patent owned by Textron. DJI has said that it “strongly disagrees” with the verdict and will “vigorously pursue all options” to defend its legal rights.

However, later that same month, the parties agreed to dismiss the case with prejudice of this entire action (including all claims, counterclaims, and defenses of any party.

The Arnold & Porter team comprised Mark Speegle, Boyang Zhang, Kurt Pankratz, Jeffery Becker, Harrison Rich, Morgan Mayne, Emily Deer, and Caroline Duncan

Attorneys from Paul, Weiss, Potter Minton and Mann, Tindel, Thompson represented the defendants.

• Sling TV v Uniloc, Case No. 21-1651, US Court of Appeals for the Federal Circuit, 2024.

In September 2024, Baker Botts, secured a major victory for clients DISH Network and Sling TV in a patent infringement dispute before the Court of Appeals. This was the second appellate victory Baker Botts achieved for Sling TV regarding the same patent.

The patent case was brought by Uniloc 2017, a non-practising entity that has won several trial verdicts in the past. The Baker Botts team filed Intellectual Property Rights (IPRs) challenging the validity of Uniloc’s patents at the Patent Trial and Appeal Board (PTAB). The PTAB invalidated two of Uniloc’s patents, but the PTAB ruled that one of the patents, which relates to audiovisual presentations, was not invalid.

Sling TV appealed that decision to the Federal Circuit, which vacated the PTAB decision and remanded the PTAB to reconsider its ruling. On remand, the PTAB found all challenged claims unpatentable in view of the Federal Circuit’s guidance. Uniloc appealed the PTAB’s updated ruling, but the Federal Circuit affirmed the PTAB’s finding of invalidity.

The Baker Botts team was led by Hop Guy, and included Eliot Williams, who argued the case before the PTAB and the Federal Circuit, and Ali Dhanani, Kurt Pankratz, Clarke Stavinoha and Chelsea Zhang.

Donald Jackson, of RIMON law firm in Virginia, argued for the appellant, Uniloc. James Etheridge of Etheridge Law Group, in Texas, also represented Uniloc.

• ClearPlay v DISH Network and EchoStar Technologies, Case No. 2:14-cv-00191-DN-CMR, US District Court, District of Utah, 2023

Two weeks after a Utah jury returned a $469 million verdict against DISH Network in a patent infringement case, Baker Botts attorneys won a motion for judgment as a matter of law, vacating the verdict and handing DISH a clear win.

Utah-based ClearPlay sued DISH in 2015, claiming that DISH’s commercial skipping features infringed ClearPlay’s patents. The Baker Botts team cut the potential liability through a successful summary judgment finding. After a two-week trial in March 2023, the jury found that DISH infringed ClearPlay’s patents.

US District Judge David Nuffer ruled that DISH’s AutoHop feature, which allows viewers to automatically skip commercials when playing back certain recorded programmes, did not infringe on ClearPlay’s patents. The judge found that ClearPlay’s “claims for literal infringement, infringement under the doctrine of equivalents, induced infringement, and wilful infringement fail as a matter of law.”

Representing DISH was a Baker Botts team, comprising partners Hopkins Guy III, Kurt Pankratz, Lauren Dreyer, Jamie Lynn, Eliot Williams, Ali Dhanani and Robert Maier; special counsel Eric Faragi; senior associates Samuel Kassa, Bethany Salpietra and Steve Maule; and associates Lori Ding and Chelsea Zhang.

Clients:

Abbott Diabetes Care, Autostore Technology, Bolt Financial, Brother Kogyo Kabushiki Kaisha, Coupa Software, Eaton Intelligent Power, DISH Network, Duke University, DXC Technology, 7-Eleven, Sanden, Sling TV, Supportiv, Textron, Upstart Network, Vochill.