Welcome to Skilled in the Art. I'm law.com IP reporter Scott Graham. I've had a good week but Ed Reines and Illumina have had a much better one. So have Kayvan Noroozi and two of his clients. And I think it's going to be a weird year ahead for Peter Perkowski and paparazzo client Humberto Carreno. I'll explain it all below. In the meantime, feel free to email me tips and feedback at [email protected]. Or find me on Twitter at @scottkgraham.

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Jury Embraces Illumina in Battle Over Prenatal Test

For two years, Illumina and Weil, Gotshal & Manges partner Ed Reines tried to steer big parts their fight with Ariosa Diagnostics over the Harmony prenatal test away from a jury. Reines sought to compel private arbitration of Ariosa's counterclaims, but U.S. District Judge Susan Illston of San Francisco and the Federal Circuit refused. Reines argued that Ariosa should be estopped from challenging patent validity after getting its shot before the Patent Trial and Appeal Board. Again, Illston and the Federal Circuit said no.

But it turns out the jury liked Illumina's case. They really liked it. All of the asserted patent claims: valid, infringed, not licensed. Ariosa's $88 million counterclaim: rejected. True, Illumina had been asking for $100 million in damages, trebled for infringement, and got “only” $26.7 million and no willfulness.

I'm guessing Illumina's still pretty happy with that. As my ALM colleague Ross Todd points out, the jury found that both Ariosa's original Harmony test and its redesigned version infringe, which means Reines, partner Derek Walter and counsel Robert Vlasis are probably already at work on a motion for a permanent injunction.

Ariosa, which is represented by Irell & Manella, still has a few cards to play. For one, they're already arguing that Illumina's expert blew off any effort to apportion damages based on contributions to Harmony from Ariosa and from Illumina predecessor Verinata Health. That failure should lead not just to a new damages trial but to entry of judgment under the Federal Circuit's recent Finjan v. Blue Coat Systems ruling, they say in a JMOL motion filed earlier this week.

Reines sounded as if he was on Cloud 9 during a brief interview Friday morning. “We are delighted by the jury's verdict,” he said.

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It's the Daily Double!

Reines' name is familiar in these pages. Less well known is Kayvan Noroozi. Formerly of Irell and Dovel & Luner, Noroozi opened his own eponymous shop in Santa Monica three years ago and tries cases in district court and at the Patent Trial and Appeal Board.

On Thursday he pulled off a double win. I wrote yesterday about the Federal Circuit decision affirming a jury verdict, including a patent eligibility finding, that Noroozi helped obtain against LG Electronics. On the same day Noroozi defeated an attempt by NetApp to launch IPR proceedings against client Realtime Data.

The PTAB case involves a practice patent owners call gang tackling. Realtime has asserted its data compression patents against dozens of companies in district court. Many have responded with IPRs, but not all at once. Dell and Teradata Operations challenged the same patent claim NetApp is challenging a year ago. NetApp then swooped in six months later, again challenging the same claim based on much of the same prior art.

NetApp told the PTAB it filed because U.S. District Judge Robert Schroeder said it was the only way the company could stay the district court case. Neither Noroozi nor the PTAB were buying that. Noroozi believes NetApp was previewing his expert witness testimony in the Dell and Teradata IPRs, which is “profoundly unfair.”

For its part, the PTAB said launching another IPR would be “a significant waste of the board's resources.” It would “require the board to conduct an entirely separate proceeding involving the same claim of the same patent and three of the four same prior art references” at issue in the other IPRs.

Noroozi and his firm obtained two similar decisions blocking NetApp IPRs last fall. In each case the board has applied its September General Plastic decision that set out rules against serial petitioning. That case involved a single petitioner, though. The board is rehearing the initial NetApp-Realtime decision to see if it should be expanded to multiple petitioners. Noroozi said he's encouraged to see a different panel of PTAB judges reach the same conclusion.

“The fact that the Board has continued to deny institution of additional NetApp petitions despite NetApp's rehearing request suggests that the Board is comfortable with its approach at a policy level,” Noroozi said, “although we will of course need to wait for the rehearing decision itself.”

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Paparazzi's Got to Eat Too

I'm not sure if Peter Perkowski of L.A.'s Perkowski Legal had a good week or not, but I'm betting it's been different than most. Perkowski sued singer and actress Jessica Simpsonfor infringing the copyright on photos of herself that were snapped by paparazzo Humberto Carreno.

Carreno captured a series of photos as Simpson was walking out of a New York hotel. Once Carreno licensed some of them to The Daily Mail, Simpson did what a lot of people do when they find photos of themselves that they like—she uploaded them to her own Instagram and Twitter accounts. To a combined 11.3 million followers.

Carreno did not appreciate the extra eyeballs. “Defendants' unauthorized use harms the existing and future market for the original photograph,” Perkowski writes in Jan. 23 complaint. Absent the unauthorized use, her fans “would otherwise be interested in viewing licensed versions of the photograph in the magazines and newspapers that are plaintiff's customers.”

I went to Fenwick & West copyright expert Laurence Pulgram, who's not involved in the case, for some instant analysis. With some reluctance, he said Carreno and Perkowski probably have a good case:

“The photo is owned by the person who creates it, not by the person it's taken of,” he said. Absent a license or a fair use exception, Simpson is probably infringing. “It's pretty ironic,” Pulgram added, given that the law creates space to photograph celebrities for news value in public places. “He has an exception to unauthorized use if it's newsworthy, but the subject of the photo doesn't.”

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$1 Billion Pharma Case Phizzles Out

When Mylan, Teva Pharmaceuticals and four other generics took on Boehringer Ingelheimand its billion-dollar a year stroke preventive Pradaxa, it looked like some knock-down drag-out litigation was ahead. But the case turned out to be relatively simple. Boehringer asserted just a single patent, which includes the Pradaxa compound itself (known by the generic name dabigatran). The compound is a mouthful: “1-Methyl-2-[N-[4-(N-n-hexyloxycarbonylamidino)phenyl] aminomethyl]-benzimidazol-5-yl-carboxylic acid-N-(2-pyridyl)-N-(2-ethoxycarbonylethyl) amide or a physiologically acceptable salt thereof.”

The generics argued that the “or a physiologically acceptable salt thereof” language meant that the claim covered only synthetically produced dabigatran, not dabigatran that's produced in the body such as by using prodrugs. U.S. District Judge Mary Cooper of New Jersey ruled a year ago that under a plain and ordinary construction, the claim covers either type of dabigatran.

Since then the dominoes have been falling. Apotex, Teva and Breckenridge joined early settlers Alkem and Hetero. The last holdout was Mylan. But in October Boehringer and counsel at Paul Hastings and SaulEwing persuaded U.S. District Judge Brian Martinotti that Mylan's expert was trying to relitigate the claim construction decision. Mylan settled Thursday, ending the litigation.

Boehringer's team included Paul Hastings partners Bruce Wexler, Eric Dittmann and Isaac Ashkenazi and Saul Ewing partner Charles Lizza.

Have a great weekend everyone. I'll be back with more IP updates and tidbits next week. Click here to check out more briefings from my Law.com colleagues.