Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Every so often I write about a big tech company that rolls the dice on a trial in the Eastern District of Texas and wins a defense verdict. It's patent law's man-bites-dog story. Today, I've got the reverse: a non-practicing entity that went to trial in the patent-unfriendly Northern District of California—and came away with millions. I've also got a quick peek at a couple of Google v. Oracle amicus briefs and some commentary on the Chamber of Commerce patent rankings from PTO Director Andrei Iancu. As always you can email me your thoughts and follow me on Twitter.

Notoriously patent-friendly judges Edward Chen and William Orrick III.

No Expert? No Problem for NPE in ND-Cal

Suppose I told you about small inventor who sued an established Silicon Valley semiconductor company in the Eastern District of Texas. Suppose the company got the case transferred to its home turf, and got the inventor's damages expert thrown off the case.

You'd figure: Probably not going to be a great outcome for the inventor, right?

Well, James Congdon's OptiCurrent LLC just won a $6.6 million verdict that, factoring in future royalties and litigation, figures to be worth more than $20 million when all's said and done, according to lead attorney Jon Suder.

The result has Suder, of Fort Worth's Friedman, Suder & Cooke, singing praises of the San Francisco jury, U.S. District Edward Chen, and even Judge William Orrick III, who booted his damages expert.

“This verdict, from the Northern District of California, shows that all inventors must be respected no matter how big or small they are,” Suder said.

Congdon is a Stanford-educated engineer who sketched out his idea for a three-terminal non-inverting transistor switch in 1997. He applied for a patent in 2001. Congdon had licensed a similar invention to a company called QBar, but QBar was not a commercial success. Congdon partnered with Brad Brunell, a former executive at Microsoft and Acacia Research, to form OptiCurrent in 2012.

The company sued Power Integrations, a supplier of circuits used in power conversion systems, in the Eastern District of Texas in 2016. The case was transferred to Northern California and Judge Orrick not long after the Supreme Court's 2017 venue decision in TC Heartland.

Orrick ruled in April that Congdon's 1997 sketch was not admissible to establish a priority date, but he reconsidered after OptiCurrent produced a witness who had signed and dated the sketch. Power Integrations argued it was too late, but Orrick allowed it because he saw no evidence of bad faith.

Orrick was not so forgiving when it came to OptiCurrent expert witness Larry W. Evans, who estimated damages at $18 million. Evans had assumed a hypothetical negotiation between OptiCurrent and Power Integrations in 2006, but OptiCurrent didn't exist until 2012. Evans also relied on a $140 million verdict Power Integrations won against Fairchild Semiconductor in 2015, but the Federal Circuit had vacated that verdict.

OptiCurrent again asked for reconsideration, but this time Orrick refused. “It is possible, although not desirable, for plaintiff to proceed without a damages expert,” he noted. Orrick also struck Power Integrations' expert testimony on patent validity.

“We got a great judge in Judge Orrick,” Suder said Tuesday. “He did real well by us, even though he struck our damages expert.”

Orrick had another case to try, so the matter was re-assigned to Chen—“a real trial judge,” Suder enthused.

OptiCurrent showed the jury a breadboard prototype of the switch that Congdon still possessed after 22 years. Congdon explained how he'd filled it in with parts bought from Radio Shack. He'd waited four years to apply for the patent because he couldn't afford to until then.

On Monday, jurors awarded a 3 percent royalty on sales of $222 million. Suder said the patent still has three more years to run, and he anticipates further recovery over accused products that were excluded from the trial. That makes the verdict worth more than $20 million, he says.

The reality was still sinking in Tuesday morning. “The fact that we did this in the Northern District of California,” Suder said. “A non-practicing entity took on a local, large semiconductor company and won. And we did it without an expert.”

Suder was quick to clarify that he got immense help from his technical expert, Regan Zane. Also with him at trial were Friedman Suder partners Corby Vowelland Dave Gunter.

Power Integrations was represented Fish & Richardson, which declined to comment. The firm has won its fair share of verdicts for Power Integrations against rival Fairchild.

EFF: Federal Circuit Hijacking Law of Software Copyright

The amicus briefs are pouring in to support Google's effort to get its copyright dispute with Oracle over Java APIs in front of the Supreme Court.

Many of them have a familiar ring—the case has, after all, been intensely litigated twice before the Federal Circuit. But the Electronic Frontier Foundation appears to have something newish: district court decisions applying the Federal Circuit's 2014 decision on copyrightability, rather than regional circuit caselaw.

“District courts have looked to Oracle I as binding authority rather than decisions from their respective regional circuits—even for copyright cases that, lacking any patent claims, will never be heard by the Federal Circuit,” writes Michael Barclay as counsel of record for EFF in a brief filed Monday.

He cautions the Supreme Court to “discount any claim Oracle might make, as it has before,” that regional circuit caselaw will control future cases. “That may be the rule, but it is not the reality for copyright in software,” Barclay writes.

Berkeley law's Peter Menell and UCLA's David Nimmer make a similar argument, declaring in their own amicus that the Federal Circuit has established itself as the de facto national appellate software copyright tribunal. Simply by adding a patent claim to its complaint, “any software company can secure exclusive Federal Circuit appellate jurisdiction over all issues and thereby circumvent regional copyright law,” they write in a brief also filed Monday.

Oracle has been down this road before—it persuaded the Supreme Court to deny cert on the issue in 2015. The case is back before the Supreme Court following Google's win on retrial and subsequent loss before the Federal Circuit.

Oracle's opposition is due next month. And we'll no doubt hear from plenty of their amici then.

Iancu: I Ain't Done Strengthening Patent Rights

The U.S. Chamber of Commerce's Global Innovation Policy Center has elevated the United States from 12th place in its annual assessment of global patent rights to a tie for second. Whatever one might think about the chamber's rankings—and it does have its critics—PTO Director Andrei Iancu is taking a victory lap. And he's vowing to keep working to further strengthen patents.

Iancu noted at a Georgia conference Monday co-sponsored by the chamber that PTO reforms to post-grant review—such as adopting the Phillips claim construction standard—helped improve the U.S. score.

“In order for us to continue our worldwide leadership, we must continue to improve our IP system,” said Iancu in prepared remarks. “We must especially keep working on patentable subject matter and Section 101. Towards that effort, I hope that other authorities will also help us further clarify this important area of law.”

Those other authorities would include Congress, where a push is under way to rewrite patent eligibility standards and make further refinements to post-grant review.

The PTO issued new guidance for its own examiners on patent eligibility last month, something Iancu said has “already proven to dramatically simplify and clarify the analysis.

“Going forward,” he said, “our framework might also help further the discussion in other branches of government.”

That's all from Skilled in the Art today. I'll see you all again on Friday.