Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. While I recover from The Great SG Brief Fracas of 2019, here's what I'm looking at:

Kirkland Wins $125 Million Judgment After Applying Validity Handcuffs.

Oracle's copyright counsel dukes it out on Twitter with Google-Sympathetic academics.

McDermott and WilmerHale to square off in 23andMe patent eligibility appeal.

As always, you can email me your thoughts and follow me on Twitter (though I'm not nearly as interesting a follow as Pam Samuelson, Mark Lemley and Annette Hurst).

Kirkland partners Adam Alper, left, and Mike De Vries

Kirkland Raises the Roof for $125 Million

We have another entry for the category: What doesn't kill you at the PTAB makes you stronger. This is a big, nine-figure example.

A Kirkland & Ellis team won a $125 million verdict last week, plus an immediate restraining order against the sale of accused products, in a four-year-old dispute over 3D rooftop imaging.

Eagle View Technologies and Xactware compete to provide aerial-view, 3D models of roofs to help insurance adjusters estimate the costs of repairs. Long before the parties went to trial last month in New Jersey federal court, Xactware filed some 13 IPR petitions targeting the Eagle View patents. The PTAB declined to institute proceedings in nine. Of the four that did go to trial, most ended in wins for Eagle View, though the PTAB withheld judgment on some challenged claims, as was its practice pre-SAS Institute.

So when trial rolled around last month, Eagle View, Kirkland and local counsel Walsh Pizzi O'Reilly Falanga argued that Xactware could not use any of the prior art already raised in those proceedings to attack validity. "Having chosen the PTAB as their forum for validity challenges, Defendants simply do not get two bites at the invalidity apple," they argued in court papers.

Xactware, which was represented by McCarter & English, argued that under a 2016 Federal Circuit ruling, the AIA's statutory estoppel doesn't apply to claims in an IPR that the PTAB never ruled on. Eagle View and Kirkland argued that after the Supreme Court's SAS decision, Xactware had been free to go back to the PTAB and request rulings on those claims but didn't.

U.S. District Judge Renee Marie Bumb took a middle path. She ruled that Xactware could raise the grounds that the PTAB left hanging, but that Eagle View would be allowed to cross examine about the PTAB history.

"Defendants' validity expert testified on direct for hours arguing that the patents are invalid, but did not mention the IPRs (which confirmed the opposite)," the Kirkland attorneys said via email. "We revealed what really happened on cross-examination."

In the end the jury rejected all of Xactware's invalidity arguments, raised before the PTAB or not.

Jurors also found Xactware and its parent, Verisk, to have infringed willfully, which opens the door to possible enhanced damages. And the day after the verdict issued, Bumb issued a restraining order after Eagle View argued it should not have to wait for a permanent injunction.

Kirkland's trial team featured partners Adam Alper, Mike De Vries, Gianni Cutri, Brandon Brown and Kristina Hendricks and Walsh Pizzi partner Hector Ruiz.

The Great SG Brief Fracas of 2019

It's a good thing the Supreme Court doesn't request Twitter's views on certiorari.

Instead the justices sometimes seek the views of the solicitor general. The SG briefs usually land with a dull thud. While meaningful to the parties (and the justices), they don't as a general rule light up Twitter all weekend.

But Google v. Oracle is not like most cases. After the SG—for a second time—recommended Friday that the court not take the Silicon Valley copyright clash, things got heated. Very, very heated.

I'll let the tweets tell the story. Stanford's Mark Lemley and Berkeley Law (and EFF)'s Pam Samuelson support Google's position. Orrick partner Annette Hurst represents Oracle in the litigation.

Who's Arguing?

23andMe and Ancestry.com will square off at a special setting of the Federal Circuit at Texas A&M in Fort Worth on Wednesday. At issue is 23andMe's 8,463,554 patent, titled "Finding relatives in a database." The patent describes honing in on specific portions of human DNA to predict the identity of previously unknown relatives. U.S. District Judge Edward Chen held much of the patent ineligible under Section 101 after Ancestry.com argued that it was directed to an abstract idea and/or a law of nature.

McDermott Will & Emery partner Bill Gaede is slated to argue that Chen oversimplified the patent claims and ignored important portions of the claim specification and factual allegations in 23andMe's complaint. Wilmer Cutler Pickering Hale and Dorr partner Mark Selwyn has argued in briefs that the patent discloses nothing new about gene testing or sequencing, but instead focuses on a law of nature: "the more DNA two individuals share, the more likely they are to be related."

Finnegan, Henderson, Farabow, Garrett & Dunner partner Aaron Capron, who's not involved in the case, says he's watching closely because of the hybrid nature of the technology, which involves both biotech and big data. It's not crystal clear, he said, whether the Federal Circuit will analyze the patents under the law of nature test or abstract idea test. "Or do they create a separate test of technology in this hybrid space?" he said.

Capron is the head of Finnegan's Digital Health Practice. It's an industry where a lot of investment has been flowing, he said, so plenty of eyes will be on the upcoming decision.

That's all from Skilled in the Art today. I'll be on hiatus Friday, but I'll see you all again on Tuesday.