Left to right, Fish & Richardson partners William Woodford, Susan Morrison and Jason Zucchi.

The original version of this report was published on the biweekly IP briefing Skilled in the Art.

If I said to you that Fish & Richardson just won a $31 million jury verdict, who would you have guessed tried the case? Maybe a nationally renowned trial attorney like Juanita Brooks or Ruffin Cordell or Frank Scherkenbach, perhaps?

Instead it was a small team of Fish's next generation of trial lawyers. Principals William Woodford (age 43), Susan Morrison (40) and Jason Zucchi (41) handled all of the speaking roles while bagging the eight-figure verdict last Friday in Wasica Finance v. Schrader International. They even made a little law on the America Invents Act along the way.

Woodford, who's already been part of a Fish team that went up to the Supreme Court, and Morrison, the managing principal of the firm's Delaware office, aren't newcomers to trials. But they appreciated having Scherkenbach on hand for trial prep and behind-the-scenes advice. "It was a great experience to have someone like Frank advising when we had questions, but at the same time saying, 'This is your case. You make the decisions,'" said Morrison.

The Fish lawyers represent Wasica Finance and BlueArc Finance, which are spinoffs from the Swiss scuba diving company Uwatec AG. Based on technology for measuring and wirelessly transmitting air pressure in dive tanks, the company patented a device for monitoring automobile tire pressure in the 1990s. Wasica and BlueArc sued in 2013, alleging that Schrader International and related companies sold infringing sensors used on more than 100 million vehicles.

The case was put on hold for several years while Schrader challenged the validity of the patents in PTO administrative proceedings known as inter partes review (IPR). The PTO invalidated 17 of the 21 patent claims. The Fish lawyers ended up asserting a single claim against Schrader at trial, on a sensor that transmits a specific type of signal.

Schrader, represented by Pillsbury Winthrop Shaw Pittman, then sought to reprise its invalidity arguments for the jury. This time it combined the printed publications it had presented to the PTO with actual sensors used on Chevrolet Corvettes in the 1990s. The AIA says accused infringers can't reassert grounds that reasonably could have raised during IPR proceedings. But like some successful litigants in previous cases, Shrader said it couldn't have presented this combination at the PTO because physical products aren't allowed in IPRs.

The Fish lawyers argued, and U.S. District Judge Leonard Stark of the District of Delaware agreed, that Schrader could have instead submitted a 1990 scientific publication that disclosed all of the relevant Corvette sensor features. "In the absence of unambiguous statutory language and precedent from the Court of Appeals, the Court finds more persuasive the view that IPR estoppel applies in the circumstances presented here," Stark concluded.

"They basically took their shot in the IPR and were estopped from another attempt at invalidating the patent," Woodford said.

Schrader still presented testimony about the Corvette sensors in an effort to limit damages. The company tried to argue that "if there's anything new in this patent, it's basically very minor and not worth very much," Woodford said. Schrader also argued that Uwatec had exhausted its patent rights via licensing deals it struck with other automotive suppliers long ago.

The Fish team turned that defense around. "We were able to say, 'Look, all these other people were licensed because they recognized the value of the patent, and that they should take a license and behave. Schrader didn't,'" Morrison said.

The dispute between the companies goes back some 20 years to European litigation. Woodford said the verdict was "a bit of vindication, a bit of recognition" for Uwatec's contribution to the industry.

Zucchi said it's also a "life-changing outcome" for one Uwatec owner, who's preparing to retire this fall, and for the family of the other, who died in 2012. "They were absolutely thrilled at the recovery," he said.

All members of the Fish team, including an associate and a technical analyst who provided support during the trial, have been invited to Switzerland to celebrate, Morrison said.

Woodford and Morrison shared closing arguments last Friday. That meant they got to turn in at a half-decent hour the night before. Zucchi worked late into the night with an associate—and with Scherkenbach—to make sure everything else was fully wrapped up.

"It's something that I've done for other people in the past," Morrison said. "But the fact that Frank was willing to do that, I think really speaks volumes about the firm's commitment to the next generation of lead counsel."