Milbank Scores for Apple in Smartphone Patent Trial

, The Litigation Daily


Apple Inc.'s lawyers at Morrison & Foerster and Wilmer Cutler Pickering Hale and Dorr got another turn in the spotlight this month for preserving most of the company's $1 billion patent win against Samsung Electronics Co. But Samsung isn't Apple's only patent foe, and the company has other patent victories to be thankful about this week.

For the second time in five weeks, Mark Scarsi of Milbank, Tweed, Hadley & McCloy has won a defense verdict for Apple Inc. in a patent case challenging the company's devices. This time around, Scarsi convinced a federal jury in Los Angeles that the iPhone 4 didn't infringe a small inventor's big idea for a mobile communications device.

The jury returned its verdict on Monday, refusing to find that Apple infringes a patent awarded to a 70-year old electrical engineer named Richard Ditzik, who brought the case through his company NetAirus Technologies. Just as importantly, the jury also invalidated Ditzik's patent on multiple grounds.

Ditzik's patent, which dates back to 1997 and survived a reexamination by the patent office, describes a small, lightweight "microcomputer and communications system" cable of sending texts, making phone calls, displaying videos over both a Wi-Fi and cellular telephone network. As we explained in a previous story, Ditzik's lawyers, Raymond Niro Sr. and his son Dean Niro, claimed that Ditzik conceptualized the modern-day smartphone years before the iPhone came along.

Over the course of three days of deliberation, the jury repeatedly informed U.S. District Judge John Kronstadt of their inability to reach a unanimous verdict. Apple and Ditzik agreed to accept a majority vote, rather than move for a mistrial. Apparently both sides felt they had a majority of jurors in their camp.

It turned out that all but one juror had rejected Ditzik's theory of induced infringement. Six of the eight jurors wanted to invalidate the patent on the grounds that it was obvious in light of other technological developments at the time. Five of the eight jurors wanted to invalidate on the grounds that Ditzik didn't offer a sufficiently detailed written description of his claimed invention.

The verdict comes close on the heels of another victory for Scarsi. In October, the Milbank partner secured a verdict that Apple didn't infringe patents owned by Wi-Lan, a large patent licensing company. We named Scarsi our Litigator of the Week for the East Texas win.

Ray Niro didn't immediately return a call seeking comment. Scarsi declined to comment.

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