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May 19, 2016

Sonal N. Mehta

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In 2003 and 2004, Mehta clerked for now-retired Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit, so she knew her way around the courthouse and saw familiar faces when she flew back to Washington, D.C. to argue a significant case interpreting a recent U.S. Supreme Court opinion.

The high court had held in 2014 that certain computer techniques based on abstract ideas are patent-ineligible. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 U.S. 2347 (2014)

Mehta's task was to apply the opinion's broad holding to defend her clients, a group of major video game companies accused of infringing patents directed to lip synchronization in animation. Applying Alice, she briefed and argued a winning motion for judgment as a matter of law invalidating the patents before U.S. District Judge George H. Wu of Los Angeles. The plaintiffs' Federal Circuit appeal is pending.

Experts have described the matter as a key intellectual property case to watch and a bellwether on the issue of software patent eligibility. McRO Inc. v. Namco Bandai Games America Inc., 12-10322 (C.D. Cal., filed Dec. 4, 2012)

"What's interesting about this area of law is that the Supreme Court gives guidance in a generalized way," Mehta said. "We get to litigate cases that narrow the standards and put more finite boundaries around how district courts should interpret what the Supreme Court has said."

Mehta is lead counsel for Microsoft Corp. and Electronic Arts Inc. in a patent infringement matter involving Microsoft's Kinect motion sensing technology. She developed and argued a winning motion for summary judgment of noninfringement for her clients on 14 of 15 asserted claims and seven asserted patents. That 2015 ruling ended four years of litigation in which the plaintiffs sought tens of millions of dollars in alleged damages. Mehta is principal counsel for Microsoft on the pending appeal. Impulse Technology Ltd. v. Microsoft Corp., 11-586 (D. Del., filed July 1, 2011)

"This one involved a lot of thinking and strategizing at the beginning and execution at the end to explain to the court why we believed we did not infringe," she said.

Mehta teaches patent litigation each spring at UC Berkeley School of Law, her alma mater. She has presented programs on patent litigation at the Federal Judicial Center. She serves on the board of directors of the Federal Circuit Bar Association.

"I love what I do, and there are a lot of becauses," she said. "I'm surrounded by really smart colleagues, clients and even the vast majority of opposing counsel. We all really dig in and try to get to the heart of issues."

- John Roemer

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