Adrian Pruetz

Patent disputes often come down to "a battle of the experts," Pruetz said.

In a high-stakes patent infringement case involving AT&T Mobility LLC, Pruetz obtained a complete defense victory for her client, Intrado Inc., a provider of 911 support services to the telecommunications industry. Intrado Inc. v. AT&T Mobility LLC, 2:11-CV-05322 (C.D. Cal.)

The parties agreed to submit the case to binding arbitration before a panel of three retired federal judges. They, in turn, reviewed more than 200 pages of pre-hearing and post-hearing briefs, and listened to the direct and cross-examination of a dozen witnesses, before finding for Pruetz's client.

"Our strategy is to stick very closely to the technology," she said. "Our approach was to point out all of the ways in which our client's services differed materially from the claims covered by the two patents."

The challenge was to break down the complexities of the case for the panel.

"A lot of it came down to effective cross-examination," Pruetz said. "The way you have to tell your story in the clearest way to explain the technology. In any technical discussion, there are a million details. Making choices is really what being a litigator is about. You can't present everything."

In another of her significant matters, last year the U.S. Supreme Court issued a 7-2 opinion in favor of Roche Molecular Systems and others affirming the U.S. Court of Appeals for the Federal Circuit's holding that the Bayh-Dole Act doesn't change the ordinary rules of patent assignment. Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, 563 U.S. (2011). It meant that Roche was therefore a co-owner by assignment of the three HIV test method patents asserted against it by Leland Stanford Junior University. This is billed as the first patent case in which the Supreme Court affirmed the Federal Circuit despite the solicitor general supporting reversal.

Pruetz was counsel of record in the U.S. Supreme Court for the Roche defendants, and lead counsel from the case's inception.

-PAT BRODERICK

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