Mark A. Lemley

In February, Lemley scored a reversal at the U.S. Court of Appeals for the Federal Circuit, which wiped out a $13 million patent trial jury verdict in the Eastern District of Texas against his client, Silver Spring Networks Inc.

The issue was whether smart meters sold by Silver Spring Networks and installed on houses to measure utility usage should be considered mobile and portable.

A Texas federal judge ruled a jury should decide that question, but at the Federal Circuit, Lemley argued that was a mistake.

"That's a question of claim construction, not a question for the jury," Lemley said.

The Federal Circuit agreed, but in an even more impressive maneuver, he convinced the high court to reverse the verdict, instead of remanding it back to Texas and argued under a claim construction theory. Holdings LLC v. Silver Spring Networks Inc., 15-1237 (Fed. Cir. Feb. 29, 2016).

In July, Silver Spring was also awarded $600,000 in costs.

"I think the difficulty in appealing a jury verdict is always there's a huge record and whole bunch of things that you can argue about," Lemley said. "We're very happy about the outcome. To go from paying $13 million to the other side paying us several hundred thousand is a great turnaround."

Late last year, Lemley successfully convinced the Federal Circuit for the first time to overturn a Patent Trial and Appeal Board decision upholding the validity of a patent for client Ariosa Diagnostics' fetal Down syndrome test, challenged by rival Verinata Health Inc.

— Saul Sugarman