Sonal N. Mehta

Mehta expresses pride and gratitude about being in the thick of complicated patent cases — even when she doesn’t win.

A case in point: McRO Inc. dba Planet Blue v. Namco Bandai Games America Inc., No. 12-10322-GW (C.D. Cal., filed Dec. 4, 2012), in which Mehta serves as lead counsel for a group of major video game companies accused of infringing patents on lip synchronization in animation.

Mehta briefed, argued and won a motion for judgment as a matter of law invalidating the patents in one of the first cases applying the U.S. Supreme Court’s 2014 ruling on patentable subject matter, Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, but lost in an appeal now considered to be a seminal decision on what subject matter is patentable.

“Even though ultimately we did not prevail at the appellate level and it’s still pending at the district court, it’s an incredibly important case that shaped the law, and it was an honor for me to be part of the briefing and argument on that,” Mehta said.

Mehta, who has been practicing patent law since 2002, had better luck winning for Microsoft Corp. and Electronic Arts Inc. in a patent infringement case involving Microsoft’s Kinect motion sensing technology, in which users can ditch hand controls and interact with a video game through their motions and voice.

Mehta developed and argued a winning motion for summary judgment for non-infringement on 14 of 15 asserted claims and six of seven asserted patents in 2015. Impulse Technology Ltd. v. Microsoft Corp., No. 11-586 (D. Del., filed July 1, 2011). The Federal Circuit affirmed on Dec. 7, 2016.

The case raised fundamental questions as to how courts should conduct claim construction and how patent claims should be construed, which in turn determines whether a plaintiff can allege infringement.

The courts, Mehta said, “found that when you look at the overall context of the patent, the claim had to be constructed in the way we construed, so the plaintiff could not expand its claims to cover Microsoft’s technology.”

Outside of work, one of Mehta’s favorite things to do is teach patent litigation class at her alma mater, UC Berkeley School of Law, in which students write mock briefs, learn discovery and do mock oral arguments.

“To watch the students go from being nervous in the initial weeks of the semester and being confident in the last weeks, there’s nothing better than that feeling,” she said.

— James Getz