Yar R. Chaikovsky

One of Chaikovsky’s biggest courtroom victories made it more difficult to claim patent theft without having a lot more substance to back it up.

He relied on a U.S. Supreme Court ruling to win a case in the U.S. Court of Appeals for the Federal Circuit against a well-known patent holding company.

In 2010, Intellectual Ventures LLC filed an infringement lawsuit against Chaikovsky’s client, Trend Micro Inc., a security software company, over a pair of patents. Intellectual Ventures LLC v. Trend Micro Incorporated (D. Del., filed November 21, 2012).

Four years later, the U.S. Supreme Court issued what’s known as the Alice ruling, which basically meant abstract ideas are ineligible to be patented.

Chaikovsky used that to help him curry the favor of a judge in Delaware.

He said he argued before the Federal Circuit judge patent eligibility boils down to demonstrating functionality.

“It’s not even just software, it’s microprocessors, chips made by Qualcomm, Intel,” he said. “Without claiming functionality, without giving specifics of how it’s done, how the chips are wired this way or programmed in that way, you’re not going to get your claim.”

Similarly last year, just before a $22 million verdict against Apple Inc. for willfully infringing patents owned by plaintiff Cellular Communications Equipment LLC, Chaikovsky proved the claims against his client, AT&T Mobility LLC, were "peripheral" compared to Apple's infringement. The court agreed with Chaikovsky's argument that the “customer suit” exception covers network operators like AT&T who resell a manufacturer’s mobile devices, so AT&T shouldn’t be held liable for infringement. Cellular Communications Equipment LLC v. LG Electronics, Inc. et al., 6:16-cv-00365 (E.D. Tex., filed April 20, 2016).

The wins were hailed in the media as big steps forward for the software since it would be harder to stall growth and allege patent thefts. In Chaikovsky’s own words, his line of litigation over the past 15 years has become more defendant-friendly than plaintiff-friendly and he expects that trend to continue.

“Both of those wins last year were big, precedent-setting wins,” he said.

— Arin Mikailian