Karen I. Boyd

A shift in the law and careful timing made the third time the charm when Boyd invalidated a patent for client Truven Health Analytics Inc.

In the case, a plaintiff tried to enforce a patent for software which calculates an efficiency rating for physicians. While a 2014 ruling by the U.S. Supreme Court in Alice Corp. v. CLS Bank International put the law on her side, her first two attempts at invalidating the patent were unsuccessful for being too early in the case. The plaintiffs moved for summary judgment against that legal defense, and gave Boyd an opening.

“Because it’s number-crunching, the case law out of the Federal Circuit has become clear that if all you do is take data and do math and come up with other data, that is not something you can have a patent for,” she said.

In December, she won invalidation on summary judgment by U.S. District Judge Susan Illston of San Francisco. Cave Consulting Group Inc. v. Truven Health Analytics Inc., 15-CV02177 (N.D. Cal., filed May 14, 2015).

“We were really confident that was the right outcome, and cases are much easier when you’re confident you’re on the right side of it,” she said.

Boyd also was part of a legal team that scored an International Trade Commission general exclusion order in April 2017, banning imports from any company that infringe an American patent, rather than just a single company. In the Matter of Certain Pumping Bras, 337-TA-988 (ITC, filed March 14, 2016).

“Because it’s such broad relief, the standards for it are really high. It’s not something that’s done casually in any way,” she said.

In another case, Boyd won a bench ruling that client Rearden LLC was the proper patent holder for an award-winning movie technology after chasing its rights through a “shell game” of sales from separate companies.

Boyd said that a former employee of Rearden claimed he was the rightful owner of the technology, and that the rights were a gift from Rearden’s owner.

Boyd took a two-pronged approach. First, she argued that the gift never happened. Second, she said the sale of the technology was invalid. In August, U.S. District Judge Jon Tigar of San Francisco found for Rearden. Shenzhenshi Haitiecheng Science and Technology Co. Ltd. v. Rearden LLC et al., 15-00797 (N.D. Cal., filed Feb. 20, 2015).

Boyd said the case is emblematic of how personal intellectual property cases can be once she cuts through the technological aspects. “I think that there are ways to win patent cases that are hyper-technical, but if you get all the way to a trial, it’s the human relationships and themes you spend a lot of time with. We actually developed all of the human side of [Rearden], and that’s the scaffolding that you need to put all the technical stuff on,” she said.

She added that the human element was unexpected when she started in the specialty, but it was what kept her there.

“I was drawn to IP because it was a little more scientific and technical” she said. “But then you’re four minutes into practicing, and you realize it’s people’s inventions, and companies, and things that matter deeply to them. And that ended up being what really kept me invested and happy in this field.”

— Andy Serbe