Yar R. Chaikovsky

Chaikovsky has made a habit of winning when the odds are stacked against him.

It's what makes him so valuable to his clients such as Snapchat developer Snap Inc., Trend Micro Inc. and HTC Corp., technology companies that often stand accused of infringing patented components.

Those claims, according to Chaikovsky, have become more difficult to throw out using a pretrial invalidity challenge in the wake of two opinions published last year from the U.S. Court of Appeals for the Federal Circuit.

Aatrix Software Inc. v. Green Shades Software Inc., 17-1452 (Fed. Cir. 2018) and Berkheimer v. HP Inc., 17-1437 (Fed. Cir. 2018) complicated invalidity challenges by requiring additional analysis to the two-step analysis already necessary after Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).

So Chaikovsky uncomplicates it.

"You learn to take base notions and present invalidity as prior art. That's where you and your expert witness should be starting," Chaikovsky said. "Get the judge to see [that] the basic concept of these systems were known."

Chaikovsky said he does this by taking real world analog examples like mail. In September, Chaikovsky won a complete victory for Trend Micro at the Federal Circuit following an infringement claim by Intellectual Ventures I LLC. Intellectual Ventures I LLC v. Symantec Corp. et al, 838 F.3d 1307 (Fed. Cir. 2016).

Rather than pick apart the complex components of the two companies' technologies, Chaikovsky described the patent, which dealt with messaging technology, in terms of distributing inter-office mail.

The Federal Circuit agreed with Chaikovsky and invalidated the three patents, ending six years of litigation. Last September, the district court judge overseeing the case, Delaware Chief Judge Leonard P. Stark, granted Trend Micro the full requested amount of attorney fees, though an appeal is pending.

IIn spite of the rulings that have made invalidation challenges more difficult, Chaikovsky remains successful in district court and the Federal Circuit on these challenges and in obtaining attorneys fees for his clients.

With respect to fees, the key, he said, is having is having your sights set early in the game.

"When we are retained by a client, the first thing we look at is how this case stands out from others," Chaikovsky said. "The key to obtaining attorneys fees is not waiting for a result and then going for the for the challenges. The chances are significantly diminished at that point."

-- Paula Lehman-Ewing