Mark A. Lemley

Picking one’s battles is crucial on appeal, and Durie Tangri partner and Stanford Law School professor Mark A. Lemley seems to have mastered the strategy. He picked up three big wins in 2018, bringing his recent record at the U.S. Court of Appeals for the Federal Circuit to 10-0.

“Jury trials are big and complex and there are lots of issues,” he said. “Most people with experience on appeal would say if you argue too many issues and you say the court did too many things wrong, you end up diluting the effectiveness on the appeal, and the court’s not likely to pay attention to any one of them.”

On behalf of cybersecurity company Blue Coat Systems Inc., Lemley reduced patent infringement damages by 80 percent by targeting three patents in particular and ignoring the rest. Finjan Inc. v. Blue Coat Systems, Inc., 2016-2520 (Fed. Cir. 2018).

“We had an absolutely correct, clear winner argument [on] one of the patents but there wasn’t very much money at stake and it wasn’t worth distracting attention from the arguments that we thought were going to succeed and affect more money,” he said.

In June, Lemley also successfully represented GoPro Inc. in challenging patents for wireless, wearable cameras held by Contour IP Holding Inc. GoPro had argued to the Patent Trial and Appeal Board that it distributed a wireless camera catalog in 2009 at a trade show that constituted prior art, but the board disagreed.

On appeal, Lemley argued the catalog was freely on display and distributed to its target audience, and thus should be considered a printed publication. The appellate court agreed with Lemley and remanded the case. GoPro, Inc. v. Contour IP Holding LLC, 2017-1894 (Fed. Cir. 2018).

In the academic realm, Lemley’s had a busy year too. Last August, he led a group of 37 law professors in filing an amicus brief that prompted the 9th U.S. Circuit Court of Appeals to reverse on a case about a viral Honey Badger video.

His brief warned against blurring the line between copyrights, which protect creative content, and trademarks, which don’t. Gordon v. Drape Creative, Inc., 2018 DJDAR 11007 (9th Cir., Nov. 21, 2018).

Lemley won an award from the International Trademark Association in March for a paper on a related topic: over-policing of parodies.

“Trademark owners are often extremely aggressive in trying to prevent the uses of their marks,” he said. “Courts should treat the existence of parodies of the mark as an affirmatively good thing because that’s a sign that it’s famous.”

— Erin Lee