Elizabeth Brann

Paul Hastings

San Diego; Palo Alto

Intellectual Property, Patent, ITC Section 337 Investigations Technology, Trade Secrets

Elizabeth Brann likes to stick to stories when arguing a case.

"I try to take things out of the hyper-technical realm and move it into 'Why does this decision make sense in the law and to your common sense?'"

While she knows she has to "get into the weeds sometimes," Brann believes simplifying arguments and turning them into graspable narratives has a stronger effect on a case than "arguing about why this phrase is better than that phrase, which sometimes can feel really meaningless."

Representing Align, Brann ended the company's 14-year battle with ClearCorrect, securing a $51 million settlement on the eve of trial.

The intellectual property dispute stemmed from Align, the maker of Invisalign, accusing ClearCorrect of infringing nine patents relating to the design and manufacturing of invisible removable orthodontic appliances.

The two sides had been battling with claims and counterclaims in district courts, the Federal Circuit and the International Trade Commission across three continents for teeth-straightening patents over nearly a decade and a half by the time they buried the hatchet.

A pivotal moment came in the form of a rare summary judgment ruling in Align's favor, validating claims ClearCorrect infringed on Align's patents. It then just became a matter of damages.

Brann attributed the summary judgment ruling to keeping things simple, noting "the story tells itself about Align having a revolutionary product." Align Technology Inc. v. ClearCorrect Inc. et al., 11-cv-00695 (S.D. Texas, filed Feb. 28, 2011).

Brann, a partner on Paul Hastings' litigation team, also finds herself in a prominent position in Samsung's rolodex for patent disputes. She recently fought back a smartphone patent challenge from Ironworks Patents LLC, which previously bested Apple in a similar dispute.

Brann first transferred the case from the Middle District of Florida to the Northern District of California, recognized as a more favorable venue for defendants in intellectual property cases. She then forced Ironworks to drop three patents in question after Brann contested their validity. She dealt the final blow in the claim construction hearing when U.S. District Judge Haywood Gilliam, Jr. agreed with nearly every construction Brann proposed.

The case is slated to return to Gilliam for further claim construction proceedings. Ironworks Patents LLC. v Samsung Electronics Co., et al, 17-cv-01958 (N.D. Cal., filed April 12, 2017).

-- Winston Cho