Juanita R. Brooks

Fish & Richardson PC

San Diego

Patent litigation

Brooks is a powerhouse in the patent litigation world. Her winning trial record, volume of trials, and impressive client list is matched by very few.

"Last year was a perfect storm of appeals," Brooks said in a recent phone interview.

In 2019, she argued at least six cases at the U.S. Court of Appeals for the Federal Circuit.

In one dispute, Brooks successfully led a Fish & Richardson team, defending biotechnology giant Illumina Inc. against claims brought by Scripps Research Institute that it had infringed patents for making and selling its bead-based microarrays BeadChip and other microarray products.

Brooks successfully argued the patent was not nearly as broad as Scripps claimed and the claim language was limited to specific structures not included in any of Illumina's accused microarray products.

U.S. District Judge Janis L. Sammartino of the Southern District of California subsequently awarded costs against Scripps, but the company appealed.

After Brooks made oral arguments in August 2019, the federal appellate court affirmed Sammartino's ruling in a 2-1 decision. The Scripps Research Institute v. Illumina Inc. 18-2089 (Fed. Cir., filed Aug. 29, 2019).

"The biggest reason that victory was so meaningful to me, is that my partner Craig Countryman and I really worked on it together the whole way and a lot of the district court strategy was all Craig's doing," Brooks said. "Very sadly he passed away the month before the opinion came out from the Federal Circuit. This one was for Craig."

In another case in front of the federal appeals court, Brooks was hired by longtime client Microsoft Corp. to handle an appeal of a Patent Trial and Appeal Board decision involving alleged infringement by the company of long-term evolution wireless technology.

In the matter, the PTAB invalidated the patent at issue. In the appeal, Evolve Wireless claimed the PTAB failed to apply its own interpretation of a key claim. In October, Brooks again successfully convinced circuit judges to affirm the previous ruling.

Those familiar with her work say Brooks has a talent for distilling and simplifying complex technical issues so that they resonate with juries and bench officers. She said while almost all federal circuit judges hearing patent cases have technical degrees, and therefore are able to grasp the nuances of technology much quicker than a jury or even a district court judge, ultimately all audiences are simply interested in clarity.

"Be it a jury, a district court judge, or a circuit court judge, they're all looking to see if your argument makes sense. If it's logical, if it's held together, supported by the facts and the law and that's the same no matter who your audience is."

-- Blaise Scemama