John P. Schnurer

Schnurer said he and his team’s strength is effective communication.

They displayed that strength well in two delicate procedural maneuvers and a carefully crafted argument to the Patent Trial and Appeal Board that together allowed their client to reach a favorable settlement in February with an adversary that had been having great success against other cellphone makers.

Back in 2016, Ancora Technologies Inc. scored what Schnurer described as a very large settlement from Apple Inc. over Ancora’s patent to prevent software piracy.

And it was succeeding in claim construction hearings, PTAB proceedings and the appellate court against other big technology companies.

Those precedents effectively meant the patent was getting stronger. “The problem is you get a snowball effect,” he said.

Schnurer’s first goal was to move the lawsuit against his client, China-based TCL Corp., from the Eastern District of Texas to the Central District of California. He managed that with a procedural motion and careful negotiations.

Schnurer is co-chair of his firm’s Taiwanese practice group, and most of his clients are in Asia.

Next was to try for a more favorable claim construction of Ancora’s patent — “a patent I felt was truly invalid,” he said. That meant making TCL’s case before a trio of technically trained, experienced PTAB judges.

That in turn meant making sure the PTAB didn’t decline to accept his case because of the lawsuit pending in California.

Schnurer asked U.S. District Judge George H. Wu for a stay “knowing full well that Judge Wu doesn’t grant stays” for mere PTAB filings, Schnurer said.

But at the hearing for a stay, the Perkins Coie team got the chance to explain its importance. “A lot of people don’t do this. They don’t explain the impact of a decision on a collateral proceeding,” Schnurer said.

Wu didn’t grant a stay, but in his order he said he would if the patent board accepted the matter.

The PTAB agreed to institute an inter partes review of the patent on Feb 15. Eight days later, Ancora settled the lawsuit. Ancora Technologies Inc v. TCT Mobile (US) Inc., 19-CV02192 (C.D. Cal., filed Nov 12, 2019).

Schnurer is very proud of his team’s work.

“It was artful in showing what can be done on a focused budget and focused effort to effectively communicate with different proceedings,” he said.

— Don DeBenedictis