Laura M. Burson

As a leading IP litigator for Sheppard Mullin Richter & Hampton LLP, Laura M. Burson in 2021, as co-lead trial counsel won what is generally recognized as the largest patent infringement award—$130 million and rising—against the U.S. government.

She is also vice chair of the USC Gould School of Law’s Intellectual Property Institute and a former president of the Los Angeles Intellectual Property Law Association. She’s the co-author of the American Bar Association’s The Intellectual Property Handbook, 2d Edition (patent chapter).

In her big win last year, Burson said the celebration has been delayed because damages are still being calculated. “I don’t think we’ve had Champagne yet. We probably should have, but we’re still in the saddle.”

The invention in question is a patented method of moving and processing the ubiquitous bins or trays with carts in familiar use at airport security screening checkpoints around the country. Developed to deal with the chaos at checkpoints as new pockets-empty, shoes-off rules were imposed following 9/11, the method was a success.

“My client presented the invention to the Transportation Security Administration to implement and license,” Burson said. “TSA implemented the system but did not license it, making my client entitled to reasonable compensation.” When no compensation was forthcoming, the patent holder sued in the U.S. Court of Federal Claims. SecurityPoint Holdings Inc. v. U.S., 1:11-cv-00268 (U.S. Ct. Fed. Claims, filed May 2, 2011).

Burson joined the suit to help lead the plaintiff team in 2015, before a patent validity bench trial established that U.S. Patent No. 6,888,460 was non-obvious. Factors in its favor included that its use resulted in an unexpected increase in efficiency in passenger throughput; it met a long-felt unmet need; it solved a problem others had failed to unravel; it was copied by the government at checkpoints nationwide; and it was praised by TSA as a breakthrough.

After extensive discovery, a second trial on infringement damages concluded that the U.S. owed SecurityPoint for the system’s use at the nation’s largest airports. The court levied a running royalty of two cents per passenger, which at the time of decision on Oct. 22, 2021, came to about $100 million with delay damages and continuing damages of at least another $30 million.

“We’re now well north of that as damages continue to accrue,” Burson said. In the case’s current phase, discovery proceeds on calculating damages for the system’s use at smaller airports around the U.S.

Not only that, because the litigation has been pending for over 10 years, the applicable statute allows Burson to seek attorney fees likely to be in the millions.

“Most patent cases end up getting appealed,” Burson acknowledged. “We’re not at the end of the road just yet.”

– John Roemer