Annita Zhong

Annita Zhong regularly takes on the very technical side of patent litigation, even when the technology has no relationship to her Ph.D. in chemistry.

She has published journal articles about chemistry from when she was a research scientist with GE, and she has some patents of her own related to materials science.

But much of her work lately has dealt with telecommunications, cellphones and computer hardware. “I often say in all the cases I litigate, I am a person with no skill in the art,” Zhong said.

“I think, in a way, it helps me appreciate what the jury may understand and may not understand at first glance [in a case] because there are things that when I first take a look … don’t make any sense to me.”

Zhong was part of the Irell team that last month won a $303.15 million verdict for Netlist Inc. against Samsung for willfully infringing five Netlist patents that deal with high-tech memory modules used in servers. Netlist, Inc. v. Samsung Electronics Co. Ltd., 2:21-cv-00463 (E.D. Tex., filed Dec. 20, 2021).

She did not present any witnesses during the trial, but she did get them ready to take the stand. “My role was trying to anticipate what were the sticky points on cross and … prepare the witnesses for those,” she said.

Zhong is also in charge of defending those same patents in IPR proceedings before the Patent Trial and Appeal Board.

A substantial portion of her work involves PTAB matters and re-examinations, she said. In particular, Zhong successfully defended PanOptis patents on 4G LTE technology in a trio of IPRs against them filed by Apple.

She also was a principal member of the team that won a $300 million verdict in 2021 for PanOptis against Apple for infringing 4G patents. The case is now on appeal. Optis Cellular Technology LLC v. Apple Inc., 22-1904 (Fed. Cir., filed June 14, 2022).

One aspect of litigation before the PTAB does concern her. After a challenger files an IPR petition, the patent owner files a response. But recently, the patent office has been allowing the petitioner to then reply to the response. That’s a change from previous practice, Zhong said.

In one of her cases recently, the PTO director’s office went so far as to set aside the PTAB’s decision not to institute an IPR because the board had not allowed the petitioner to reply to the patent owner’s response regarding a particular issue. Google Inc. v. Valtrus Innovations Ltd., IPR2022-01197, (PTAB, filed July 5, 2022).

She finds litigation at the PTAB is less predictable than in district courts. “The pendulum [at the patent office] swings a little bit depending on which administration is in charge,” she said. “I think there should be some predictability for patent owners and petitioners alike.”

— Don DeBenedictis