Daniel N. Yannuzzi

In recent years, Daniel Yannuzzi's practice has largely been "challenging and killing patents."

"My role tends to be ... litigating and defending against those challenges and effectively invalidating the patents where I can, which has been pretty frequent lately," he said.

One venue in which he does that is the Patent Trial and Appeal Board in inter partes reviews. He files several a year on average, and "of all the IPRs that I've filed, I've never had one that has failed to be instituted," Yannuzzi said.

The co-leader of Sheppard Mullin's global intellectual property practice, he also has had success blocking patent assertions against his clients in federal court. One case barely got that far.

A nonpracticing entity spent about seven years challenging a technology dealing with black-box video recorders for locomotives, he said. Finally, in November 2022, the company sued Norfolk in Atlanta. Rail Assets LLC v. Norfolk Southern Corp., 1:22-cv-04431 (N.D. Ga., filed Nov. 7, 2022).

"We had pretty strong defenses in terms of non-infringement, which is why we rebuffed them in the first place," Yannuzzi said. He and his team presented their set of defenses to the plaintiff, coupled with a threat to seek sanctions and fees. "And they dropped the case on the basis of our analysis. It was a little bit unusual. ... They went away with no money paid."

More recently, he defended Snap in two cases asserting patents against Snapchat technology related to image filters and lenses. In the first, Yannuzzi won a written decision from the PTAB invalidating all claims of three patents. A Sheppard team with him as a member did much the same at the district court on Section 101 grounds, which was affirmed in a precedential decision by the Federal Circuit last April. Sanderling Management Ltd. v. Snap Inc., 2021-2173 (Fed. Circ., dec'd. April 12, 2023).

The second Snap case was similar except the nonpracticing entity asserting the patents abandoned its Federal Circuit appeal after Yannuzzi won decisively at the PTAB, and the Sheppard team prevailed at the district court. Playvuu Inc. v. Snap Inc., 2:22-cv-06019 (C.D. Cal., filed Aug. 24, 2022).

Actually, Yannuzzi only spends about 70% or 80% of his time knocking down patents. Part of the remaining time, he leads teams prosecuting patents for companies like Chevron, Toyota and Virgin Galactic.

A former NASA engineer, he joined a law firm as a patent agent while still in law school. "I have a lot of expertise in the area based on that," he said. Now, he counsels clients on high-level patent strategy and portfolio management.

-- Don DeBenedictis