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Baker Botts' IP Department Secures String of Recent Victories for Clients

Media Alert

NEW YORK, March 31, 2020 – Baker Botts’ Intellectual Property attorneys have secured a series of recent victories for clients in the technology, media and telecommunications (TMT) and life sciences sectors, showcasing a broad range of the practice’s capabilities. The wins include a District Court jury verdict, key Federal Circuit and Patent Trial and Appeal Board (PTAB) rulings, and a case dismissal.

“These successes are indicative of Baker Botts’ IP practice being a market leader across the TMT, life sciences and energy industries,” said Robert Scheinfeld, Global Chair of Baker Botts’ Intellectual Property Department. “We have a deep bench of diverse, technically-trained, forward-thinking trial lawyers and professionals around the country who efficiently achieve winning results in the courtroom beyond our client’s expectations.”

Baker Botts has over 200 lawyers and patent professionals, one of the largest IP groups among general practice firms, who collectively hold over 240 technical degrees spanning diverse fields.

The firm’s recent, significant wins include:

Oxford Nanopore Favorable Jury Verdict in Patent Infringement Case Involving Innovative DNA Sensing Tool

Baker Botts secured a favorable jury verdict for UK-based Oxford Nanopore Technologies Ltd., developer of a DNA analysis tool used in 100 countries for a range of scientific applications including viral/bacterial outbreak surveillance, cancer research and human genetics, in a landmark patent infringement case in the U.S. District Court for the District of Delaware, involving two of the leading companies in the sequencing technology space.

Precedential Win on Patent Eligibility for DISH Network

The U.S. Court of Appeals for the Federal Circuit ruled in favor of Baker Botts client DISH Network by holding that merely configuring a computer to implement an improvement to an abstract concept is not patent-eligible. In the case, Customedia Technologies v. DISH Network, the Court affirmed the Patent Trial Appeal Board’s decision to strike down claims directed to an improvement to user-targeted advertising in a media network such as a set-top box and content network. The precedential decision provides much-needed guidance to courts and the USPTO when facing the difficult problem of applying the U.S. Supreme Court’s Alice v. CLS Bank decision to computer-implemented inventions.

Dismissal for Samsung in Patent Case

Baker Botts secured a dismissal for its client Samsung Electronics America, Inc. in a patent litigation action brought by plaintiff William Grecia (Grecia v. Samsung Electronics America, Inc.) in the Southern District of New York. United States District Judge Valerie Caproni granted Samsung’s motion to dismiss Mr. Grecia’s complaint with prejudice, finding that the sole claim of the patent-in-suit is invalid because it is directed to patent-ineligible subject matter. This is the second summary judgment win for Samsung against Mr. Grecia. In a prior case, Mr. Grecia asserted a related patent and Baker Botts won a finding of patent invalidity for Samsung based on indefiniteness of all of the asserted claims.

Dispositive Win on Patent Eligibility

The U.S. Court of Appeals for the Federal Circuit ruled in favor of a Baker Botts client, affirming that the asserted patents of, Inc. are not patent eligible. The Federal Circuit affirmed the Northern District of California’s decision to strike down Voip-Pal’s patents as being directed to the abstract idea of routing a call based on characteristics of the caller and callee in a computer network.

Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

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