A Thrilling Start to the Year: Turner Boyd Wins First EDTX Patent Jury Verdict of 2016

Attracted by its reputation for favoring plaintiffs, patentees file more cases in the Eastern District of Texas than any other district. But after almost two years of litigation, it took a Marshall, Texas jury less than two hours to completely exonerate Turner Boyd clients SteelSeries ApS and SteelSeries North America Corporation in the District’s first patent verdict of 2016.

From partner Esha Bandyopadhyay’s opening statement to her closing argument, SteelSeries’s defense focused on two key themes: “SteelSeries does it differently, and others did it first.”

The plaintiff had asserted that its patent – one that SteelSeries had never heard of prior to suit – covered all SteelSeries computer mice that change resolution without special software running on the host computer. But under cross examination from Turner Boyd partner Joshua Masur, plaintiff’s infringement expert admitted that he had examined in detail only one SteelSeries mouse, and that if that particular mouse “lacked a claim element, then, yes, there would be no infringement” by any of the accused products.

Both SteelSeries’s Chief Technology Officer, Tino Soelberg, and its non-infringement expert then testified that, unlike the patent, which required using the mouse microcontroller to alter mouse resolution based on the position of a specific type of switch, SteelSeries used a push-button to change the resolution of the mouse’s movement sensor, which is essentially a specialized camera. Instead of taking pictures at a single resolution and then blowing them up later, as disclosed by the asserted patent, SteelSeries’s sensors zoomed in and took a higher quality picture in the first place.

SteelSeries’s presentation of evidence ended on a high note, when Ms. Bandyopadhay and SteelSeries’s invalidity expert led the jury through an exhaustive analysis of two pieces of prior art, a mouse product and a Japanese patent application. After defeating significant efforts by the plaintiff first to exclude, and later to question the reliability of, the prior art, SteelSeries’s expert demonstrated that the prior art product was “strikingly similar” to that depicted in the patent-in-suit. He went on to explain the extensive process he had undertaken to disassemble the mouse, identify the internal components, conduct x-rays of those components, and pursue additional forensic analysis to confirm his findings. The plaintiff’s comparatively superficial analysis of a single SteelSeries product simply paled by comparison.

The plaintiff had originally sued over a dozen companies that made or sold computer gaming mice, including some who own a far greater share of the market. By trial, however, only SteelSeries, which had never before been sued for patent infringement, continued to fight.

When asked why SteelSeries didn’t just agree to pay the plaintiff, Mr. Soelberg testified that it doesn’t “make any sense to pay money for something … you are actually not using … it’s just wrong.” Mr. Soelberg called the jury’s verdict “a huge win for us – not just monetary. It proves that we do not cave in.”

In addition to Ms. Bandyopadhyay and Mr. Masur, the SteelSeries trial team included Turner Boyd attorneys Matthew Smith, Zhuanjia Gu and Louis Wai; James Heiser, Eric Silvestri, and Sara Ghadiri of Chapman & Cutler, who expertly presented SteelSeries’s damages case; and Michael Smith of Siebman Burg Phillips & Smith, whose knowledge and understanding of the courts of the Eastern District of Texas is unmatched.