Slayden Grubert Beard PLLC
In an announcement today, the USPTO rescinded guidance issued by former Director Kathi Vidal related to discretionary denials. The guidance memo, which has been removed from the USPTO’s website, can be viewed HERE. It looks like Fintiv may be back in full force.
For the third year in a row, SGB has been selected by the Chambers Texas Spotlight as one of the top intellectual property boutique firms in Austin.
Chambers’ independent research teams seek to identify firms that punch above their weight in markets across Florida, New York, Texas, North Carolina, Illinois, Ohio, and California.
SGB is pleased to receive the Chambers Spotlight and the recognition that SGB provides the personal service and competitive rates of a smaller practice with the sophisticated expertise typically associated with larger firms.
Slayden Grubert Beard is a trusted partner of clients and law firms involved in patent infringement cases in our home forum, the Waco and Austin Divisions of the Western District of Texas. We are experienced lead and local counsel, and we welcome the opportunity to help you navigate the unique procedures and personalities of our district.
February 5, 2024 Update: Judge Albright’s move to the Austin Division begins, and is confirmed by orders entered today in certain JDII cases. According to the Order dated February 3, 2025, the reassignment of the JDII docket will be: Judge Pitman 40%, Judge Albright 40%, Judge Ezra 20%.
Below are links to standing orders and local procedures we’ve found helpful in the initial stages of litigation in the Waco and Austin Divisions. We look forward to working with you the next time you find yourselves in the Western District of Texas.
Local Rules for the Western District of Texas
Order RE: Assignment of Patent Cases filed in Waco: All patent cases filed in the Waco Division will go on the “wheel” to be reassigned randomly to twelve (12) participating WDTX judges. See Order.
Judge Albright’s Order Governing Proceedings for Patent Cases (OGP Version 3.5) (includes default infringement/invalidity contention deadlines, interim protective order, default discovery limits, and claim construction procedures)
OGP Version 4.4 (January 23, 2024)
Judge Albright’s Orders Related to Venue and Jurisdiction
Pro Hac Vice and ECF Registration Forms
Judge Albright’s Notice of Readiness (Waco)
Standing Order Regarding Notice of Readiness for Patent Cases (March 7, 2022)
Judge Albright’s Standing Order for Discovery Hearings in Patent Cases
Judge Albright’s Form Scheduling Order (Waco)
Judge Albright’s Form Protective Order for Patent Cases
Judge Albright’s Microsoft Excel Scheduling Date Calculator Tool (Waco)
Judge Albright’s Patent Case FAQs (Waco) (includes telephonic hearing procedures for discovery disputes)
SGB is proud to announce that four of its attorneys have been listed among Texas’s best in the Best Lawyers 2024 Texas publication. These attorneys are:
In addition, Tecuan Flores is recognized in the “Ones to Watch” in 2024 (Austin).
Slayden Grubert Beard PLLC (SGB) is pleased to announce that Brett Thompsen has joined the Firm as a shareholder.
Mr. Thompsen is an accomplished patent attorney with over 14 years of experience handling matters before the United States Patent & Trademark Office, the Patent Trial & Appeal Board, and in district courts around the country. He advises clients large and small, from multinational corporations to individual inventors, in all areas of intellectual property.
Mr. Thompsen joins SGB from McDermott Will & Emery, where he was a partner in the intellectual property practice group. Prior to his two years at McDermott, Mr. Thompsen spent eleven years at Baker Botts LLP, where he was elected partner in 2020. “I am excited to be joining the extraordinarily talented team at SGB, including many of my former colleagues from Baker Botts,” said Mr. Thompsen. “SGB offers an incredible platform to provide high-quality work at a substantially lower cost for clients. By eschewing the constraints of the large firm model, SGB allows its attorneys to be flexible and responsive to client needs.”
Mr. Thompsen received his undergraduate degree in Electrical Engineering from Northern Arizona University. Prior to law school, he spent seven years as an Analog and Mixed-Signal Circuit Designer at Motorola, Inc. and at Texas Instruments, Inc. He is an inventor on seven U.S. Patents.
Mr. Thompsen attended the University of Texas Law School, where he graduated with honors and was an Associate Editor of the Texas Law Review. After graduating from law school in 2010, Mr. Thompsen spent a year at Baker Botts LLP before clerking with the Honorable Timothy B. Dyk at the U.S. Court of Appeals for the Federal Circuit. Upon completing his clerkship, Mr. Thompsen rejoined Baker Botts in 2012, later moving to McDermott Will & Emery in 2022.
On November 3, 2023, the Patent Trial and Appeal Board (PTAB) issued the last of three final written decisions concluding that all 88 challenged claims of three patents owned by CloudofChange, LLC are unpatentable.
In October 2021, CloudofChange sued Lightspeed in Waco district court for alleged willful infringement of two patents related to point-of-sale systems. A few months earlier, a Waco jury had found that NCR Corporation willfully infringed the same two patents and awarded CloudofChange $13.2 million in damages.
In January 2022, the Patent Office issued a third patent to CloudofChange. CloudofChange then amended its complaint against Lightspeed to allege infringement of this third patent. SGB filed inter partes review (IPR) petitions at the PTAB challenging the claims of all three asserted patents.
The PTAB instituted all three IPRs, but the district court denied Lightspeed’s motion to stay the lawsuit. As a result, the district court and PTAB proceedings continued in parallel, and a jury trial was scheduled to begin in Waco on September 25, 2023. However, on September 24—after a jury had already been empaneled—the trial was postponed and ultimately reset for February 2024.
Now, just five weeks after the district court trial would have concluded, the PTAB has issued final written decisions finding all asserted claims of all three CloudofChange patents unpatentable.
In its final written decisions, the PTAB sided with Lightspeed on nearly every disputed issue. The PTAB found all claims of U.S. Patent Nos. 9,400,640 and 10,083,012 unpatentable on multiple, distinct grounds, and all challenged claims of U.S. Patent No. 11,226,793 unpatentable without reaching the Petition’s second ground. In total, the PTAB found all 88 claims Lightspeed challenged were unpatentable.
“The PTAB’s decisions correctly recognize that CloudofChange’s patents did not contribute any new technology to the point-of-sale industry,” said lead counsel Joey Gray. “While Lightspeed was prepared to prove to a Waco jury that CloudofChange’s patents are invalid and not infringed, we are pleased the PTAB has now spoken decisively on the question of validity.”
Lightspeed’s IPRs are IPR2022-00779 (’640 patent) (FWD), IPR2022-00997 (’012 patent) (FWD), and IPR2022-01143 (’793 patent) (FWD). The lawsuit is CloudofChange, LLC v. Lightspeed POS Inc., Civil Action No. WA:21-CV-01102-ADA in the Waco Division of the Western District of Texas.
The SGB team representing Lightspeed includes Joey Gray, Tecuan Flores, Darryl Adams, Brian Banner, Valerie Barker, Truman Fenton, Clark Oberembt, and Nellie Slayden.
Judge Chhabria (NDCA) issued an Order this week granting Google’s request for over $191,000 in attorneys’ fees. The Court found attorneys’ fees warranted under 35 U.S.C. § 285 because the lawsuit filed by plaintiff EscapeX “was frivolous from the start.” Order at 1. The Court went on:
This was, in short, an effort to force a modest settlement by pestering a tech giant with a frivolous suit on the assumption that the tech giant will prefer to capitulate than fight back. Indeed, EscapeX and its parent company DynaIP have a history of bringing frivolous suits for this purpose. . . . EscapeX is ordered to reimburse Google in the amount of $191,302.18.
Order at 2 (citations omitted).
A great win for our client!
SGB attorneys representing Google in the matter: Brian C. Banner, Nellie F. Slayden, Darryl J. Adams, Truman H. Fenton, and Tecuan Flores.
Slayden Grubert Beard PLLC (SGB) is pleased to announce that Valerie K. Barker has joined the Firm as a Senior Associate.
Ms. Barker is a trial lawyer and patent attorney with over 9 years of experience in patent litigation and patent prosecution. She regularly handles complex disputes involving concurrent proceedings in Federal Courts, the International Trade Commission (ITC) and proceedings before the United States Patent and Trademark Office (USPTO), and she has served as the lead associate on high-stakes patent infringement matters.
“I am excited to continue my legal career at SGB,” said Ms. Barker. “Many of my friends and former colleagues previously made the move to SGB and I look forward to once again working with them to provide the same high quality legal services to our clients but with more efficiency and at a lower cost. It is a win-win.”
Ms. Barker earned a B.S. in Aerospace Engineering & Mechanical Engineering from Oklahoma State University, and an M.S. in Engineering Management from Southern Methodist University. From 2003-2010, Ms. Barker worked for Lockheed Martin and Boeing in various engineering roles. She subsequently obtained her J.D. from the University of Virginia.
Ms. Barker began her legal career with Baker Botts in 2012 before moving to Norton Rose in 2021. Ms. Barker is the current President of the Austin Intellectual Property Law Association and serves as Board Chair of American Gateways, a non-profit that provides immigration legal services at no or low cost to those in need.
Earlier this month, SGB attorneys Darryl Adams and Brian Banner participated in the firm’s third jury trial before Judge Albright in Waco. All three trials have been huge successes for SGB’s clients.
SGB’s extensive experience with the Waco court (as both lead and local counsel) includes these trials, multiple claim construction hearings, and other ongoing cases for clients including Google, Microchip, Amazon, Redfin, AMD, Zoho, Lightspeed, and REI. We are familiar with how things work in Waco. We know what to do and not do. And we know who to call with questions. Our deep knowledge of the court’s tendencies and views on patent litigation enables us to develop the most effective litigation strategies and tactics.
Slayden Grubert Beard PLLC (SGB) is pleased to announce that Joseph (Joey) Gray has joined the Firm as a shareholder.
Mr. Gray is an accomplished trial lawyer and patent attorney with over 15 years of experience trying bench and jury trials in district courts around the country, at the International Trade Commission, and before the Patent Trial & Appeal Board. He advises in all areas of intellectual property for clients of all shapes and sizes, from individual inventors and emerging companies to multinational corporations.
Mr. Gray joins SGB from Baker Botts LLP, where he was an intellectual property partner for the past seven years. “I am delighted to be joining SGB’s first-rate team of IP lawyers, including several former Baker Botts colleagues I highly respect,” said Mr. Gray. “SGB has found a way to practice IP law in a way that is different and better than large law firms – including being more nimble, flexible, and responsive to client needs. I’m excited to introduce my clients to the extraordinary talent at SGB, and I look forward to continuing to provide exemplary client service at a substantially reduced cost.”
Mr. Gray earned his undergraduate degree from the University of Texas at Austin, where he studied in the Engineering Honors Program and graduated with highest honors from the McCombs School of Business. Mr. Gray also attended The University of Hawaii (Manoa) and The University of Edinburgh (Scotland) during his undergraduate studies. He subsequently attended Stanford Law School, where he graduated with distinction and served as managing editor of the Stanford Journal of Law, Business & Finance.
After completing a clerkship with the Hon. William Wayne Justice of the U.S. District Court for the Eastern District of Texas, Mr. Gray began his legal career with Vinson & Elkins before joining Baker Botts in 2011. Among other awards, Mr. Gray was recognized in The Best Lawyers in America from 2013-2020 and as a Texas Super Lawyer-Rising Star from 2011-2019.