Potter Minton has leveraged its Tyler, Texas, address into co-counsel work for some of the nation’s top companies fighting patent lawsuits in the plaintiff-friendly Eastern District of Texas.
The 17-lawyer, 112-year-old firm handles local commercial transactions and almost any kind of commercial litigation that comes its way. That includes bankruptcy, employment, health care and oil and gas industry cases.
In recent years, the firm’s litigation flexibility has led to co-counsel work defending high-profile patent cases. Intellectual property clients include American Express Co., AT&T Inc., Cisco Systems Inc. and Intel Corp. Those firms helped the small firm tie for fifth on the most-mentioned list for law firms that do intellectual property work for Fortune 100 companies in The National Law Journal‘s Who Represents Corporate America survey this year.
Potter Minton has been doing more patent defense work as patent infringement filings have spiked in the Eastern District, but that hasn’t changed the size, or philosophy, of the law firm, said managing partner James Hedrick.
“There was a time when there a lot of toxic tort cases filed, and we were involved in a lot of those cases,” Hedrick said. “We respond to the types of cases filed in the courts [where] we practice. That, to a large extent, dictates the nature of your practice.”
Before Texas became a patent case hub, the firm specialized in the oil and gas, real estate and litigation work that flowed from the 1930 discovery of the East Texas oil field in Tyler.
Potter Minton also flourished from the 1930s through the 1950s by doing work for an important local bank that’s now part of Bank of America, said John Bufe, the firm’s director of litigation. The firm’s regional loan work for Bank of America is a legacy of that early relationship. “Oftentimes commercial law firms would prosper with the fortunes of a local bank,” Bufe said. “That’s part of how you grew a law firm back in the day.”
VERY ACTIVE ROLE
In a nod to its current client base, the firm leases office space in Marshall, whose federal court is a patent case-magnet in the Texas district. Potter Minton also makes a point of playing a very active role as patent co-counsel, said Mike Jones, who heads the firm’s intellectual property litigation section.
Unlike some local counsel, who do no more than put their name on pleadings prepared by other law firms, Potter Minton participates fully in the cases, Jones said.
“Our clients appreciate that; they do want us to be involved in the cases, and not just as a local counsel who can make a filing at some time or another,” Jones said.
Potter Minton — and Jones — are very knowledgeable about practicing in the Eastern District, said Marta Beckwith, Cisco’s director of IP litigation.
“We trust their advice,” Beckwith said. “Mike is a very experienced trial lawyer, and so he brings that to the table. Whether or not he has the technical experience, he brings litigation [skills] to the table.”
Jones said his first patent defense work dates to the early 1990s, when he helped tool and gadget maker Leatherman Tool Group Inc. defend a patent infringement case that settled just before the trial.
But Potter Minton solidified its patent case reputation in the Eastern District on the plaintiffs’ side. The firm co-represented energy giant Halliburton Co. in its 2002 patent infringement lawsuit against oilfield services company Smith International Inc. Potter Minton and Jones helped secure a $24 million jury verdict in June 2004 that ballooned to about a $45 million judgment for Halliburton. The plaintiffs’ team persuaded the jury that Smith infringed Halliburton’s roller cone drill bit, a type of spinning drill bit used in oil and gas work.
The infringed product wasn’t particularly interesting, but the Chinese immigrant inventor was compelling, Jones recalled. News of the inventor’s patent was a big deal back in his tiny home village, and his family had a celebratory dinner when he got the patent, Jones said. “Every lawsuit is about telling a story and presenting a story to the jury, no matter how technical the case is,” Jones said. “We help bring the perspective of ‘What’s our theme and how do we develop this case so we can be persuasive to the jury?’ I think we can help do that.”
In a more recent win, Jones worked with a trial team led by famed patent lawyer John Desmarais to help cable services company Charter Communications Inc. secure a no-infringement jury verdict in July 2007. Desmarais was a partner at Chicago’s Kirkland & Ellis at the time. He now heads his own New York law firm, Desmarais LLP, and is president of patent licensing company Round Rock Research.
The jury found that Charter did not infringe four patents related to transmitting high-speed data over cable boxes held by plaintiff Hybrid Patents Inc. “Everybody’s looking for defense verdicts in Marshall, Texas,” Jones said. “When you’re part of a team like that, that does certainly make people know who you are.”
Desmarais said he’s worked with Jones extensively over the years. In the Charter Communications trial, Jones handled voir dire and the witnesses, and he cross-examined the damages experts, Desmarais said. “He provides a substantive role rather than just accompanying us to court,” Desmarais said. “He participates in strategic decision-making when we try the case.”
Clients have also noticed the firm’s work helping Intel with its case against an Australian government research outfit that had filed multiple U.S. lawsuits alleging that companies infringed its wireless local area network patent, Jones said. Intel initially filed a declaratory judgment action against the Commonwealth Scientific and Industrial Research Organisation in the Northern District of California in 2005 after the organization demanded that it take a license.
In its counterclaim, the Australian organization alleged that Intel infringed the patent. The case was partially consolidated with several other related matters, and Intel and the organization settled their part at the end of an April 2009 trial. “It’s prestigious to settle a case against a foreign government,” Jones said. “[Also], when you’re in cases like that with a lot of defendants…, people are seeing you try the case and that does bring attention to your firm.”
Sheri Qualters can be contacted at email@example.com.