Behind the case: $42m patent win brings late Christmas cheer to Robins Kaplan

Last week’s $42.4 million jury verdict in favour of Willis Electric was a welcome result for Robins Kaplan.

A jury at the District Court for the District of Minnesota found on January 17 that Polygroup, which describes itself as the biggest global manufacturer of artificial Christmas trees in the world, had infringed Willis Electric’s patent related to lights for artificial Christmas trees.

Willis Electric filed the suit in August 2015.

Patrick Arenz, partner at Robins Kaplan in Minnesota, led the team that advised Willis Electric. Partners Emily Niles and Jessica Gutierrez, counsel Brenda Joly, and associate Prateek Viswanathan were also on the team.

Arenz tells Managing IP about how he came to work on the case, the challenges of getting the dispute to trial, and how the team was able to explain the technology to a jury.

How did you come to work with Willis Electric?

This was the first matter that I was engaged for them on, although I’ve since handled several other matters for them, including at the Court of Appeals for the Federal Circuit.

There’s a lawyer, John Fonder, who prosecuted the patents at issue for this trial and served as longtime counsel for Willis Electric. In 2020, around five years after the litigation had started, it was abundantly clear to him and to Willis that they needed some tried-and-true trial lawyers.

Fonder contacted me about taking over as trial counsel from the other counsel of record [the company's litigation counsel at that time].

We connected, and it turned out to be a good fit. I didn’t know Fonder directly, but I had been introduced to some of his partners before. Minneapolis has a very vibrant intellectual property practice group, and I think people tend to know of people.

What were the greatest challenges you encountered?

We had the challenge of COVID.

Willis Electric is a Taiwanese company, and the defendant Polygroup is based in Hong Kong SAR. We did all the depositions in November and December 2020 and, of course, did them remotely. The time zone was often the exact opposite of ours. We’d start depositions at 7pm and end at 3am.

But the biggest challenge was getting the case to trial.

When you look at the history of this case, it was filed in August 2015 and there were 16 inter partes review petitions, which I think is extreme and certainly a lot for the subject matter. There was really a scorched earth strategy by the defendant, and because of that, there were delays at the district court.

When I got involved in 2020, the discovery was just getting started, and we were already five years into the litigation.

We had to drive the case forward.

How did you manage that?

At our firm, we think from day one about what the case will look like in front of a jury. That puts us in the best position to be thinking about what’s most important and what will be the trial theme and strategy.

We’re used to these scorched earth tactics. It doesn’t make it any easier but it’s nothing we haven’t encountered before. Here, we were keeping our eyes on the prize. We knew that as long as we could get a trial date, we would put the best case forward that we could.

We just had to be focused and push for a trial date as much as possible.

How did you approach explaining the technology to the jury?

This case was a lot of fun. In a lot of patent cases, especially in high tech, the technology is not tangible or accessible to the jury. So, you’re left with charts or having an expert explain it.

We did that in this case too. But we were able to have the Christmas trees in the courtroom. We made sure to have our expert show the jury the invention and how the product infringed and how the invention was different from the prior art.

It really wasn’t surprising that the jury requested permission to inspect the trees.

The process wasn’t without challenges. But it all went very smoothly.

How do you use wins like these to get new work?

There’s a passive and an intentional answer to that question.

From a passive perspective, you have the power of the internet. When a patent owner is looking for trial counsel, they want someone who’s won big before. My firm and I have a track record of big verdicts, and this will help in that regard. It will be easy to locate us on the internet. And that leads to new work.

On the intentional front, I would say that lots of lawyers call themselves trial lawyers when they have little trial experience.

But when it comes to having discussions with sophisticated in-house lawyers and executives, it’s wins like this that allow me to explain my background, why I’d be a good trial counsel, and what my vision would be if I were to get the case.

When you’ve been there before, it adds a little credibility to the discussion.