Authentication and notification

Jesse was the partner at SHB who managed a fairly complex and lengthy IP litigation matter for me when I was the CFO of TeleSign. Litigation on either side is not something I enjoy, but I could not be more pleased with how Jesse managed our case / process.

Matthew Hardy Chief Financial Officer, Bonterra. Chief Financial Officer of TeleSign during the matter. Client. Written September 2021.
  • Twilio v. TeleSign Patent Trial and Appeal Board. U.S. Patent 7,945,034. Assertions that a fraud detection process based on a user's telephone number was obvious were rejected by the Board.
  • TeleSign v. Twilio Central District of California. U.S. Patents 7,945,034; 8,462,920; 8,687,038; 9,300,792. Three inter partes reviews defended.
  • StrikeForce v. PhoneFactor and StrikeForce v. Microsoft District of Delaware. U.S. Patents 7,870,599; 8,484,698; 8,713,701. Out of band authentication.
  • SimpleAir v. Microsoft Eastern District of Texas. U.S. Patents 7,035,914; 6,021,433.

Two-factor authentication is one of the few patent subjects a jury has already used personally, which makes the teaching easier and the arguing harder.

Cryptography, encoding and security

  • Princeton Digital v. Microsoft District of Delaware. U.S. Patent 4,813,056.
  • Tallgrass v. Microsoft Eastern District of Texas. The Addison Fischer patents, U.S. Patents 5,346,972; 6,141,423; 6,216,229.
  • Pantaurus v. Microsoft Eastern District of Texas. U.S. Patent 6,272,533.

A patent is usually argued about long after the people who wrote it have moved on, and the written record they left behind is what is left to argue from.

Communications, email and imaging

  • Comcast v. Sprint Eastern District of Pennsylvania. U.S. Patent 5,991,271.
  • InNova v. Cinemark Eastern District of Texas. U.S. Patent 6,018,761.
  • E-contact v. Microsoft Eastern District of Texas. U.S. Patent 5,347,579.
  • Skyline v. Microsoft Eastern District of Virginia. U.S. Patent 7,551,172.

Chemical

  • Buckman Laboratories v. Solenis Western District of Tennessee. U.S. Patents 8,841,469; 8,962,059. Argued on appeal at the Federal Circuit.
  • Buckman Laboratories v. Nalco Northern District of Illinois. U.S. Patents 7,949,432; 8,012,758; 7,981,679.

The appellate argument in the first of those is in the Federal Circuit's public recordings, so it can be listened to rather than taken on description.

Trademark

  • Cancellation defended A fashion company defended against a proceeding to cancel its registration.
  • Opposition pursued An opposition brought on behalf of a non-profit.

About this list

These are matters listed publicly by the firm. They are named here because they are already public, not because any of them resembles yours.

Past results do not guarantee a similar outcome.