Paul J. Skiermont

Partner

Paul Skiermont is a trial lawyer with a national litigation and inter partes review practice. Paul represents companies large and small in litigation involving complex science and technology, including pharmaceuticals and other life sciences, telecommunications, aerospace, speech recognition and consumer electronics. Paul is currently lead trial counsel for the patent owner and exclusive licensee in a patent infringement lawsuit in which Apple’s Siri personal assistant is the instrumentality accused of infringing a natural language processing patent owned by Rensselaer Polytechnic Institute.

Intellectual Asset Management 2015—an industry guide that identifies the top patent practitioners in key jurisdictions around the globe—ranks Paul as one of the Top 12 IP litigation attorneys in Texas, and highlights his “brilliant litigation instinct.”

Skiermont Derby LLP was recognized by the online legal news service Law360 as one of ten national boutique practices “that have established brands on par with the biggest firms” and are “capable of competing with — and beating — the best big firms at the highest level.”

The firm’s IAM profile, based on independent research and interviews with patent attorneys worldwide, notes that the firm is involved in “some of the most challenging technology altercations going, due to its ability to decode elaborate technical concepts, and package – and deliver – arguments in a way that juries find convincing.”

Prior to founding his own firm, Paul was a partner at Bartlit Beck Herman Palenchar & Scott, a nationally renowned litigation boutique known for its success in high-stakes cases. He represented Pratt & Whitney and prevailed in an alleged multi-billion dollar patent infringement lawsuit over the engines that power the A380 superjumbo aircraft, and also represented Bayer in its successful defense of the landmark antitrust class action involving the antibiotic Cipro.

Representative Matters

Representative Patient Cases on Behalf of Accused Infringers

911 Notify, LLC v. Intrado, Inc. (District of Deleware)

Lead trial counsel representing Intrado in patent dispute related to E-911 telecommunications systems and networks.

 

GlobeTecTrust v. West IP (District of Delaware)

Lead trial counsel defending West IP in a patent infringement lawsuit asserting a patent formerly owned by British Telecommunications PLC.

 

TR Labs v. tw telecom holdings inc. (District of Colorado; MDL District of New Jersey)

Lead trial counsel for tw telecom in patent infringement lawsuit related to communication networks. Case dismissed.

 

Voicefill v. West Corporation (District of Nebraska)

Lead trial counsel for West Corporation in patent infringement lawsuit related to speech recognition technology. Case dismissed.

 

Burroughs, Inc. v. Panini North America, Inc. (Eastern District of Michigan)

Lead trial counsel for Panini North America in patent infringement lawsuit related to document processing technology. Case pending.

 

Klausner v. Smoothstone IP Communications Corporation (Eastern District of Texas)

Lead trial counsel for Smoothstone IP Communications in patent infringement lawsuit related to visual voicemail technology. Case pending.

 

Marketing Technologies Concepts v. LaunchSpring, LLC (Northern District of Illinois)

Lead trial counsel in successful defense of LaunchSpring against MTC’s patent infringement lawsuit related to sales incentive software technology. Case dismissed.

 

Rolls-Royce v. United Technologies (Eastern District of Virginia)

Represented United Technologies and its Pratt & Whitney division in an alleged multi-billion dollar patent case brought by Rolls-Royce in the Eastern District of Virginia. The technology at issue related to the jet engines (particularly the fan blades) used on the world’s largest airplane, the Airbus A380. Rolls-Royce sought $11 billion in damages and an injunction preventing further sales of the accused engines, which are sold by a joint venture between United Technologies and General Electric. The Court granted summary judgment in United Technologies’ favor finding that United Technologies’ engine did not infringe the Rolls-Royce patent. This ruling was the culmination of a string of successes in which United Technologies also defeated Rolls-Royce’s motion to dismiss patent misconduct conduct counterclaims, won summary judgment of no willful infringement, and prevailed in convincing the Court to strike Rolls-Royce’s damages theory. In the ruling precluding Rolls-Royce’s damages theory, the Court found that Rolls-Royce’s multi-billion dollar “price erosion and lost profits damages is based on misstatements of the law, a lack of sound evidence, and unsupported economic assumptions, and its paid up royalty theory is similarly flawed. [Rolls-Royce’s expert’s] report reads more like a lawyer’s brief advocating for the highest conceivable damages award rather than an expert trying to assist the trier of fact reach a reasonable damages figure. Because of this extensive overreaching, the entire report is undermined.”

 

 

Phoenix v. DIRECTV (Federal Circuit Court of Appeals and Central District of California)

Represented DIRECTV as lead trial counsel in a patent infringement suit filed in the Central District of California. The accused technology involved the Interactive Voice Response (IVR) system that answers customer calls. Plaintiff Phoenix Solutions claimed over $40 million in damages. After the Markman hearing and discovery, DIRECTV moved for summary judgment on the ground that it outsourced its IVR to a third-party vendor and therefore could not be liable for direct infringement. The district court agreed, holding that DIRECTV “is not liable for an infringing ‘use’ of the asserted claims because it does not exercise the requisite direction or control over the way that [the vendors] configure and operate the Accused Technology.” Phoenix appealed. Two days after oral argument, the Federal Circuit Court of Appeals issued a per curiam decision affirming summary judgment for DIRECTV.

 

Edge Capture v. Citadel (Northern District of Illinios)

Represented Citadel as lead trial counsel against allegations of patent infringement related to automated trading technologies. Case resolved by agreement of the parties.

 

Representative Patent Cases on Behalf of Patent Owners

Rensselaer Polytechnic Institute, et al. v. Apple (Northern District of New York)

Lead trial counsel for patent owner and exclusive licensee in a patent infringement lawsuit involving a natural language processing patent owned by Rensselaer Polytechnic Institute. Apple’s Siri personal assistant is the accused instrumentality. Case settled favorably for client, granting non-exclusive license to Defendant for $25 million. Read the Law360 article (PDF) here and Cult of Mac: Siri lawsuit costs Apple $25 million.

 

Spherix v. VTech and Uniden (Northern District of Texas)

Lead trial counsel for Spherix in patent infringement lawsuit related to cordless telephone technology. The cases are the first lawsuits to assert any of the Nortel patents that Rockstar Bidco, LP acquired via auction during Nortel’s bankruptcy proceedings. For more information, see Spherix Initiates Lawsuit Under Cordless Handset Patents, Spherix Initiates Suit Against Uniden for Continued Infringement of Intellectual Property, Spherix Retains Leading Patent Licensing Team.

 

Panini S.P.A, et al. v. Burroughs, Inc. (Southern District of Ohio)

Lead trial counsel for plaintiff in patent infringement lawsuit related to document processing technology. Case pending.

 

LoggerHead Tools, Inc. v. Sears Holding Corporation and Apex Tool Group, LLC (Northern District of Illinois)

Lead trial counsel for LoggerHead against Sears and Apex in a lawsuit alleging patent infringement, trademark infringement and several tort claims arising from Sears’ sales of Craftsman Max Axess Locking Wrenches. LoggerHead CEO, Dan Brown, is the inventor of the Bionic Wrench®. LoggerHead’s lawsuit alleges, among other things, that the Craftsman Max Axess copied the Bionic Wrench and infringes a LoggerHead patent. For media coverage of the pending lawsuit, see New York Times, Popular Wrench Fights A Chinese Rival, and ABC News, Wrench Inventor Claims Sears Stole His Idea, Took It to China.

 

Robertson Transformer Co. v. General Electric Co., et al (Northern District of Illinois)

Lead trial counsel for Robertson against seven defendants in a patent infringement lawsuit related to electronic ballasts that operate compact and linear fluorescent lighting. Case pending.

 

NUtech Ventures v. Gruma Corp. (District of Nebraska)

Lead trial counsel for NUtech Ventures in a patent infringement lawsuit against Gruma Corp., a multibillion dollar Mexican agricultural conglomerate. The patent-in-suit covers a novel corn processing technique known as “Enzymatic Nixtamalization.” NUtech Ventures is the tech transfer and commercialization entity for the Board of Regents of the University of Nebraska. Case dismissed.

 

Cornerstone Automated and Robotica v. R.E.D. Stamp (Eastern District of Texas)

Lead trial counsel for Cornerstone Automated and Robotica in a patent infringement lawsuit against R.E.D. Stamp. The patent-in-suit covers Cornerstone/Robotica’s state of the art Automatic Box Opening Technology (“A.B.O.T.”). Case dismissed based on agreement of the parties.

 

Tenon & Groove and Optiontown v. Plusgrade (District of Delaware)

Lead trial counsel for Tenon & Groove and Optiontown in a patent infringement lawsuit against Plusgrade. The patents-in-suit cover Optiontown’s revolutionary post-sale revenue management product for concurrently optimized upgrades, known as the “Upgrade Travel option” (UTo). Case pending.

 

United Technologies Corp. v. PerkinElmer, Inc. and Eaton Corp. (District of Connecticut)

Represented United Technologies Corporation (“UTC”) as lead trial counsel in a patent infringement lawsuit before Judge Kravitz in the District of Connecticut. The case involved a UTC patent covering brush seals on UTC’s PW4000 jet engine. First-chaired Markman hearing and won construction of all key terms. Reported decision resulted in favorable settlement. See 537 F. Supp. 2d 392 (D. Conn. March 24, 2008).

 

Bayer Schering Pharma AG v. Watson Laboratories, Inc., et al (District of Nevada)

Co-lead trial counsel for Bayer AG in “Hatch-Waxman” patent litigation against five generic drug manufacturers who sell or seek approval to sell a generic version of Bayer’s YAZ® oral contraceptive. On March 30, 2012, after both Watson Laboratories, Inc. and Sandoz Inc. launched generic versions of YAZ® “at risk” of later being found to have infringed a valid and enforceable patent, the Federal District Court for the District of Nevada granted Bayer’s motions for summary judgment of validity, infringement, and enforceability against Watson, Sandoz and Lupin. On appeal, the Federal Circuit reversed the District Court.

Representative Antitrust and Unfair Competition Cases

In re Cripofloxacin Hydrochloride Antitrust Litigation (Eastern District of New York 2005; Federal Circuit 2008; Second Circuit 2010)

 

Represented Bayer AG and Bayer Corporation as lead trial counsel in nationwide class action antitrust litigation in connection with Bayer’s settlement of patent litigation against Barr Laboratories. Judge Trager ruled in Bayer’s favor and adopted Bayer’s analytical framework for analyzing Hatch-Waxman settlements. Thereafter, the Eleventh and Second Circuit adopted Judge Trager’s reasoning. Following the per se ruling, Judge Trager granted Bayer’s motion for summary judgment. Plaintiffs appealed to the Second Circuit, which transferred the Indirect Purchaser Plaintiffs’ (the consumers’) appeal to the Federal Circuit due to an alleged state-law Walker Process-type claim based on fraud on the Patent Office. Both Circuits affirmed Judge Trager’s decision. The Supreme Court denied certiorari in both appeals, and the MDL federal litigation has concluded in Bayer’s favor.

 

Bayer Schering Pharma AG & Bayer HealthCare Pharmaceuticals Inc. v. Teva, et al. (Northern District of Illinios)

Represented Bayer as co-lead trial counsel in Lanham Act false advertising and patent infringement case arising out of Teva’s launch of a generic version of Bayer’s YAZ® oral contraceptive and product literature claiming that Teva’s generic contains Bayer’s patented betadex clathrate formulation. Bayer moved for a temporary restraining order, and during the proceedings the Court read a tentative ruling finding that Bayer was entitled to a TRO. Teva agreed to remedial measures including a weekly e-mail blast for three months directed at pharmacists and calling attention to its false prescribing information. Court entered an agreed order regarding these remedial measures and required compliance reporting from Teva.

 

Bradburn Parent/Teacher Store v. 3M (Eastern District of Pennsylvania)

Represented 3M as co-lead trial counsel in antitrust class action related to Scotch® tape before Judge Padova in the Eastern District of Pennsylvania. Case settled prior to trial, after plaintiff’s motion for summary judgment was denied.

 

Representative Complex Commericial Litigation

Phillips Family Limited Partnership v. L&R Group of Companies (Cook County, IL Chancery Court)

 

Lead trial counsel for the L&R Group of Companies in a breach of contract action brought by the Phillips Family Limited Partnership. Succeeded in getting the case dismissed to arbitration, and then won a complete defense victory in arbitration, including all costs assessed against Plaintiff.

 

Armstrong Coal Co. v. Optimal Solutions Integration (Eastern District of Texas)

Represented Armstrong Coal as co-lead trial counsel in a breach of contract action against Optimal Solutions Integration. Case dismissed by agreement of the parties.

Speaking Engagements, Presentations and Publications

Featured Speaker, “The role of patents and intellectual property in speech technology and business decisions”; AVIOS Voice Search Conference, 2009

Featured Speaker, “Crafting Value-Based Alternative Fees that are Practical and Profitable”; C4CM Conference, 2011

Panelist, “Exploring Advancements in Strategies for Alternative Fee Arrangements and Value-Based Fee Structure”; Managing Legal Costs Symposium, 2012

Panelist, “Perspectives on the Utility of Third Party Financing in Today’s Legal Economy”; Commercial Litigation Funding & Investment Conference, 2011 & 2012

Featured Speaker, “IP 101: Keeping Your Business Treasures Safe”; Entrepreneurial Development Network, 2012

Featured Speaker, “Footprints in the Marketplace: Patent Enforcement Strategies to Maximize Value”; ICAP Patent Brokerage/Ocean Tomo Summit on IP Strategy, 2012

Awards & Accolades

Selected to the list of Texas Super Lawyers (2018) [In addition, his IAM Patent 1000 recognition dates can be updated to (2014-2018)]

“All upper-echelon IP litigators are smart, diligent, outstanding communicators; but what makes Paul Skiermont exceptional is his brilliant litigation instinct. On occassion, sudden developments in cases warrent tossing out the typical lawyer playbook. Paul can process so much information in real time that he executes new moves at just the right time. As well as being a star on his feet, he prepares well by diving deep into the technology, which he often knows as well as, if not better than, the technical experts. He knows the law cold and is an amazing writer; his prose is lucid, his tutorials superb and his use of pictographic material helps to breathe life into the inventor’s story.” – IAM 1000

Twice Awarded First Place Speaker at National Debate Tournament (NDT); one of only three people to win the awards twice since the NDT began in 1947.

Named in IAM Patent 1000: The World’s Leading Patent Practitioners – Patent Litigation (2014).

Named a “Life Sciences Star – Patent Litigation” by Life Sciences/Managing IP (2012, 2013).

Named a Rising Star by Texas Super Lawyers (2012, 2013)

Named a Rising Star by Illinois Super Lawyers (2010, 2011)

Contact Information

1601 Elm Street, Suite 4400, Dallas, Texas 75201

(214) 978-6600

pskiermont@skiermontderby.com

Education
Clerkship

Law Clerk to the Honorable C. Arlen Beam, U.S. Court of Appeals for the Eighth Circuit

University of Chicago Law School

High Honors

Order of the Coif

Finished in Top 5% of Class

University of Nebraska College of Law (1L year)

Finished first year ranked #1 in class

Selected for Nebraska Law Review

University of Kentucky

B.A., cum laude

Henry Clay Debate Society

Four year nonresident full tuition scholarship

Phi Sigma Alpha, National Political Science Honor Society

Bar Admissions
State Bar of Texas
State Bar of Illinois
U.S. Courts of Appeals

Federal Circuit

Eighth Circuit

U.S. District Courts

Eastern District of Texas

Northern District of Texas

Northern District of Illinois

Eastern District of Michigan

District of Nebraska

Professional & Community Involvement
Professional Activities

Barrister, The Honorable Barbara M.G. Lynn American Inn of Court

Licensing Executives Society

American Bar Association

Federal Circuit Bar Association

Texas Bar Association

Illinois Bar Association

Dallas Bar Association

Community Service

Governing Board Member, Dr. JW Patterson Foundation for Academic Excellence in Speech and Debate

Governing Board Member, University of Kentucky Tournament of Champions Foundation

Young Professionals Leadership Board of the National Association for Urban Debate Leagues

Dallas
1601 Elm St
Suite 4400
Dallas, TX 75201

(214) 978-6600

 

info@skiermontderby.com

Los Angeles
800 Wilshire Blvd
Suite 1450
Los Angeles, CA 90017

(213) 788-4500

 

info@skiermontderby.com