Cabello Hall Zinda, PLLC

We are thrilled to welcome Emery Richards to our talented team of attorneys!

We are pleased to announce that Super Lawyers has recognized David Cabello (left) and Stephen Zinda (right) as Super Lawyers, and Munira Jesani (center) as a Rising Star. Each year, no more than five percent of lawyers in Texas are selected by the research team at Super Lawyers to receive these honors. The annual selections are made using a multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. This is well-deserved recognition of the experience and expertise our top-tier team of attorneys bring to the table for clients, particularly in the area of intellectual property law.”

We are pleased to announce that we have achieved complete victory on behalf of Identity Security, LLC in a long-running battle against Apple before the U.S. Patent Office. As a brief overview, in 2021, Apple filed an inter partes review (IPR) petition challenging each of Identity Security’s four asserted patents. Based on the arguments and evidence presented in our preliminary response, the Patent Trial and Appeal Board denied all four petitions on the merits, finding that Apple had failed to show a reasonable likelihood of success in showing that any challenged claim was unpatentable. The Board also denied all four of Apple’s requests for rehearing.



Apple then filed six requests for ex parte reexamination with the USPTO against the asserted patents, alleging a substantial question of patentability based on prior art not asserted in the IPRs. While the USPTO instituted re-exam proceedings based on Apple’s petitions, based on the arguments and evidence we presented after institution (without amending any claims), the Examiner ultimately concluded that none of the claims were unpatentable. The patentability of all claims as originally issued was then confirmed in ex parte reexamination certificates.



These results reflect years of hard work and dedication by our team and further demonstrate the innovative nature of Identity Security’s technology.

Cabello Hall Zinda wins another IPR decision.
https://www.chzfirm.com/post/cabello-hall-zinda-wins-another-ipr-decision

We are excited to announce that Stephanie Holden is joining our talented team of attorneys! www.CHZFirm.com

We are pleased to announce that on August 21, 2023, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office issued a decision DENYING institution of an Inter Partes Review petition filed by Ericsson against our client Koninklijke KPN N.V.’s patent. KPN’s patent is directed towards a novel way of transmitting machine-to-machine data in core network signalling messages, allowing for fast and efficient transmission of data in machine-to-machine environments. In denying institution, the Board found our arguments and evidence compelling that Ericsson failed to demonstrate that the asserted prior art anticipated or rendered obvious any claim of KPN’s patent. The patent at issue is currently being asserted against Ericsson, in Case No. 2:22-cv-00282 (E.D. Tex.) filed July 25, 2022.
A copy of the decision can be viewed here:
https://s3-us-west-1.amazonaws.com/ptab-filings/IPR2023-00524/13

We are pleased to announce that the United States Patent Trial and Appeal Board granted institution of Kerr Pumps' petition for inter partes review against a SPM Oil and Gas, Inc. patent. The patented technology is directed toward pump valve seats used in oil and gas environments having abrasive, solid-laden fluids, such as fracturing fluid. In doing so, the Board found that the Petition demonstrates a "reasonable likelihood that at least one of the challenged claims is unpatentable," despite SPM's strong opposition to the petition.

This is an important first step in successfully challenging validity of the patent, which has been asserted against Kerr, along with three
other SPM patents. See Kerr Machine Co. v. SPM Oil & Gas, Inc., C.A. No. 4:21-cv-1191 (N.D. Tex.). We are awaiting institution decisions on the three petitions we filed on behalf of Kerr challenging the other asserted patents.

Our single win against Apple just multiplied! In addition to defeating Apple's first IPR petition (IPR2022-00172) against our client's innovative encryption patent, we have also defeated Apple's three remaining inter partes review petitions (IPR2022-00170/171/173) challenging three patents in the same family. In all four denial decisions the Patent Trial and Appeal Board ("Board") ruled that we prevailed on the merits and that Apple had not established a reasonable likelihood of demonstrating any patent claim was invalid based on the prior art.

I am particularly proud of our team and these results given the unique challenges we faced in preparing these responses. When we were first contacted about these petitions, the deadline to file a preliminary response had already passed by a full month in all four proceedings. We immediately began assessing the petitions and reached out to the Board seeking permission to file preliminary responses. While we ultimately obtained permission, we only had 1-month to file all four preliminary responses rather than the ordinary 3-month response window.

Despite having only a small fraction of the time we would ordinarily have, not only were we able to prepare detailed and comprehensive preliminary responses to each petition, we were also able to retain a phenomenal expert in the field, Dr. Samuel Russ, and use his testimony to support our responses.

We are proud that DocketNavigator™ has announced Cabello Hall Zinda as one of the top five patent challenger law firms in the United States for consecutive weeks in April. Other top firms listed include Baker Botts, Fish & Richardson, Fenwick & West and Alston & Bird. We are humbled to be mentioned along side these well-respected and considerably larger firms.

While Cabello Hall Zinda is approaching just its third anniversary, this news is a testament to the hard work, dedication and incredible skill level of our attorneys. We look forward to continuing to build momentum and further growing our team of top class attorneys and people.

In a recent opinion, Magistrate Judge Jeffrey Cole commented on a tactic that has been too common for far too long—scorched earth discovery:

"The attorneys in this case have struggled with discovery and simply have not been capable of following the directives of local Rule 37.2. Plaintiff alone has filed six discovery motions totaling about 540 pages of briefs and exhibits . . . , all in a case about car hoods and grilles that plaintiff once characterized as simple enough that it did not even have to comply with its obligation to perform an ESI search. It is very likely that the case could have been litigated in a much more simple and efficient fashion but the attorneys on both sides have chose more of a scorched earth strategy. That’s a strategy that has become more and more common, for some reason. And so, here we are again.

One could not, without a trial and testimony from all the attorneys involved, get through to what has actually gone on amongst the lawyers in discovery in this case. Accusations are made, back and forth, on each side, through nearly 500 pages of filings. . . . As is common in cases that have gone off the rails, each side has a diametrically opposed view of which law firm is made up of heroes and which is made up of villains. All the court can do at this point, is make a decision within the extremely broad discretion it has, Jones v. City of Elkhart, Ind., 737 F.3d 1107, 1115 (7th Cir. 2013), with a visceral feel regarding the history the attorneys are fighting about."

LKQ Corp. v. GM Co., No. 20 C 2753, 2021 U.S. Dist. LEXIS 224287 (N.D. Ill. 2021). Judge Cole’s summary is emblematic of a major problem in civil litigation generally, where the parties take absurdly broad or narrow positions on discovery and aggressively fight about every tiny discovery issue ad nauseum. This problem is even more acute in patent cases where there are often thousands, if not tens of thousands, of purportedly relevant documents and many supposedly relevant witnesses for one side to try and depose.

While those engaging in scorched earth discovery may genuinely believe they are doing what is best for their client vis-a-vis “zealous advocacy,” in most instances the opposite is true. Lost in the repeated, often trivial discovery battles are the many tens of thousands of dollars the client spends on the billable hours incurred by the attorneys briefing the disputes for the court, sending lengthy discovery letters back and forth, and taking depositions of witnesses whose testimony is trivial to the issues in the case. Even when the client “wins” a discovery motion, the client will have spent tens of thousands of dollars without increasing the odds of success at trial. In other words, the client loses even when it wins.

At Cabello Hall Zinda, we make a concerted effort to view each case from the business perspective of our client. For example, when it comes to discovery disputes, we always ask ourselves two questions. First, is there real potential for the discovery being sought to meaningful affect the client’s chance of success? Second, if so, at what cost to the client?

We recognize that litigation is an undesired business-cost, and by always keeping these questions in mind we are able to zealously, but responsibly, advocate for our clients.

We are happy to announce that Bill Slusser, a highly respected and experienced trial attorney, has joined the firm as a lead trial counsel. While at Norton Rose Fulbright, Bill worked closely with the firm jointly representing clients in patent litigation. We're very excited that we will now be able to continue working together under the same banner.

Bill brings to the firm unparalleled collegiality, decades of trial experience, a unique strategic mind, and a remarkable track record in front of juries. Please see our full press release at https://www.einpresswire.com/article/557945479/distinguished-trial-attorney-bill-slusser-joins-cabello-hall-zinda

Cabello Hall Zinda is proud to announce that David Cabello has been named a 2021 Super Lawyer" by Thompson Reuters' Super Lawyer Magazine, an accolade given to less than 2.5% of attorneys based on a rigorous selection process. This is the ninth time David has received this prestigious recognition!

We are happy to announce that after more than two years of patent litigation against our client Nitro Fluids, L.L.C., the United States District Court for the Southern District of Texas has issued a claim construction ruling that confirms Nitro cannot infringe the asserted patent. The plaintiff Cameron International Corp. (a subsidiary of Schlumberger) had alleged that our client’s fracturing fluid system infringed a patent directed towards “adjustable” pipe components, even though Nitro Fluids system uses rigid, fixed flanged piping that has been used in the industry for nearly a century.

After fully briefing claim construction and a half-day claim construction hearing, the Court held that the claims of Cameron’s patent were limited to adjustable fracturing systems. Soon after the ruling issued Cameron stipulated that Nitro could not infringe its patent under that construction and asked the Court to dismiss its claims of infringement.

The Claim Construction Opinion is available on Lexis. See Cameron International Corp. v. Nitro Fluids, L.L.C., Civil Action No. H-18-2533, 2021 U.S. Dist. LEXIS 46116 (S.D. Tex. Mar. 11, 2021).

Cabello Hall Zinda is proud to announce that Stephen Zinda has been named a "Rising Star" by Super Lawyers for 2021, an accolade given to less than 2.5% of attorneys.

It's hard to believe that Cabello Hall Zinda has already reached its 1-year anniversary. It was barely a year ago that the firm was only a shared idea and hope in the head of its three founders. The first year has exceeded all of our expectations, which has only heightened our excitement and goals moving forward. Thank you to all of our clients, staff and attorneys for being part of this exciting milestone!

James Hall was recently quoted in an article discussing the potential impacts of the Federal Circuit's recent decision in Facebook Inc. v. Windy City Innovations LLC (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.Opinion.3-18-2020_1552952.pdf). In that decision, the Federal Circuit ruled that petitioners seeking inter partes review before the Patent Trial and Appeal Board cannot join themselves as a party to an existing review, nor can they add new issues when joining petitions filed by other parties. This means that petitioners will not be able use joinder, outside of filing “follow-on” petitions that duplicate another petitioner’s petition, to escape the statutory one-year time bar to file a petition after being sued for patent infringement.

James noted that the decision may encourage patent owners to hide the ball when it comes to identifying which claims
of a patent are being asserted: "It may encourage some behavior by patent owners to act in a way that will prevent petitioners from understanding which claims are being asserted, and try to put petitioners in a bind." Petitioners should consider using the decision as part of their arguments to force such identification in district court. James explained that "this decision will give petitioners another arrow in the quiver as far as arguments they might make to a district court to attempt to force patent owners to declare the [asserted] claims."

The article was published by Law360 on March 20, 2020 and may be found at the following link (subscription required): Ban On IPR Time-Bar Tricks Will Spur New Strategies (https://www.law360.com/ip/articles/1254902/ban-on-ipr-time-bar-tricks-will-spur-new-strategies?nl_pk=6d57a128-ea50-41f1-bd84-2fe5a9b2b6c2&utm_source=newsletter&utm_medium=email&utm_campaign=ip&read_more=1&attachments=true). James has previously been recognized as one of the top IPR attorneys in the nation and is routinely consulted on issues related to AIA trial proceedings.

Cabello Hall Zinda's Lynn Huston to Speak at 35th Annual Fall Institute on Intellectual Property Law.

Dr. Huston, PhD in microbiology, has been invited to speak on patentable subject matter (35 U.S.C. § 101) at the Houston Intellectual Property Law Association's (HIPLA) and University of Houston Law Center's 35th Annual Fall Institute on Intellectual Property. The event is being held at the Moody Gardens Hotel in Galveston, Texas between September 26 - 28, 2019. Dr. Huston will be speaking on Thursday, September 26 between 4 and 5 pm (CST). For more information, please see the HIPLA website: https://lnkd.in/edQGtYu

Cabello Hall Zinda is proud to announce that on September 26, 2019 David Cabello will be honored as a "Beacon of Light" by the University of Houston Law Center Immigration Clinic at its 20th anniversary Arrival Awards. David has a long history of fighting for inclusion, equality and justice for immigrants in need of legal representation. For more information, please visit https://lnkd.in/e-J47QP.

We are excited to announce that the Houston Business Journal has run an article on the opening of Cabello Hall Zinda, PLLC on the front page of its website!
https://www.bizjournals.com/houston/

Article: https://www.bizjournals.com/houston/news/2019/08/29/former-compaq-general-counsel-leaves-blank-rome-to.html?iana=hpmvp_hstn_news_headline

Former Compaq GC J. David Cabello leaves Blank Rome to form new law firm - Houston Business Journal Three lawyers — including the former general counsel to Houston-based computing giant Compaq Computer Corp. — left Blank Rome's Houston office to start their own firm.