What advice would you give to companies commencing litigation in the United States, given the difficulties of getting a preliminary injunction? 

I would advise companies to expedite trial preparation and seek the earliest possible trial on the merits. If jurisdiction and venue are satisfied, litigation could be filed somewhere that proceeds to trial quickly. The patent owner can thus avoid any difficulties and expenses associated with a motion for a preliminary injunction and can focus its resources on expediting the trial. Regardless of the jurisdiction, once the date is set, don’t give the other side any reason to ask the judge to delay trial. Companies should be prepared to move quickly in discovery to minimise disputes.   

You are renowned for your licensing practice. What common mistakes do parties make when embarking on a licensing negotiation – and how can they avoid them?

I often see parties make the wrong choice of patents to license. You want to license the best patents in the portfolio and there are several characteristics that make an ideal candidate. These include:

• a high likelihood of infringement;
• ease of detecting and proving infringement;
• the remaining patent term;
• difficulties in designing around the patent; 
• broad claims; and 
• multiple potential licensees. 

Further, many licensors believe that there is strength in the number of patents, but this rarely realised in licensing negotiations or litigation. Quality almost always triumphs over quantity. 

Another common mistake relates to the choice of initial licensee. A potential licensee in a rocket-docket jurisdiction may be preferred over one in a slow jurisdiction. Similarly, starting a licensing programme by targeting a smaller licensee that may be more willing to enter into a licence might make more sense than trying to license the ‘1,000-pound gorilla’ of the industry. There is no one-size-fits-all strategy for a licensing programme. Each one is different and the strategy should be tailored to the individual facts and circumstances. 

How have client demands changed over the course of your career, and how have you adapted to meet these?

Client demands haven’t changed much over the course of my career. Clients still demand top-quality results and services. I don’t think that will ever change. That said, clients today are very sophisticated purchasers of legal services and – compared to the start of my career – are more frequently asking for alternative fee structures. Clients today focus not only on overall budgets but on cashflow certainty. Some prefer a monthly or quarterly fixed-fee structure, while others desire a budget for each phase of litigation (eg, the claim construction, dispositive motion or expert stage). We have adapted to these changing demands by listening to our clients, being flexible in our fee structures and implementing creative, mutually beneficial solutions.

Trade secret cases are making headlines around the world. What considerations should companies considering trade secret litigation bear in mind?

Companies should evaluate the strength of the case’s merits, the likelihood of obtaining a good remedy and the resources required to support the litigation. Companies should also consider the impact that the case will have on current and potential customers, suppliers and competitors. Trade secret cases are often followed in the media, and this can be both positive and negative. Businesses considering trade secret litigation should be aware of this and consult with their PR team before and throughout litigation. to foster an effective communication strategy that is proactive rather than reactive.   

What are the biggest challenges facing your clients right now, and how are you helping them to overcome these?

The biggest challenges relate to USPTO proceedings and the increasing use of inter partes reviews at the PTAB. Similarly, accused infringers face challenges from discretionary denials of some review petitions and continued litigation before and sometimes after a review institution grants the petition. 

We help clients overcome these challenges through preparation and creative strategies. For a patent owner contemplating a suit, we might file an ITC investigation, which is typically not stayed pending an inter partes review. Further, we might file in a rocket-docket jurisdiction so that trial would occur before the PTAB’s final decision.

When representing an accused infringer, we might start a prior art search, development of invalidity defences and potential inter partes review grounds as soon as litigation is filed against a competitor, and when our client receives a licensing offer or cease-and-desist notice or is named in a complaint. By being prepared, we can file inter partes review petitions early and minimise the risk of a discretionary denial while increasing the chances of obtaining an earlier stay.