You are celebrated for your experience as a trial lawyer representing high-profile clients and have been described as “very strategic” in how you approach cases. How do you tailor your approach depending on the type of client you are dealing with, especially when the stakes are so high? 

The approach is defined by skillset, education, experience, the nature of the problem, creativity and reputation. Overall circumstance is the basic selector in developing a litigation plan. Financial considerations, geographical and market specifics and personnel availability all play a part, often leading to strict control over your choice of court or alternative dispute resolution (ADR) technique. 

Addressing ADR (eg, mediation, early neutral evaluation, binding and non-binding arbitration and summary jury trials) should be where your analysis starts, as ADR tools are often the easiest to control cost wise yet they afford room to manoeuvre. 

As jurisdiction is a necessary consideration, that tends to drive the available modes of litigation. Where several jurisdictions are possible, that should be investigated and weighed first. The possible availability of preliminary injunctive relief should always be a major consideration. If administrative remedies are possible, they too should be considered and applied if it makes tactical sense to do so (eg, EPO opposition or US post-grant proceedings), either alone or in tandem with litigation. 

As the final step, any available ‘new litigation’ mechanisms should also be reviewed and considered, such as the UPC – especially as the UPC has broad jurisdiction and availability of venues and has lately demonstrated no reluctance to consider and award preliminary injunctions. 

A rigorous final ‘kick the tires’, preferably with experienced colleagues or team members, should be run to complete the task.

What is your take on SEP holders using the ITC to obtain injunctive relief, and should they factor this into their litigation strategies?

US Code 19 Section 1337 proceedings should most certainly be used in a US SEP enforcement infringement litigation campaign, preferably together with infringement proceedings at a district court. When combined with PTAB post-grant inter partes review proceedings, this three-component approach is extremely effective. 

ITC proceedings do not involve juries, they move fast to a first-instance determination, very broad US-style discovery is available and damages may be sought in a separate parallel action under US Code 28 Section 1659. Section 1337 investigations are usually not subject to an inter partes review-based stay of proceedings. 

Section 1337 is a trade statute, which provides trade remedies. The ITC focuses on unfair trade practices that are measured against a very broad scope of regulations that can be used for relief. ITC remedies are not strictly injunctive relief – available relief is either a limited or general exclusion order, which is functionally equivalent to an injunction but acts by excluding infringing goods from importation into the United States, and/or a cease-and-desist order, which acts against infringing goods already present in the country. 

In your view, what is the best strategy for demonstrating the value of patent portfolios to the C-suite? 

It varies, especially upon the needs of the C-suite at any given time. 

Assuming the existence of a reasonably fulsome and strong patent portfolio, if the C-suite needs cash-flow generation, construct a strong licensing programme that generates this with minimum maintenance expenses. If the C-suite needs capital to develop new products for its own use or counter competitive marketplace problems, build a strong patent portfolio or licensing suite that can be liquidated or sold off. 

If the C-suite needs cash to pay damages from a litigation loss or to fund a patent suit to build up capital, ensure a strong portfolio that is liquid and readily converted to cash by selling patents without having a negative impact on the company’s overall operations.

Several other scenarios exist along the same lines. The C-suite’s direct experience in patent generation, litigation and management and demands on a company’s personnel and operations that litigation causes is tremendously valuable when generated by creation and use of a patent portfolio. 

What recent decisions or legislative developments are having the biggest impact on patent strategy in the United States right now, and why? 

Three developments involving the US Congress are currently front and centre: the PREVAIL Act, the Patent Eligibility Restoration Act and the RESTORE Act. These are currently before committees in the US Senate, where they are subject to review and refinement.

The PREVAIL Act relates to the PTAB’s post-grant review procedure, which was added to US Code 35 when the America Invents Act was implemented in 2012. Broadly, it proposes reforms to the PTAB structure and substantive provisions to benefit patent owners. These include:

• adding a standing requirement before the post-grant proceedings are available, limited to entities sued or threatened with suit for patent infringement;
• closing the statutory bar-joinder loophole; 
• preventing serial petitions; 
• changing the standard of proof to require clear and convincing evidence as is required in US district courts; and 
• preventing multiple bites at the apple, wherein the PTAB must dismiss proceedings if any forum has already upheld validity. 

The Patent Eligibility Restoration Act relates to amending US Code 35 Section 101 to obviate use of the Supreme Court’s Alice decision. The RESTORE Act intends to restore availability of permanent injunctive relief under the long-recognised four-part test that preceded eBay v MercExchange (547 US 388, 2006).

Whether one or more of these acts will become law is uncertain, particularly as to what final provisions might end up in the statutes. All three would have a serious effect on US patent strategy, including procurement and enforcement. 

Which jurisdictions do you see as playing increasingly important roles in SEP/FRAND litigation, and how is this shaping practitioners’ strategies? 

Definitely the UPC. Other well-tested jurisdictions for SEP/FRAND litigation will remain important: Brazil, China, Germany, India, the United States and the United Kingdom. Jurisdictions with extensive appellate-level experience, such as the United Kingdom (Unwired Planet v Huawei and InterDigital v Lenovo) and those that develop future appellate-level experience, will continue and grow in importance. 

Any jurisdiction whose first-instance courts will provide preliminary injunctive relief will demonstrate increased importance to innovators, such as the UPC and Germany.

From a tactical viewpoint, one would expect innovators’ strategies to favour bringing litigation in courts where preliminary injunctions are available (assuming that reasonable efforts at licensing SEPs have failed, but see Chief Judge Gilstrap’s 8 January 2024 G+ Communications v Samsung Eastern District of Texas opinion).

In view of G+ Communications, one would expect implementors to use a jury trial-based strategy to minimise preliminary injunction exposure, which currently only presents Eastern District of Texas risk, unless the Court of Appeals for the Federal Circuit broadly adopts G+ Communications.

What have been the biggest pressures on your clients in the last 12 months, and how did you help them combat these? 

The UPC has added a fourth type of litigation process that IP owners can be exposed to if worldwide jurisdiction is considered. 

If approached in a US-centric fashion, the proceedings are:

• the UPC; 
• the US patent litigation system, grounded in the district courts (of which there are 94);
• the ITC; and
• the USPTO-grounded post-grant review proceedings under the PTAB. 

A serious pressure source unique to US litigation is the jury trial system, which is guaranteed under the US Constitution’s 7th Amendment and is applicable to patents under US Code 35. Because this presents many components that are unavailable or irrelevant to the ITC (while relevant to the Federal Circuit, PTAB and district courts), a client will usually be faced with broad systemic differences that increase complexity of potential proceedings, substantially increase cost and damage risks, and make overlap confusing and hard to follow. 

Because a US patent owner or a party accused of infringing a US patent may be exposed to one or more of these types of litigation, there is no one-size-fits-all response to offensive and defensive lawsuits involving US patents. 

The only way to represent parties involved in these complex high-risk cases is to do your best to quickly and thoroughly educate parties, and pay special attention to staffing needs where language difficulties could arise, communication problems and difficulties caused by US-based pre-trial discovery obligations, which are unknown if not anathema to foreign entities.

With an unrivalled wealth of experience in the patent world, what excites you most about working in intellectual property?

While it may sound trite, the rapid pace of development of IP law, matched with the truly boundless and diverse areas of technology that such law protects – further combined with tactical and intellectual challenges that being a trial lawyer entails – ensures that you have few boring days in your calendar. It’s the daily recharge of always something new, different and usually difficult that sometimes pushes one to the point of fear and uncertainty, which provides excitement. 

Should technology growth or the conflicts that new technology presents slow or cease, or if mediation, arbitration, litigation or other dispute resolution methods are rendered irrelevant by AI or ChatGPT, I expect that I would no longer be working as a trial lawyer, as there would be no demand for my purported wealth of experience. 

How would you characterise the patent enforcement landscape in the United States right now? 

Vibrant, intense and currently at a high-water mark, as demonstrated by the development of highly successful technologies across a range of fields that are vigorously contested in the marketplace through the legal system, where damage awards may reach billions of dollars. 

The availability of US juries and the US federal court system at the trial court, appellate and Supreme Court levels – where principal enforcement occurs – presents a well-developed, well-run system for enforcement and resolution of licensing issues. 

What has been your most memorable case to date, and what makes it stand out?

 As I have been at the bar as a trial lawyer for almost 50 years, it is very difficult to pick one. I am, however, certainly a prime example of the adage: “I’ve been a trial lawyer long enough to have lost cases I should have won and won cases that I should have lost.” 

To pick three, though, I’d select: 

• Standard Oil of Indiana v Montedison (494 F Supp 370, D Del,1980);
• Texas Instruments v Hyundai Electronics Industries (2-98-cv-74, ED Tex, 1999); and
• Wellman v Eastman Chemical (1:07-cv-00585-SLR, D Del, 2007). 

I represented Eastman Chemical in defence of infringement allegations based on two patents relating to PET polymer technology. Immediately prior to trial, the court found Wellman’s patents invalid for failing to set forth the best mode for indefiniteness. Although the PET formula was within the scope of asserted claims and at least one inventor considered the formula to be the best mode, Wellman’s patents did not disclose the proper information to enable a person of ordinary skill in the art to practise it. Further, the patents failed to specifically disclose certain parameters. The Federal Circuit affirmed the invalidity judgment but reversed the indefiniteness decision. After proceedings had resumed in the trial court, the case settled favourably to Eastman Chemical. 

These cases are representative of non-jury and jury trials, or matters resolved on motion with Federal Circuit appeal without trial. There were broad differences in the technologies involved (crystalline polypropylene, production of semiconductor devices and PET polymer formulation) and involved damages or licences that generated substantial revenues. 

How would you respond to client concerns about practitioners using AI in private practice? 

I would proceed very cautiously when it comes to any work from a practitioner using AI, unless I was satisfied that a thorough investigation of the practitioner’s AI training and experience proved that they were ahead of the curve. Use of AI is still on the frontier for many – particularly attorneys who don’t have a solid, confirmed, real-world AI background. More than usual, it is crucial to double-confirm and check source input, source procedures and repeated methods to confirm accuracy of results. Investigating malpractice insurance coverage for AI usage would also be appropriate when experience cautions doing so.