What inspired you to pursue a career in intellectual property, and what advice would you give to others considering a similar path?

It was a natural fit for me, given my background in chemical engineering and chemistry. Intellectual property – especially patent litigation – requires a passion for learning about all kinds of technology. In my career, I have had cases involving WiFi, I/Q calibration, genetically engineered crop plants, fuel hydrotreating technology and pharmaceutical patents, among others. These types of cases require working with colleagues and technical experts to develop a deep understanding of a specific technology area. For anyone thinking about pursuing a career in patent litigation, having a true interest in – and an aptitude for – learning new technical matters is important.

As a renowned litigator in the United States, what is your take on SEP holders using the ITC to obtain injunctive relief, and should they factor this into their litigation strategies?

Injunctive relief should be available to SEP holders. It would make no sense to substantially diminish the value of a patent that covers what has been adopted as the best technology for an industry by categorically denying injunctive relief as an available remedy for infringement of that patent. The Federal Circuit continues to make it increasingly difficult to prove a reasonable royalty, and the result of the recent EcoFactor v Google en banc case will likely make it more difficult to use comparable licences to value patented technology. US patent owners have been put in an untenable position where, on one hand, the US court system has made proving patent damages through a hypothetical negotiation as difficult as possible and, on the other hand, refuses to grant injunctive relief, which often results in parties actually engaging in negotiations.

What are the most critical developments affecting your practice today?

Apart from the availability of injunctive relief to patent owners generally, one of the most significant developments is the explosion of AI and AI-derivative technologies. AI presents many opportunities and challenges for IP attorneys. For example, questions around who owns AI-generated intellectual property continue to evolve. Granting patents on AI-created inventions is not entirely consistent with traditional rationales for having a patent system, such as providing incentives to inventors to publicly disclose their inventions. AI-created inventions may result in a push to reevaluate the patent system, with a big “if” – if AI-created inventions become mainstream. Another example of how AI is currently impacting IP law is the use of AI-based programs by many companies. Those programs may pose a disclosure risk if intellectual property is accessed by or provided to AI without adequate protections. I would not be surprised to hear that many inventors have inadvertently disclosed their invention by asking ChatGPT to write a patent application.

You are known for your work with emerging and mid-market companies. How do you tailor your approach to the type of client that you are dealing with?

Emerging and mid-market clients require a more customised approach to litigation strategy. You can’t use the same playbook across the board, and they are not usually interested in a costly scorched-earth approach. I focus on working with clients to make strategic decisions that are tailored to serve a client’s specific objectives in view of its specific technical industry, as well as the strengths and weaknesses of a particular case.

What has been your proudest professional achievement to date, and why?

I was given the opportunity to participate in drafting the petition for writ of certiorari in Commil v Cisco, which the US Supreme Court granted, and in writing the merits briefing for the case. The court ultimately agreed with the arguments that we made. It was a significant professional achievement to represent a client at the highest legal level in the United States and to have a voice in shaping patent infringement law, even if only in a small way.