As a founding partner at Fabricant, what does effective yet inspiring leadership look like to you?

Patent litigators fall into two camps: those who like to bill hours and those who like to win. Prior to the pandemic, we were entrenched in a multinational Big Law firm that was focused on billable hours. There, I became the youngest equity partner in that firm’s history. Less than three months later, we took the risk of starting our own firm during the height of the pandemic. We focused on winning rather than on the billable hour and we won – a lot.

We have sought to recruit and train a team that is focused on winning cases for our clients. Leading by example, hard work bears good results. Good results build trust and reputation. With this backdrop, criticism yields improvement rather than resentment. Team building and cohesion flow naturally. 

What are the biggest pressures on your clients in the wireless and semiconductor fields right now, and how are you helping them to overcome these?

Our clients in the wireless and semiconductor spaces are focused on one thing: quality patent protection. We are helping our clients to cultivate new opportunities in cutting-edge technologies, as well as assisting them in monetising mature technologies.

You have litigated before many US venues, including the International Trade Commission (ITC). What is your take on SEP holders using the ITC to obtain injunctive relief, and should they factor this into their litigation strategies?

Prior to eBay, injunctive relief was the great equaliser that allowed patent owners to compete in view of massive power dynamics that otherwise favoured larger companies. In the wake of this case, US patent value never truly recovered. Other countries including Brazil and Germany offer very strong injunctive relief for patents and have seen their technology values explode. The ITC is essentially the last bastion for injunctive relief in the United States and it allows US patent owners to protect their domestic industry. This injunctive relief allows SEP holders to tip the balance of power away from larger companies and is a valuable tool that should never be overlooked.

What changes have you observed in the US patent litigation landscape over the past few years, and what impact has this had on the way that you handle cases?

Our firm is on the front line of US patent litigation and has been among the top firms in both district court and PTAB filings according to Patexia. We have seen changes in:

• venue challenges in the district courts; and
• Section 101 challenges.

First, with regard to the PTAB, while we have managed to maintain favourable rates for our clients, we have seen institution rates for the industry steadily climb during the Biden administration. The increase in rates is due, in part, to the decline in discretionary denial under Fintiv. We guide our clients through these changes by carefully selecting assets on the front end prior to filing a case and applying our unique technical experience every time. This approach has allowed our clients to navigate the district courts while minimising the chance of institution at the PTAB.

Second, there has been a meaningful shift in venue laws over the past four years in the wake of increased case filings in the Western District of Texas. These changes have settled down in recent months and our clients have been able to make more informed decisions to bring cases in view of the current rules. 

Third, validity challenges based on patentable subject matter (US Code 35 §101) have declined. Generally, cases in the Eastern District of Texas and elsewhere have moved towards resolving Section 101 challenges at jury trial rather than via motion practice. Letting juries decide validity issues at the district courts has resulted in increased fairness and uniformity across the board.

As an expert in the biotech space, what are the key challenges associated with securing and enforcing patent rights in this sector?

Biotech patents generally cost more to file and prosecute. In view of these increased costs, patent holders are looking for more certainty when it comes to post-issuance validity. Patentable subject matter is always a major concern for both post-prosecution and post-issuance validity challenges. Second to Section 101 is the unpredictability of the PTAB for patent challenges in the biotech space. We have worked with clients to minimise both of these risks by using a comprehensive data-driven approach to validity challenges.