The practice, by kind of work
| The work | What it means for you |
|---|---|
| In federal district court | |
| Where the cases sit | Patent litigation in federal district courts around the country rather than in a single home forum. Judges he has argued before include Lucy Koh, Rodney Gilstrap, Vince Chhabria, Leonie Brinkema, Jon McCalla, Catherine C. Blake, Mary Pat Thynge, Susan van Keulen, Jan DuBois, Philip Gutierrez and B. Lynn Winmill. A case sits where it was filed, and courts differ in how they schedule patent matters and how they handle the fight over what the claims mean. Knowing the room is part of knowing the case. |
| Which side of the caption | Both. He has asserted patents for the companies that own them and defended companies accused of infringing them. The two are not the same job and each teaches the other. Someone who has only ever defended has never had to build a case knowing it will be attacked at its weakest point, and someone who has only ever asserted has never had to sit with a client who did not ask for any of this. |
| Which companies | From near-startups to some of the world's most valuable technology companies. The reading is the same either way. What changes is how much a wrong answer costs the business, how many people are available to help, and how quickly a decision can be made. A company of eleven people cannot absorb what a company of eleven thousand can, and a budget that is sensible for one is reckless for the other. |
| How often it ends in a trial | Most patent disputes end in a negotiated resolution rather than a verdict. No percentage is given here. The honest figure moves with the court, the year and the kind of dispute, and a number invented to sound precise would be worse than none at all. If you want a real one for your own situation, the right question to ask any lawyer is what the court you are actually in has been doing recently, because that is something anyone can look up and show you. |
| Before the Patent Trial and Appeal Board | |
| What that venue is | Not every patent fight happens in a courtroom. Some happen at the Patent Trial and Appeal Board, inside the patent office itself, in a proceeding called an inter partes review. It asks a narrower question than a lawsuit does: whether the patent should have been granted at all. It runs on its own clock and its own budget, and it can be going on at the same time as a district court case about the same patent. |
| The work he has done there | Multiple inter partes reviews, five of them argued in person before the Board, along with covered business method proceedings and ex parte reexaminations. Arguing in person in front of administrative patent judges who read patents every working day is a different exercise from arguing to a jury, and preparing for one does not prepare you for the other. |
| Why it changes a case | Because it opens a second front. A challenge at the Board can shift the leverage in the district court case entirely, or it can add a second set of deadlines and a second set of bills without changing anything. Deciding which of those it will be, before filing, is where the judgment sits. That decision has to be made with the patent's written record in hand, not from a summary of it. |
| On appeal | |
| The Federal Circuit | Briefing and oral argument at the United States Court of Appeals for the Federal Circuit, which hears every patent appeal in the country. The argument in Buckman Laboratories v. Solenis is in the court's own public recordings, so it can be listened to rather than described. That is a better kind of evidence than a sentence on a website, and it is the reason it is mentioned here. |
| Before litigation, the prosecution years | |
| How he started | As a patent prosecutor, which is the lawyer who writes patent applications and argues with the patent office to get them granted. He drafted or supervised hundreds of them. It is the same subject from the other end, and it is unusual in a trial lawyer. |
| Why that is where he starts | Every patent carries a written record of the back and forth between the applicant's lawyers and the patent office. It is called the prosecution history, and it is public. To get a patent granted, applicants routinely narrow what they are claiming. Those narrowings are permanent, and they limit what the patent can be argued to mean years later, in front of a judge who was not there. Someone who spent years writing those documents knows what a narrowing looks like and why it was made. Reading all of it is slow, unglamorous work that many people summarise rather than do. |
| Nine months inside a company | |
| The secondment | Nine months in-house at T-Mobile as intellectual property counsel. The work was portfolio development, managing outside counsel, sitting with inventors, and weighing offensive and defensive strategy against a budget that belonged to a business and not to a law firm. |
| What that leaves behind | The experience of being the client. Of receiving the invoice rather than sending it, of having to explain a legal position to people who are measured on shipping a product, and of choosing which matters were worth funding when they could not all be. A lawyer who has done that asks different questions at the start, and a few of them are about your business rather than about the patent. |
| The technologies | |
| The fields he reads | Cryptography, encryption and digital security. Two-factor and multi-factor authentication. Telecommunications. Software. Imaging and encoding. Chemistry and materials. Blockchain and digital assets. Two engineering degrees sit underneath that list, which is why the technical part of a case does not have to be translated by someone else before it can be argued. |
| Where the line is | A dispute over a chemical formulation belongs with someone who reads chemistry. A dispute over how a handset authenticates to a network belongs with someone who has built or examined that kind of system. If your matter is outside the fields above, the useful thing a lawyer can do is say so and give you a name, and that is worth more to you than availability is. |
| Other intellectual property work | |
| Trademark and copyright | Trademark and copyright disputes, including proceedings before the Trademark Trial and Appeal Board, where registrations are opposed and cancelled. Companies that own patents usually own marks too, and the two problems tend to arrive in the same week. |
| Transactions | Intellectual property transactions: the agreements that license, assign or carve up rights, rather than the fights about them. Reading these with litigation in mind changes what you notice, because the clause nobody argued about at signing is often the one that decides a case later. |