Where a case starts
Before anything is filed
Every patent carries a public written record of how it was granted: the rejections the patent office issued, the arguments the applicant's lawyers made back, and the language they agreed to narrow in order to get the thing allowed. That record is the first thing read in a new matter, before the complaint, before the product photographs, and before anyone's theory of the case.
The habit comes from the beginning of the career. He began as a patent prosecutor and drafted or supervised hundreds of applications, which means he has sat on the writing end of the exact document the dispute now turns on. Reading all of it is slow and mostly unglamorous, which is why it is so often the thing nobody else has finished.
Nine months inside a company
Secondment at T-Mobile
A nine-month in-house secondment at T-Mobile as intellectual property counsel meant portfolio development, managing outside counsel, working directly with inventors, and weighing offensive and defensive strategy against a budget that had a number on it.
What survives from that is a sense of how a legal bill reads from the seat that has to approve it, and how much of a general counsel's day is spent translating a legal problem into something the rest of the business can act on.
Where these are heard
Three different clocks
Patent disputes do not all happen in one place, and the venue changes the budget, the schedule, and sometimes the whole strategy.
- Federal district courts. Cases litigated and argued in courts across the country, on both sides of the caption.
- The Patent Trial and Appeal Board. Multiple inter partes reviews, five of them argued in person, along with covered business method proceedings and ex parte reexaminations. These ask whether a patent should have been granted at all, and they run on their own clock.
- The Federal Circuit. Briefing and oral argument in the appellate court that hears every patent appeal in the country. The argument in Buckman Laboratories v. Solenis is in the court's public recordings, if you would rather hear it than read about it.
Judges 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.
The technologies
What the patents were about
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 behind that list, and so does earlier work in industry: SCADA control systems at Black & Veatch, then AT&T Microelectronics, then Sprint. The point of it is narrow and practical. Your engineers should be able to talk to your lawyer without slowing down.
The rest of it
Beyond patents
Trademark and copyright matters, proceedings before the Trademark Trial and Appeal Board, and intellectual property transactions, which is usually where a dispute ends up being resolved anyway.
Defending a claim
When the claim is against you
The work is mostly a search for the sentence the other side wishes were not in the record.
What the work consists of
Reading the asserted patents and their full prosecution histories. Finding what was given up to get them granted, and holding the other side to it. Locating earlier technology that shows the claimed invention was already known or obvious, which is the material an inter partes review is built on.
Then the part that decides most cases: proposing what the disputed words in the claims actually mean, and being ready to explain that choice to a judge who has never seen your product.
What it is judged on
Whether the pressure landed where it mattered, and whether the bill matched the exposure. A defense that spends evenly across every possible issue is easy to write and expensive to buy.
Enforcing a patent
When the patent is yours
The work starts with your own file, because that is where the other side will start.
What the work consists of
Establishing what the claims cover and what the accused product does, in that order. Reading your own prosecution history for the narrowings that will be read back to you. Preparing for the patent itself to be attacked, both in the district court and at the Patent Trial and Appeal Board, since a challenge there is a normal part of enforcing rather than a sign that something has gone wrong.
Then building a version of the technical story that a jury can follow without an engineering background, which is the same work whether the audience is twelve strangers or a board.
What it is judged on
Whether the patent came out of it at least as strong as it went in, and whether the outcome was worth what the enforcement cost the people who built the invention.