Patent gurus in demand
Their counselling can be critical not only in guiding clients with intellectual property issues, but also in guiding other IP and non-IP attorneys.
The word ‘guru’ in the title of this article has been chosen for non-provocative reasons. The term has traditionally conjured up images of a wise sage whose followers hang upon the guru’s every utterance. More recently, the term guru has been used to describe computer experts or ‘geeks’. In either case, the guru is one who has acquired a great body of specialised knowledge and wisdom after years of focused study and thought.
I use the term ‘patent guru’ here to describe that very type of person—one who has acquired many years of practical experience focused on the field of patent law and its effects upon businesses, small and large. Whether dealing with new ventures or large established corporations, there is an increasing need for the guidance of attorneys who are familiar with the current state of technologies, the evolution of court patent decisions, and ever-present patent-related pitfalls and opportunities.
Both in-house counsel and law firms are finding it beneficial to utilise patent gurus as behind-the-scenes, non-testifying experts, who may be in a position to influence litigation planning, cost efficiencies, and the selection of testifying experts and other witnesses. This may be particularly beneficial since communications between trial counsel and a non-testifying patent expert will remain confidential.
“More and more companies are recognising the strategic role that patent gurus are able to play in patent litigation."
It is accepted that in-house general counsel (GC) will often have personal preferences for the types of attorney to whom they wish to entrust their patent litigation. Some GCs believe that a good commercial litigator will be best equipped as ‘first chair’ trial counsel to present their position to the judge or jury in diverse types of litigations. These GCs believe that ‘second chair’ or co-counsel with a particular legal or technical specialty will best serve their company’s needs.
Other GCs believe quite the opposite, having a preference for first chair trial counsel to be a practice area specialist with trial experience. Such GCs believe that since only one attorney at a time will be on his or her feet during court appearances, it is essential that this person be thoroughly experienced in the particular field. This perception includes the belief that such a person will be better able, in the moment, to take advantage of unexpected opportunities arising from witness testimony or statements by opposing counsel.
This debate is particularly relevant to patent infringement litigation, where the meaning and scope of one or more highly technical US patent claims are construed by the US district court judges via Markman determinations (which define the terms of the claims).
Most patent cases, regardless of the technology involved, are tried before juries, who are required to apply the district court judge’s patent claim construction to the evidence and who have the responsibility to determine whether infringement of the claims-in- suit exists. Juries, consisting of lay people who typically do not have any technical background, are charged with the task of understanding the patent law issues involved, as well as the particular patented technology.
The playing field among competitors has been altered by recent court decisions involving patent validity, patent enforceability, infringement and possible injunctive relief available to a patent owner. More and more companies and law firms are recognising the strategic role that patent gurus are able to play in patent litigation, in developing competitive strategies, as well as in maximising profit margins and enhancing opportunities for success.
Old patent strategies that were adopted many years ago and that have been relied upon and taken for granted may, in fact, no longer be relevant or applicable to today’s modern, internationally driven business environments.
Commercial competitors that are weathering the recent economic upheavals are seeking strategies to maintain and increase their share of the market. They are looking to their patent portfolios as a tool to increase their competitive advantage. More significantly, such patent portfolios may provide a source of licensing revenue. Patent gurus can be a valuable resource in these regards.
Paul J. Sutton is a founding partner of Sutton Magidoff. He can be contacted at: paul@suttonmagidoff.com
