Which side does he represent?
Both. The client is sometimes the company holding the patent and sometimes the company accused of infringing it.
That matters more than it sounds. A lawyer who has only ever defended learns to read a claim looking for the hole in it. A lawyer who has only ever asserted learns to read the same claim looking for its reach. Working both directions means the first pass over a patent already contains the argument the other side is about to make with it.
The clients have ranged from near-startups with one product to some of the world's most valuable technology companies, and the question in the room is not the same. For a small company the case may be a threat to the whole business. For a large one it is one matter among many, competing for attention and budget with everything else.
Where do these cases get heard?
In federal district courts around the country, at the Patent Trial and Appeal Board, and at the Federal Circuit on appeal.
Patent cases are federal, so they do not go to your local county courthouse, and they are not spread evenly across the country. A handful of districts see far more of them than the rest, and the pace, the local rules and the judge's own habits differ enormously between them. Two identical disputes filed in two different districts can behave nothing alike.
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.
Why start with the paperwork instead of the product?
Because he spent the first part of his career writing that paperwork, and he knows what gets given away in it.
He began as a patent prosecutor and drafted or supervised hundreds of applications. Prosecution is the process of arguing a patent into existence: an examiner rejects, the applicant narrows or explains, and it repeats until something is allowed or abandoned. Every granted patent has that argument behind it, written down, in public, forever.
Which is why the written record of a patent is where he starts. A litigator reading a file wrapper cold sees a stack of dull correspondence. Someone who has written that correspondence sees why a particular limitation appeared in the fourth round, what the applicant was avoiding when it did, and how much of the patent's reach was surrendered to get the grant.
Has he ever worked inside a company?
Nine months on secondment at T-Mobile as in-house counsel, with the budget sitting on his own desk.
The work there was portfolio development, managing outside counsel, sitting with inventors, and weighing offensive against defensive strategy inside a fixed number. That is a different job from the one outside counsel does, and it is the job most clients are actually doing while a case runs.
Nine months of receiving other firms' invoices changes how a person writes them. So does nine months of explaining to a business why a legal position that is correct is still not worth what it costs.
What if the fight is at the patent office instead of a courtroom?
That is its own kind of case, and five of them have been argued in person.
An inter partes review is a proceeding at the Patent Trial and Appeal Board that asks a narrower question than a lawsuit does: whether the patent should have been granted at all. It runs on a different clock and a different budget than a district court case, and for some disputes it changes the whole shape of the negotiation.
The post grant work includes multiple inter partes reviews, five of them argued in person before the Board, along with covered business method proceedings and ex parte reexaminations, which are two other routes for putting a granted patent back under examination.
What if it goes to appeal?
Patent appeals in the United States go to one court, the Federal Circuit, and he has briefed and argued there.
Every district court patent case in the country appeals to the same place, which is unusual and useful to know. It means a ruling you dislike in Texas is reviewed by the same panel of judges that would review one from California, and the arguments that work there are a specialized craft of their own.
His argument in Buckman Laboratories v. Solenis sits in the court's public recordings. Anyone can listen to it without asking permission or taking a description on trust, which is a better way to judge a lawyer than reading a paragraph about him.
Will he understand our technology?
The technical ground is cryptography, encryption and digital security, two-factor and multi-factor authentication, telecommunications, software, imaging and encoding, chemistry and materials, and blockchain and digital assets.
None of it was learned for a single case. There are two engineering degrees underneath it, electrical and computer, and engineering work before the law: SCADA control systems at Black & Veatch, and time at AT&T Microelectronics and Sprint.
The practical test for you is not the list. It is whether a lawyer can describe your product back to you, in your engineers' terms, after one conversation. If they can only repeat the words you gave them, an expert will have to translate at every step, and that dependence shows up in the bill and in the result.
Is it only patents?
No. There is trademark and copyright work as well, proceedings before the Trademark Trial and Appeal Board, and transactions.
The Trademark Trial and Appeal Board is a body inside the patent and trademark office that decides fights about registration itself, rather than about money. An opposition tries to stop a mark from registering. A cancellation tries to take away a registration that already exists.
Transactional intellectual property work is the quieter half: licenses, assignments, and the intellectual property terms inside a deal that nobody reads carefully until the deal is over. Most of the expensive disputes in this field began as a sentence somebody agreed to quickly.