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Services
The services provided relating to intellectual property are as follows:
Patent Litigation
Paul spends approximately 70% of his time litigating patent infringement cases. These cases typically involve a contingent-fee arrangement. The cases are shared with other IP law firms or general trial practitioners. Clients include individuals and small operating companies. Typically, patents are placed into an entity owned by an inventor or company who enters into a legal representation agreement. Personal participation of company executives and inventors is strongly encouraged. Costs are borne by the company or a third party who takes an interest in the patent holding company.
Initially, a complete strategy is worked out with the patent owner for maximizing revenue from the patents. Ordinarily this begins with attempts to license the patent to companies that are currently infringing the patent or who are candidates for commercialization of the patents. Where successful, Paul assists in negotiating, prepares documentation, and provides strategy and counseling. In the event that the licensing approach does not succeed, a plan for litigation is prepared.
Patent litigation is notoriously expensive. Large firms like it that way. As a litigator for small clients it is necessary to challenge the myth that it is inevitably expensive. Experience makes the difference. Only neophyte paleontologists turn over all of the rocks. With all due respect to younger attorneys, every discovery issue is not critical to success at trial. Calculated risks must be taken as to whether a jurisdiction fight, a pleading motion, or a third expert witness is likely to be case determinative. A premium is placed on tough, knowledgeable, no-dithering decision making; that premium is reflected in a reduction of litigation costs. There are many excellent patent litigators in large firms representing giant corporations; they must face a foe they respect or are taught to respect. The courtroom floor is not perfectly flat but a lot of the tilt toward the big infringer can be leveled before trial.
Paul is also available to represent the start-up or emerging company whose life is threatened by a large competitor. Those suits are handled on a fee-for-services basis. The company must have the cash flow or a source of money from committed financial backers. The litigation strategy is often inextricable from the company strategic plan. Settlement takes on a new imperative. However, litigating the case can benefit from the cost principles outlined above.
Patent litigation for the small client is risky, time-consuming and will test the mettle of the most intrepid entrepreneur. You need the right attorney.
Patent Litigation Assistance
Paul’s services include assisting general trial attorneys in litigating intellectual property cases in nearly all technologies and in all courts. Because patent IP cases require technology expertise and in-depth understanding of patent law, it is in this area that a valuable contribution based on experience can be made, though assistance is available in all IP areas.
The extent of involvement depends on your needs at a particular time. The decision to file suit is occasionally straight-forward; however, it may benefit from a frank evaluation as to the advisability of suit in the context of other options. In addition to the decision to file, the complete strategy of the suit should be laid out and a second opinion on strategy may prove to be invaluable. A second assessment of the infringement opinion prepared by trial counsel or a patent validity opinion and damage estimate may also be valuable. For any law firm contemplating the commencement of a patent infringement suit on a contingent fee basis, an experienced opinion on the merits of the case and the damage potential is a sage investment.
If the decision to sue is in a formative stage, Paul can contribute to overall strategy development. Key success-determining decisions such as the selection of patents and claims to assert, venue choice, anticipating defenses, finding or evaluating a suitable expert, sufficiency of accused product or process investigation, optimal damage theory, and similar matters play a part in the strategy development.
Based on my own observations that no case unfolds in the manner initially planned, mid-course case evaluation can be helpful. Surprises demand re-assessment of strategy. Settlement that did not look appetizing early on may be more palatable after the discovery of previously unknown pertinent prior art. Or early court rulings may preclude execution of the initial strategy.
Still later, contributions can be made to trial planning including independent witness evaluation, trial demonstrative exhibit commentary, opening statement critique, and related tactical matters.
Patent Litigation Assistance – Corporation Services
An excruciating decision for the holder of patent rights is whether to sue an infringer. The enormous cost of most patent litigation is well-known. The comparable risk in submitting an important asset to the sometimes whimsical decision of a jury (and, currently, the equally whimsical decisions of the Federal Circuit Court of Appeals) is also generally appreciated by a patent holder. No law firm worth its salt who works up a litigation strategy can offer advice that is not tinged with advocacy. Yet litigation is only one set piece in the business strategy relating to patent portfolio management. An independent evaluation by a detached experienced trial lawyer is warranted before committing not only money and time, but placing in jeopardy a valuable asset.
Of course, there are many other matters to be considered in relation to a litigation decision, to a licensing program or to the development of a proprietary position. An honest assessment of the litigation-potential of a patent is of great value in the hands of the licensing negotiator. It is unfortunately common to find that the leverage of a lawsuit is often over-estimated or occasionally under-estimated during licensing discussions. Litigation is nothing more than the continuation of negotiation by other means. And failure to assess the potential for success is a mistake – but one that can be cured.
Hard trials are only won by good lawyers. There is no litigation decision more important than selection of counsel. And it is the most difficult of all the litigation decisions. There is no “best” lawyer for any case. That does not mean that an independent vetting process may not lead to a pragmatic advantage.
On the defensive side, the decisions with respect to resisting are equally complex, but generally must be made on a time scale that is precious. The necessity for quick reaction simply compresses the strategy development process, it does not obviate it. Assistance on an expedited basis may supply the needed independent evaluation in a short time frame.
IP Counseling Services
In addition to litigation, Paul has lengthy experience in patent transactional law and patent development strategy.
He has prepared numerous patent and technology licenses, joint technical development agreements, co-marketing agreements, trade secret licenses, technical personnel employment contracts, patent dispute settlement agreements, joint venture agreements, covenants-not-to-compete and other business arrangements that involve intellectual property.
Paul has developed in-house patent policies covering invention acquisition, invention reward systems, confidentiality policies, invention disclosure facilitation programs, and IP audits. For emerging companies, he has assisted management in the development of a corporate patent and technology strategy to create shareholder value based on the technical assets of the organization.
Paul has experience in patent interferences, reissue applications , and reexaminations. Transactional experience includes many ownership issues relating to patents including assignments, joint ownership, inventorship, resolution of disputes regarding creation, and remuneration division schemes.
Early on Paul assisted franchisor management in the development of a strong trademark position by counseling on trademark selection strength, acquiring trademark and trade dress statutory protection, resisting encroachment through aggressive opposition and cancellation proceedings, infringement litigation, and proprietary marketing policies including the use of copyright protection.
Paul has served briefly as a special master in technical subject matter discovery disputes.
Alternative Dispute Resolution
Many disputes can be effectively resolved outside formal litigation using a wide spectrum of methods and resources. While arbitration is the most familiar, other techniques may be preferred in intellectual property matters, such as mini-trials focusing solely on simplified core issues. Certain portions of the dispute may be resolved with the remaining issues to proceed to litigation.
Of course, mediation, used at the right time and before a skilled intellectual property mediator can be highly effective. Because of the tremendous delays in getting a matter heard in most courts, early evaluation before a mediator with settlement authorized principals can truncate a dispute before hardening of the parties’ positions makes compromise more difficult.
The decision to use alternative resolution is itself a matter to be strategically approached.
Infringement Opinions
One of the most devastating results that can be visited on a patent lawsuit defendant is the award of treble damages for willful infringement. And the most common and effective way to avoid that calamity is the offering of an opinion of counsel of non-infringement, invalidity, or unenforceability. It will be apparent that such opinion must be obtained from counsel who is not counsel that is or will be litigating the matter for the client. Opinions are therefore invaluable, if properly rendered and adequately defended.
Paul offers second opinions in patent litigation matters. An opinion should be informed by experience in the use and attack of such opinions in the heat of litigation. The presentation of such opinion in settlement discussions and at the trial can be of significant value but only if it conforms to the prevailing and ever changing standards established by the Federal Circuit Court of Appeals.
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