Who the clients are, and which chair they sit in
Disputes arrive from companies barely past the startup stage and from some of the world's most valuable technology companies. The work runs on both sides: for the company that holds the patent, and for the company accused of infringing one.
Sitting in both chairs is more useful than it sounds. The argument a patent owner makes about how broadly its claims should be read is the same argument that will be turned around and used against it later. Having made that argument from both directions is how you know which version of it survives.
Most patent disputes end in a negotiated resolution rather than a trial verdict, which means the point of nearly everything below is position rather than spectacle.
It starts in the file, not in the courtroom
He consistently demonstrates a command of all aspects of a case and leverages his skills as a patent prosecutor to great effect in litigation.
This career began on the other job, the one that comes before any lawsuit: getting patents granted. Hundreds of applications drafted or supervised, which is hundreds of turns sitting on the applicant's side of a long negotiation with the patent office.
Every granted patent carries a public written record of that negotiation, called the prosecution history. To get a patent allowed, applicants routinely narrow what they are claiming. Those narrowings are permanent and public, and they limit what the patent can be argued to mean years later, in front of a judge who was not there.
Reading all of it is slow and unglamorous work that a great many people skip. It is also where a great deal of quiet leverage lives.
That is a habit left over from the earlier job rather than a tactic adopted for litigation, which is why it happens before a strategy exists rather than after one needs support.
Nine months on the client's side of the table
A nine month secondment as in-house counsel at T-Mobile meant developing a portfolio rather than defending one, managing outside counsel rather than being it, working directly with inventors, and weighing offensive and defensive strategy against a budget that had many other claims on it.
The budget is the part outside counsel almost never sees from the inside. Nine months of approving the work instead of doing it changes what a recommendation sounds like when you make one.
He has substantial expertise and experience, but also has the ability to reduce the issues into consumable information for executives / board members.
There is more than one venue
Some patent fights happen at the Patent Trial and Appeal Board rather than in a courtroom, in a proceeding called an inter partes review. It asks a different question than a lawsuit does: not whether a product infringes, but whether the patent should have been granted at all. It runs on its own clock and its own budget, and it can change what the court case beside it is worth.
Multiple inter partes reviews, five of them argued in person before the Board. Also covered business method proceedings and ex parte reexaminations.
A company that has just been sued often has more than one room available to it, and the choice between them is usually made in the first few weeks.
On appeal
Federal Circuit briefing and oral argument. That court hears the appeals in patent cases from every district in the country, and it publishes recordings of its arguments.
The argument in Buckman Laboratories against Solenis is in those public recordings. Anyone weighing whether to hire a lawyer can listen to that lawyer work, which is a rarer opportunity than it should be.
Judges these cases have been argued before
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.
Every one of them decides what the disputed words in a patent claim mean before a jury hears anything, and that ruling frequently decides the case in substance.
The technologies these cases have turned on
- Cryptography, encryption and digital security
- Two-factor and multi-factor authentication
- Telecommunications
- Software
- Imaging and encoding
- Chemistry and materials
- Blockchain and digital assets
Work that is not a patent case
Trademark and copyright matters, proceedings before the Trademark Trial and Appeal Board, and intellectual property transactions.
Fifteen years of it, from someone who hired the work
During my career as an in-house patent counsel, having a trusted relationship with outside counsel was essential. For over 15 years, I worked with Jesse on various patent prosecution and patent litigation matters. Jesse's legal advice is top-notch and his case management skills are excellent. He provides high quality and timely legal services at a reasonable cost.
He was a patent lawyer himself, and for fifteen years he was in a position to hire somebody else instead.