Skiermont Derby LLP
You have received high praise from multiple outlets for your astute litigation skills. What has been the secret to your success in the courtroom?
Although it may not be a ‘secret’, in my view the key to success in the courtroom comes down to preparation – and the kind of winning preparation that is required begins long before the courtroom lights are turned on. It requires understanding the issues of the case in such a way that you can speak to the jurors and the judge without jargon or vocabulary that goes over their head, and without speaking down to them in a way that sounds condescending. Because patent cases invariably involve complex technology, a trial lawyer earns credibility with the fact finder by teaching without condescension. You have to empower fact finders to have confidence that they understand the issues and feel good about deciding in favour of your client.
What does effective law firm management look like to you?
To me, effective law firm management means empowering the people working at every level of the organisation to succeed. This means avoiding the temptation to micro-manage every task and giving credit where it is due from the most junior clerk to well-seasoned trial lawyers. Creating and cultivating a culture of independent working and thinking is critical because winning ideas and theories can come from anyone at any time. When everyone feels invested in, and responsible for, the success (or failure) of the organisation they will be motivated to do their best work every day and it becomes habit forming in a way that enables the organisation to thrive as a result.
How do you convey complex technical concepts and arguments in a way that is clear to juries?
Conveying complex technical concepts in a way that can be understood by lay juries requires trial lawyers to have a deep understanding of the technical concepts themselves. It is impossible for a presenter to explain complicated material in an accessible way if they rely on jargon and vocabulary that the fact finder does not understand. For that reason, the presenter must have a sufficient command and understanding of the material, such that they do not rely on or use jargon and instead explain issues based on first principles using a vocabulary that fact finders can understand. The trial lawyer has to be the teacher before they can be the advocate.
What emerging trends or technologies are having the biggest impact on your practice?
In view of the global covid-19 pandemic, by far the biggest emerging trend and technology that is affecting our practice is conducting our work remotely and engaging in court and administrative proceedings remotely, which is now happening over various technology platforms rather than in person. The ability to work in teams and to create presentations and arguments for fact finders over various video-based technologies has become critical to every aspect of the work that we do – from preparation to presentation.
What are the biggest enforcement challenges facing telecoms companies in the United States at present?
The biggest patent enforcement challenges facing telecoms companies in the United States will likely revolve around challenges in enforcing 5G SEPs, as well as the increasing overlap in the use of telecoms technology in new technological areas that are not traditional for telecoms companies, including telecoms technology embedded in automobiles and the Internet of Things.
What were the key factors to securing a successful settlement in Rensselaer Polytechnic Institute’s infringement suit against Apple?
As in most complex patent litigations, the key to success in RPI v Apple came down to preparation and winning the important pre-trial battles so that the defendant faced real exposure at trial that it felt would be best managed by a negotiated licence agreement before a jury verdict was rendered. In RPI v Apple, the ultimate settlement was the result of success first at the PTAB and then in the critical district court proceedings – success at claim construction, success against Apple’s Daubert challenges to our proffered technical and damages-related expert witness testimony, and success against Apple’s dispositive motions seeking to end the case before a jury was seated based on various non-infringement and invalidity arguments.
How do you manage expectations and maintain close working relationships with clients when the stakes are so high?
Expectations and close working relationships in high-stakes patent litigation are best managed and developed through constant communication directed to the risks and tasks ahead – both short term and longer term. Constant communication and buy-in is key. This goes beyond moving the task list – it requires constant communication and adjustment of the strategy. Communication regarding the task list is important, but in the absence of communication concerning how the tasks fit into the big picture, strategy is critical to avoid surprises and keep expectations in line with reality.
Subject-matter eligibility remains a complex subject in the United States. How likely are we to see legislative reform to Section 101 any time soon?
While Section 101 law is still an absolute mess, there has been some incremental movement making Section 101 motions more difficult to win, particularly early in the litigation at the motion to dismiss stage. I think the data would show that the longer a patent is litigated, the less likely it is that the courts will find the invention directed to an abstract idea because the more courts learn about the invention and the state of the art at the time of the invention, the more likely they are to understand and conclude that the invention is a tangible advance over the state of the art that existed at the time of the invention. I am not particularly optimistic that we will see legislative reform in this area any time soon.
How fair is it to say that the United States has become less patent-owner friendly over the years and what could be done to change this opinion?
I think it is fair to say that the United States has become less patent-owner friendly over the past five to 10 years. The reasons are many and include onerous limits on the location (venue) in which patent cases can be filed, the aforementioned ascension of Section 101 as a patent killer, the creation of inter partes review of issued patents at the PTAB and the growing limitations on remedies for patent infringement. While I am not optimistic that this will change any time soon, two helpful alterations would include relaxing the venue requirements so that patent owners can sue where they reside and ending or substantially curtailing inter partes review.
What is the biggest career challenge that you have faced and what can others learn from how you overcame it?
My biggest career challenge was starting a new law firm focused on plaintiff-side patent litigation just before the passage of the America Invents Act. Rather than feeling sorry for ourselves or lamenting the new climate that tilted the playing field heavily against patent owners, we overcame this significant challenge by learning the new rules of the game and using them to our advantage as best we could, and by investing far more heavily in pre-filing case review due diligence and case selection that aims to assert the kinds of patents for which the new obstacles are more easily overcome.
Paul J Skiermont
Paul J Skiermont obtained a bachelor’s, with honours, from the University of Kentucky, and was twice awarded first place speaker at the Intercollegiate National Debate Tournament. Before law school, he coached the debate team at Harvard University. He earned a law degree from the University of Chicago with high honours, Order of the Coif, and was a judicial clerk for Judge C Arlen Beam at the US Court of Appeals for the Eighth Circuit.
Click here to see his IAM Patent 1000 2020 profile.