Skiermont Derby LLP
You have been at the heart of headline-grabbing cases, including Rensselaer Polytechnic Institute v Apple. What do you think makes for a successful conclusion to a case and how can litigators achieve this for their clients?
From my perspective, there are no shortcuts or magic bullets for patent litigators to achieve a successful conclusion to a case for their clients. Instead, as with any endeavour, the key to success always comes down to preparation. It requires understanding the issues 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 led you to establish Skiermont Derby and what advice would you offer anyone considering setting up their own firm?
I wanted to focus my career on plaintiff-side patent litigation because over time I realised that representing inventors and patent owners was what I found most rewarding. I also wanted the flexibility to represent inventors and patent owners who desired legal representation on a contingent fee or other alternative (non-hourly) fee structures. In my judgement, there was a market opportunity to build a firm with elite lawyers that focused on representing inventors and patent owners. My advice for others considering setting up their own firm is that there will never be a time that feels perfect or risk-free to leave the stability of your current practice in order to take a shot at starting your own firm. At some point you just have to decide to go for it. The insight that I had that made me comfortable leaving a great place to start my own business was that, even if it was a complete failure, I would not be unemployable, so I might as well take the shot.
How have client demands changed over the past five years and what impact is this having on your practice?
In my experience, client demands have remained relatively consistent over the years. Clients want constant communication, excellent work product delivered in a timely manner and fair fees. Any law firm that delivers on those three core missions should thrive.
How has the Supreme Court’s decision in SAS Institute affected strategy before the PTAB?
For patent owners, SAS Institute has dramatically affected the strategy of how to craft the preliminary response (POPR) to a petition. Before SAS, patent owners often drafted their POPRs with the aim of avoiding institution of certain specific claims that had been challenged, so that, even if some claims were instituted, there was a chance that high-value claims would not be. When SAS eliminated partial institutions and imposed an ‘all or nothing’ outcome on institution decisions, it shifted the POPR strategy. In particular, post-SAS POPRs focus more than ever on attempting to persuade the PTAB to deny institution altogether based on one or more of the bases for discretionary denial of institution – including the advanced stage of the district court litigation, objections to serial petitions and arguments that the same art or arguments in the petition had previously been presented to the USPTO. In addition, post-SAS POPRs are less likely to focus on claim-specific arguments (particularly for dependent claims) because where institution is all or nothing, it is strategic for patent owners to hold back their claim-specific arguments until – and unless – the PTAB institutes review.
Finally, in what ways do you expect the US patent environment to evolve for pharmaceutical companies over the coming years – and how can rights holders prepare for this?
I expect the US patent environment to become more challenging for pharmaceutical companies as a result of political dissatisfaction over the high price of prescription drugs – combined with the Big Tech companies’ persistent anti-patent narrative and lobbying, which seeks to enshrine their free riding at the expense of a robust patent system for all. Pharma patent owners might be the only group powerful enough in Washington DC to prevent and reverse the erosion of patent rights that the United States has experienced over recent years at the hands of Big Tech.
Paul J Skiermont obtained a bachelor’s, with honours, from the University of Kentucky, and was twice awarded first place 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.
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