What led you to a career in intellectual property and do you have any advice for anyone considering a similar career path?
I have always had an interest in the law, probably because my father was a lawyer. I also had an aptitude for science, so it seemed natural to join those two interests.
I really believe that to be successful you need to love what you do. Figure out what that is and pursue it to the fullest.
Can you tell us about some of the biggest obstacles you have faced in your professional life – and how you have overcome them?
The practice of law is multifaceted; it requires lawyers to be experts in the law, to know the courts and judges they practice before, and to know their clients’ business as well as possible, among many other things. I think the biggest obstacle is being an expert in all of those areas, and to keep up, because the practice of law now moves at light speed. Staying on top of the newest, up-to-date information in each of those areas is a challenge.
The race to develop and distribute covid-19 vaccines has thrust the biopharma sector into the spotlight – what changes do you expect to see as a result of this scrutiny?
I hope the public will see the pharmaceutical industry in a better light and realise how important the amazing work that the researchers do is to their own lives. With covid-19 the new vaccines and medicines have been miraculous.
What are the key skills required of any top-level IP litigator?
I think that top-level litigators do two somewhat opposite tasks at once. On the one hand they can be incredibly focused on the details of the case, and on the other hand they can break up those details and eliminate unnecessary information to explain their positions in a very straightforward, uncluttered and simple way. I also think that they tend to be extremely competitive.
How do you ensure that highly technical concepts are made clear and accessible for key stakeholders and judges?
In the movie Philadelphia, Denzel Washington asked a doctor to explain an aspect of AIDS as if he was explaining it to a six-year-old. There is a lot of wisdom in that. It helps to ask yourself whether a fifth grader would understand what you are saying. Demonstratives can be very helpful in making difficult concepts understandable. Finally, ask yourself how much of the technical concepts are really necessary to the themes in your case. If they are not, perhaps they should be trimmed down or dropped altogether.
How do you expect the US patent litigation landscape to change in the next five years?
One trend we have been seeing is that there have been more cases between branded pharmaceutical companies. I think that trend will continue to increase.
I think we may see fewer inter partes reviews in the pharmaceutical area because petitioners have not been as successful at challenging pharmaceutical patents as perhaps they thought they would be. I also think that we will see more claim amendments by patent owners in inter partes reviews. They can be a powerful way to obtain very strong patents.
I think that NPE litigation will increase after a significant downturn. Many NPEs have adapted. They now know what type of patents can avoid eligibility challenges under Section 101, and more NPEs are now backed by litigation funders (and there are many such funders in the litigation marketplace).
What are the biggest challenges facing your clients at present?
I tend to represent plaintiffs and I think jurisdictional issues are becoming more prominent under TC Heartland. The law is too restrictive. As a practical matter, generic pharmaceutical defendants in our cases are larger companies, and in such cases venue does not really present a meaningful burden to the litigant. As a result of TC Heartland, we are seeing more multidistrict litigation, which tends to make the cases more complicated and correspondingly expensive.
How has your management style evolved over your career – particularly over the past year of remote working?
In the past year I have really emphasised the need for trying to stay ‘connected’ and the usefulness of team meetings. As much as we have complained about ‘too many zoom calls’ I do not think we could have got through the past year without them.
Also, I have focused on empathy more than ever. With covid-19, all staff and lawyers have gone through (and are still going through) very difficult times at work, and even more significantly at home with their families and loved ones.Putting yourself in their shoes has been one of the few ways to work through things together.
What has been your most memorable case and why?
That is a very hard question! I feel like I have been so fortunate to have had many memorable cases. That said, the case that was most memorable was BMS v RPR. It was the largest case I have worked on in terms of number of facts and expert witnesses, volume of motion practice and the potential amount of damages. And, after six years it ended with a week-long inequitable conduct trial held at the Southern District of New York two months after the 9/11 World Trade Centre bombing. I learned so much from that case, and we obtained a great result for our client BMS, proving that the patent was unenforceable, which resulted in an award of attorney fees and even expert fees (which is very rare).
Name three changes you would like to see in the US patent litigation space – and how likely do you think they are to happen?
I work with many global clients, and I think they would benefit from more patent law uniformity. The current patchwork of patent laws around the world is sometimes difficult to reconcile, and definitely makes protecting (or even challenging) patents more expensive. Unfortunately, I think obtaining more uniformity will be a large challenge.
I would like to see more clarity in the law around patent-eligibility issues. Even the Federal Circuit has indicated that there is a need for more clarity, as the Supreme Court seems disinclined to add this, I hope Congress will act – this is a possibility.
I think the patent venue statute needs to be revisited. As a practical matter, most defendants are large companies that have a presence throughout the country, and at least sell their products throughout the United States so the venue will likely be appropriate for them in any state. However, the statute could be written to take account of smaller companies, for which litigating in a remote state is an actual burden. I think we may see some movement on this issue.
Dominick A Conde
Partner [email protected]
Former chair of Fitzpatrick, Cella, Harper & Scinto, Dom Conde is co-chair of Venable’s IP division. He represents pharmaceutical companies in large-scale patent litigation and serves as lead counsel in Hatch-Waxman litigation, as well as representing clients in contested proceedings before the USPTO. Mr Conde also operates in industries, including biotechnology, chemicals, consumer goods, energy, manufacturing and medical devices.