Ira S Matsil


What led you to found your own firm and what advice to you have for anyone else considering taking a similar step?

We decided to bet on ourselves. We knew that we had the skills and some good contacts but had no idea what to expect, so we decided to give it one year. Twenty-two years and 45 additional practitioners later, it was a good bet. Of course, starting during the boom did not hurt either.

As for advice for others: come up with a plan but be flexible. We were conservative on growth, probably leaving money on the table by having to turn down work. I still believe that focusing on quality paid dividends. When it is time to grow, you need to hire the best people only. This is not easy, especially when you are turning away work. But remember, the firm is only as good as the people involved.

How do you ensure that highly technical concepts are made clear and accessible for key stakeholders and judges?

Understanding your audience is a key to success in any area. Of course, the already complex legal issues in patent law are only complicated by the technical overlay. As such, we must communicate clearly so that others can understand the concepts. By far, the most important component in achieving this goal is to thoroughly understand the concepts yourself. Without this, clear communication is impossible. With strong technical understanding, it becomes possible to consider your audience and simplify the concepts to communicate effectively to those without technical backgrounds.

What are the top three considerations for US patent owners engaging in re-examination proceedings?

As an initial note, I assume that this means inter partes reviews, even though this is not technically a re-examination. I would rarely file an ex parte re-examination on a third-party patent. However, I might file an ex parte re-examination on my client’s patent if there was art that adversely affected the claim that I could overcome to get a valid patent that was being infringed.

As a third party seeking an inter partes review of a patent, one consideration is the strength of your invalidity case. Regardless of the strategic purpose, confidence that the proceeding will be instituted is important. The strategic purpose of the inter partes review is also a factor, that is: how does this proceeding further client goals? Finally, one must consider the effect on related litigation.

Which technological trends are having the biggest impact on patent activity in the telecoms space?

Telecommunications are becoming more and more important as the technology crosses over into all aspects of commerce. A similar trend occurred in the past when semiconductors found their way from computers to cars and household appliances. Now lightbulbs have computer chips. Similarly, communication devices are finding their way into many product categories. As patent professionals, we must understand and plan for these innovations. For example, in the not too distant future, automobiles will ‘talk’ to each other on the road.

For lawyers, telecoms provide an added layer of legal complexity. Because disparate devices will need to be able to communicate with one another, standard-setting organisations will only increase in importance. On the prosecution side, practitioners will need to understand how to draft claims that are essential to the standard and also claims that are not essential to allow for both receiving reasonable royalties and the possibility of obtaining injunctions. On the assertion side, a strong legal understanding of FRAND and antitrust/anti-competition laws is necessary to navigate patent cases. These are issues with which all clients may need to be concerned.

How do you expect the US patent litigation landscape to change in the next five years?

The future is difficult to predict. It seems especially true in patent law, which has become increasingly uncertain as attempts to address issues related to NPEs and technological advances in software and automation have created unforeseen issues. As these issues are addressed, the value of patent litigation will increase. I expect that subject-matter eligibility doctrines will be revised, strengthening the value of patents. Past policies directed toward the issues of ‘trolls’ have been akin to performing surgery with a hatchet. Refining these policies will also strengthen patent values.

Ira S Matsil

Partner [email protected]

Ira Matsil advises his clients in North America, Europe and Asia on a range of IP matters including patent prosecution and portfolio management. A recognised authority in patent law, he has been ranked by Chambers USA in 2021 and rated as a Texas Super Lawyer. As reported by Chambers, an industry leader was quoted as saying that “Ira is very, very talented”, while a client noted that he is a “very creative thinker and very responsive”.

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