What are the key skills required of any top-level IP litigator?
The main skills are creativity, attention to detail and perseverance. Further, a strong grasp of the relevant law and organisational capability, which includes structure and daily and hourly supervision of teams at all levels, is necessary. Finally, candour without pretension, strong communication skills, courage, mental toughness and the ability to survive on very little sleep for long periods of time are musts .
Can you tell us about some of the biggest obstacles you have faced in your professional life — and how you have overcome them?
I would say that these have been learning the relevant IP law and precedents, acquiring and practising trial skills when first in practice, and learning the dynamics and realities of outside law firm practices, including how to survive and thrive in Big Law.
I grasped the relevant law by doing the job of an outside practice IP trial lawyer. I held summer jobs, working for Eastman Kodak in two different parts of the internal patent department in Rochester, New York. Finally, I obtained an LLM in IP law at night at what was then the John Marshall Law School in Chicago, Illinois.
I acquired and practised trial skills by clerking during law school with the Rensselaer county public defender in Troy, New York, taking on pro bono representations in state and federal courts in Chicago, Illinois while working full-time in an IP firm, and then being a member of trial teams in that firm over the next eight years.
Getting to grips with the dynamics and reality of outside law firm practices was learned at the ‘school of hard knocks’, as Big Law grew in the United States over the 37 years that I was a partner at two major international law firms with very strong IP trial practices – Jones Day and Kirkland & Ellis.
What led you to found your own firm and what advice to you have for anyone else considering taking a similar step?
I aged out of my agreement with Kirkland & Ellis as I approached 70, as agreed with the firm and myself, and, after roughly 45 years at the bar, I was not ready to ride off into the sunset quite yet. I changed my form of practice to give it a narrower focus on strategic and tactical counselling, oversight in particular matters (as a second pair of eyes) and an increased focus on alternative dispute resolution work (as counsel and mediator/arbitrator) and writing. The best advice is this: if you start your own firm as a very senior trial lawyer, the business of the practice of law is harder than it looks and requires a lot of time and effort every single day. Pay very close attention as it is easy to make mistakes if you do not.
How are client demands changing, and what impact has that had on the way you manage your practice?
Client demands on IP trial lawyers have always been exceedingly high and usually unforgiving in complexity and with regard to room for error – that is any error, of any size, shape or characteristic. This has not changed and nor should it. Fee issues inherent in the hourly billing system are often a major irritant to both client and lawyer – I spend a lot of time trying to avoid these by planning in advance and adjusting as exigencies require (to the extent to which this is possible in a trial-centric practice).
What are some of the biggest changes that you have seen in US patent litigation over the course of your career?
There have been three major changes in my career. First, the rise of jury trials in IP litigation, especially patent litigation, from a rarity in the early 1980s to today’s essentiality use de riguer.
Second, the formation and existence of the US Court of Appeals for the Federal Circuit and the attendant affects of its presence, including its structure, practices, advances and failures, as well as – no surprise here – the styles, approaches and personalities of its members in patent cases, past and present.
Third, the formation, existence and widespread use of USPTO post-grant review proceedings through the America Invents Act.
How do you ensure that highly technical concepts are made clear and accessible for key stakeholders and judges?
You must be very familiar with the specifics of the technology involved in your cases, at least to the level of a well-educated layperson. It is crucial to find, retain and work with the appropriate expert witnesses necessary to the presentation of your cases, with a focus on those who are excellent communicators and teachers. You should also master the selection and use of the appropriate media and teachings techniques, visual, aural and otherwise, to present show and tells, which are technically accurate, listener-friendly and, with luck, interesting.
What emerging trends or technologies are having the biggest influence on patent activity?
I would point to the development of all manner of Al-based systems and processes, as well as the continued growth of web-based search, organisation, presentation, analysis and the storage and retrieval of cloud-based data. It is also worth highlighting further advances in the design and manufacture of semiconductor devices of all types to provide the broadest range of functionalities and alternative direct energy creation technologies (eg, generation, storage and transmission ) that are not hydrocarbon-based, as well as sources of alternative materials that are not hydrocarbon-based and recyclable – these could well have a huge influence on the preparation, protection, acquisition and licensing of patents.
How do you measure the success of an international IP strategy?
A strategy can be considered to be successful if your client’s R&D commitments and spending, necessary technology acquisitions, commercialisation efforts and freedom to operate are supported, protected and enabled in whatever worldwide market environments in which they currently do business, for the near or foreseeable future.
What changes have you seen to the patent landscape under the new Biden administration?
Except for the selection and seating of one new judge on the Federal Circuit, almost none. Whether the Biden administration’s technology and business executive order will have an effect on the patent landscape is yet to be determined. That said, one provision seems to point to the possible dialling back of the 2019 Department of Justice, USPTO and National Institute of Standards and Technology replacement for its 2013 predecessor (both of which do not include the Federal Trade Commission). This would likely have an impact in the SEP and FRAND sphere.
How has your management style changed over your professional life — particularly given the last year of remote working?
It has not changed hugely, save for the daily use of Zoom and other video-based communication technologies, and that of the now-ubiquitous smartphone for almost everything. I have always been very hands-on and never got into the habit of asking anyone to do anything that I would not do myself. I have always followed the ‘we (ie, the team and the client) win, but I lose if a matter is lost or turns out badly’ concept and lead from the front. Remote working has not changed this one iota. I doubt that anything in my professional life would alter this.
Kenneth R Adamo
Principal [email protected]
Kenneth Adamo is the owner of the Law Office of KRAdamo. He has extensive trial experience as lead counsel in jury and non-jury cases before US state and federal courts and before the US International Trade Commission, as well as ex parte and post-grant PTAB experience at the USPTO. Mr Adamo has substantial experience as lead counsel in arbitrations and other alternative dispute resolution proceedings, and actively practises before the US Court of Appeals for the Federal Circuit.
Click here to see his IAM Patent 1000 2021 profile.