Kenneth R Adamo
What does effective law firm leadership look like to you?
Effective firm leadership is just that: a designated person (or small team, no more than three) with a defined, focused practice and management process, that is accessible to firm members and staff who seek and accept feedback, and who are keen to deliver on its provisions and who do exactly that. The key factors that should be addressed in this process are quality of both firm and personal life, as well as being able to practise law at the highest possible level. This should be the primary day-to-day focus of the leadership, their raison d’être, as it were. A little pie-in-the-sky sounding, but there it is.
Can you tell us about some of the biggest challenges facing your clients right now – and how you are helping them to overcome these?
I view my clients’ challenges through the lens of a trial lawyer. The US system presents us with one unique challenge: the seventh amendment of the US Constitution, the jury system. The challenge of presenting a technical case to a US jury is, and long has been, one of a magnitude that is hard to even describe to some clients. Add in the recent major revision to US patent law in the 2011 America Invents Act – which included substantive and procedural components, most namely the PTAB post-grant review procedures (which added a whole new dimension to patent enforcement and have been referred to as a patent-killing entity) – and you have an exceedingly complicated mechanism. Educating clients in establishing their patent portfolios from the moment an application is filed with the USPTO and then taking them through exploitation of resulting patent rights (including licensing and enforcement) is an expensive, time-consuming process with many possible paths to explore and follow or avoid. There are few bigger challenges, especially when you factor in the phenomenal explosion of increasingly complex and valuable technologies (eg, AI, IoT and biotech, which has its own two legal procedures in the United States) that must be handled accordingly.
A trial lawyer helps their client through this complexity by implementing a structure for securing, licensing and enforcing (or avoiding) patents in principal technologies, comprising experienced counsel (both in court and in the USPTO-PTAB universe), strong technical expert witnesses and researchers, and business liaison(s). It is instructional, protective and aggressive. This structure is also best if it is evergreen in nature, with adjustments made according to changes in the legal environment, technology and markets to be both proactive and reactive as needs demand. Keeping the structure ready to respond to challenges is expensive, though. Control of such expenses is the biggest challenge of all.
What changes would you like to see to the US post-grant proceeding landscape – and do you think they are likely to happen?
There are as many suggestions on how to revise, renew and restructure US post-grant proceedings to solve the many difficulties in the PTAB and its practices (real or imagined) as there are people who specialise in those proceedings. Director Vidal has been astonishingly busy in starting to fix a number of these issues, by:
- establishing and running the director review mechanism, designed to satisfy the issues engendered by the Arthrex Supreme Court decision;
- working to resolve the discretionary denials issues grounded in Fintiv and other case law;
- turning the PTAB into a strong educational machine that provides excellent user-friendly seminars and materials to educate the Bar in the mysteries of post-grant review practice; and
- working with cutting-edge SEP and FRAND issues through alliances with WIPO and other entities.
A number of well-known PTAB practitioners are active in the Bar Association and the New York Intellectual Property Law Assocation, who also provide education, blog commentary and thought leadership, as well as treatises and more.
These are all likely to continue to expand and multiply, as they are happening now, today, in real time.
Do you have any advice for anyone considering a career in litigation?
If you are going to be a trial lawyer (not a litigator, a real trial lawyer), you cannot go half way. If you are serious about learning and practising at the top levels, it is an all or nothing proposition.
Get the best legal education from a school that offers a wide range of IP-focused courses and that also teaches trial advocacy and evidence. While in law school, clerk for a trial lawyer who is not necessarily an IP specialist, but who is in court frequently, preferably jury trials. During summer, get a job with a trial lawyer who has a real litigation practice and will get you into the courtroom with them. Study hard and make law review, if you are able to. That a law school teaches at night or is not Harvard, Yale, NYU or Columbia is not important. If they have a good reputation for putting people in courtrooms, go to that school – especially if they have IP courses taught by practitioners who practise during the day. When you graduate from law school, if you are smart enough to get a clerkship, try for one in a district where there are a lot of tried patent cases.
It is an art as well as a science, being a trial lawyer. Approach it as such.
What has been your proudest professional achievement to date?
Every case that I have handled in the past 47 years that was – or should have been – disposed of on summary judgment, that was tried to verdict or judgment (jury/bench trial), that was won, reversed or otherwise had a favourable outcome, or that ended up in a loss, and every US Court of Appeals for the Federal Circuit appeal that I have appeared in, win or lose.
Why? Because every trial lawyer wins cases that they should have lost and loses cases that they should have won – as such, all of your cases stay with you throughout your time at the Bar and are seared into your memory.
How has the rise of sophisticated analytics and AI affected your practice over the past decade?
It has not affected my practice drastically or profoundly yet, but these technologies have led to cost reductions at all levels and stages of a case, such as:
- basic research, including where to consider bringing a lawsuit or trying to transfer one if you are a defendant;
- following changes in the law and performing exhaustive legal research in an effectively limitless library of resources (cases, treatises, blogs);
- retaining, supporting and working with expert witnesses (technical and financial especially), both offensively and defensively;
- preparing demonstrative exhibit materials, including animations and the like in-house, on a screen in my office;
- performing surveys, including preparing the questions and selecting the potential survey universe using publicly available databases, performing the interviewing and follow-on, and preparing graphics from the resulting data for use at trial; and
- translations from language A to language B.
All of this has been possible for me at astoundingly reasonable costs. These changes have made me a more effective trial lawyer, especially when digging up and preparing a trial cross-examination on short notice or under conditions of true surprise, which, when your opponent is equivalently equipped, happens more frequently than it did three to five years ago.
What technological developments are currently having the biggest impact on your clients’ patent activity?
Very hard to choose the biggest. For the types of clients I work with (and the matters that I mediate, which I am doing more these days), AI is the biggest new thing, in all its various manifestations. A close second would be virtual video trial appearances, depositions and meetings. Combine that with a state-of-the-art mobile phone or equivalent and you become a one-person IT wonder (although having a real systems expert at hand does make quite a difference in crunch situations)!
As founder of your own firm, what directives do you give your team on how to maintain client relationships and/or add value for clients?
Well, as I am a one-man band (supported on a case-by-case basis by, or co-counselling with, small groups of lawyers in similarly situated practices), there are no directives or the like, save for the random bad day when I have been on the verge of talking to myself to correct something I think I might have done wrong.
In terms of maintaining client relationships, there is a drill I have been following for over 47 years: stay in touch, keep the client informed, do not make clients’ decisions for them, be utterly candid and ruthless when your opinion is requested or is necessary to support your client’s best interests, tell them how bad it is when it is bad and give them the best exit strategy you can muster and, well, try not to let your ego or pride get the better of you or your client.
With regard to adding value, cut to the chase as soon as possible, spend your client’s money as carefully and fairly as if it was a treasured member of your family’s, and always look for a reasonable resolution short of trial. Remember the cliché that a good settlement is one where all parties leave the room somewhat dissatisfied; it is true more often than not.
What are the key characteristics that clients look for in a world-class IP attorney?
The main characteristics 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.
There has been much talk about the tension between antitrust and IP protections – have you seen any evidence of this and, if so, do you think it is likely to develop into a big issue for practitioners?
Back in the days of the Nine No-No’s generated (and recited as gospel) by the Department of Justice’s Antitrust Division, there was a lot of real tension. I was a relatively young lawyer back then, in the 1970s and 1980s particularly, but as I tried patent cases and inequitable conduct, the USPTO was in its heyday. There was a reasonable amount of use of the Supreme Court ruling on Walker Process and other court antitrust and second circuit antitrust cases such as Berkey Photo and SCM Xerox by defendants as counterclaims or by likely accused patent infringers in direct suits.
I have not seen as much evidence of this in the past 15 years, but that may change in light of the recent leadership developments of the FTC and the DOJ Antitrust Division. The word is getting out that things are going to get tougher than they have been, especially SEP and FRAND cases, based on statements made by this leadership. Examples of this include FTC v Qualcomm, Continental v Avanci and various recent Apple/Ericsson cases.
Whether we will return to the Nine No-No’s days is hard to tell, as there is no crystal ball. I expect, if it happens at all, it will be gradual. The best advice is to keep your eyes open; wait and see.
Kenneth R Adamo
Principal [email protected]
Kenneth Adamo is founder 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 in 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.