Peter J Armenio

What led you to pursue a career in intellectual property?

My father, Frank Armenio, was a PhD chemist and ran an analytical laboratory. He sparked my early interest in chemistry. My mother, Marjorie Armenio, is a master’s of education teacher and guidance counsellor. She kindled in me a love of words and stories. Becoming an IP trial lawyer was a great way to bring together those interests, just like my parents did.

You have represented clients in the United States as well as in Europe and Asia. How do you stay abreast of the latest industry developments both in the United States and internationally?

I am lucky to have worked with wonderful colleagues and friends from around the world, both at client companies and other law firms. It is amazing what you can learn just by staying in touch. Seminars and conferences have their place, of course, but a coffee with an old friend and colleague often offers much more of an inside, off-the-record view of what is going on around the world.

Your practice focuses on pharmaceuticals, biologics, medical devices and DNA diagnostic and sequencing technologies. What are some of the biggest challenges facing your clients in these sectors at present?

The pace of innovation has accelerated to unprecedented levels in these sectors. We are now seeing treatments that, a decade ago, were only dreams. With that innovation, however, comes the challenge of protecting the massive investments required to bring these treatments to the market, from both copyists and coat-tail riders.

How do you expect FRAND issues to develop in the United States over the coming years?

While already a significant part of any tech IP practice, FRAND issues are not yet a significant part of life sciences IP practice in the United States. However, that may change over the coming years as more and more papers and proposals suggest ways to address what the authors and proponents call “foundational technologies”.

What aspects of your work do you enjoy most and why?

I have always enjoyed the scientific aspects of my work the most. From a personal perspective, it is awesome to get a close-up view of some of the most significant new treatments of our time. From a professional perspective, I have always believed that truly and deeply understanding the science in each case leads to better outcomes for my clients. Whether it is turning a technical expert deposition into a conversation or calling out a scientific contradiction during a cross-examination at trial, truly and deeply understanding the science in each case has enabled me to focus on the issues that matter most to my clients and seize on winning moments that otherwise might be missed.

What impact has the covid pandemic had on your practice, and what permanent changes do you expect as a result?

Like everyone else, the covid pandemic shifted my practice from almost entirely in person to almost entirely remote for well over a year. During that time, I conducted, by video or telephone conference, a Federal Circuit appeal, two full arbitration trials, a preliminary injunction hearing, multiple claim construction and other hearings, and multiple expert depositions. I found that many of these proceedings were more efficient (and certainly cheaper) when conducted by videoconference; I expect there will be a permanent increase in the number and frequency of such proceedings, especially for cost-sensitive matters.

What action should US rights holders be taking to put themselves on a more secure footing?

I would always recommend that rights holders obtain a second perspective on key issues. Whether a formal second opinion or an informal sharing of thoughts and ideas, having a second perspective almost always adds nuance and depth to a rights protection strategy.

How are client demands changing, and what impact has that had on the way you manage your practice?

Many clients are under increasing pressure to control their legal spending, which has impacted decisions regarding staffing and how best to handle the matter (especially during the costly discovery phase of US patent litigations). This change has placed an even greater premium on the judgement and experience of the lead counsel for the matter.

What are the key skills required of a top-level IP litigator?

I think the key skill for a top-level IP litigator is the ability to tell a simple, compelling story that is still 100% scientifically accurate. It is an easy skill to describe, but one that takes years of time and effort to master.

How might the covid IP waiver hit the life sciences scene?

Life sciences companies saved millions of lives by racing to develop covid vaccines and treatments when the world needed them most. It seems counter-intuitive, and likely counter-productive, to respond to that effort, investment and innovation with a waiver. One can easily envision such a waiver reducing the resources that will be brought to bear when the world is confronted with its next health challenge.