You have won acclaim for your experience as a trial lawyer, which you have described as "an art as well as a science”. What is the secret to your success?
It is a matter of hard work, perseverance (lots and lots of experience, actually), judgement, courage, having a thick hide, being hyper-organised, being scrupulously honest with trial, magistrate and administrative law and patent judges, juries, clients and yourself, and – sometimes – just blind dumb luck and being in the right place at the right time. Staying at the cutting edge of IP law is an absolute necessity and the key to longevity – as is having more than a modicum of physical stamina. The secret is that there is no secret, just unwavering commitment to your craft.
You are one of the world's leading patent litigators. What are your top tips for an effective portfolio enforcement strategy before the International Trade Commission (ITC)?
An effective portfolio enforcement strategy before the ITC starts with having a true appreciation of the fact that Section 1337, Chapter 19 of the US Code is a trade statute, which provides trade remedies. Exclusion orders and/or cease-and-desist orders do not provide for monetary recovery per se. The ITC focuses on unfair trade practices that are measured against a very broad scope of IP regulations that may be looked to for relief.
You should build a broad roster of those IP regulations or other rights (eg, competition remedies) that the statute offers coverage for, which may have applicability to your markets and products. You should periodically review that roster for addition of covered rights or portfolio modification. When it comes time for enforcement of your pre-built Section 1337 portfolio, you should select your strongest candidates for enforcement, considering cost effectiveness, product exposure and geographic reach. ITC actions move very quickly, which is one of the greatest advantages, but that speed adds tremendous strain to keep up – and it is not cheap. That must all be carefully considered and planned for. Administrative law judges are not known to excuse bad planning once a Section 1337 action is instituted.
As an author of the effect of FRAND on remedies, what changes would you like to see in the FRAND/SEP landscape and do you think that they will happen?
The SEP/FRAND landscape has two basic open issues that repeatedly cause substantive difficulty. The first is how to determine essentiality of an alleged SEP (and the criteria to be used to define and gauge it) and whether it is necessary to establish this. The second issue is how to determine FRAND rates. There are at least three basic methods with a number of variations on them: bottom-up, top-down and comparables. Often, one method is the main analysis, with a second being used as a check. Often, comparables are the main analysis, which are then checked by top-down – top-down checked by comparables is also popular. Serious issues make both top-down and comparables less than ideal.
There is increasing talk about how arbitration might be used to settle SEP/FRAND disputes. You have substantial experience as lead counsel in alternative dispute resolution proceedings – what is your take on this?
Use of alternative dispute resolution (ADR) proceedings, be they administered proceedings by the International Chamber of Commerce, WIPO or the American Arbitration Association or ad hoc proceedings, is an idea that has been knocking around for quite a while, an idea whose time has come. ADR proceedings have the tremendous advantage of being totally confidential and private if the parties so choose. For the most part, court proceedings both in the United States and the rest of the world do not have that option to the same degree.
Because academics have paid great attention over the last 10 years to possible ADR use in SEP/FRAND situations, all manner of structures have been proposed, considered and laid out (eg, WIPO’s ADR system has SEP/FRAND components). Use of NGOs to handle the problem of confidentiality of existing licences to establish comparables for SEP/FRAND issues has been addressed at some length (eg, Professor Contreras of the University of Utah Law School), while appellate judges in the European Union have lectured on the SEP and FRAND ADR possibilities (eg, UK Lord Justice Arnold).
Section 294, Chapter 35 of the US Code provides for patent-based ADR use, which may be used for SEP/FRAND issues if the statute’s basic qualifications are satisfied.
Are patent filings taking a hit in the face of economic uncertainty, and if so, what advice are you giving to clients to manage this?
From my perspective, patent application filings continue in most patent procurement technologies at a level in line with new systems coming online (particularly the UPC, which is EU-focused), as well as the continued availability of enforcement mechanisms (eg, the post-grant proceedings in the United States, comprising inter partes and post-grant reviews) grounded in the USPTO, which have matured and continue to display proven effectiveness.
Taken with the US Court of Appeals for the Federal Circuit, a subject-matter specialised court that handles all appeals from patent cases originating from the trial courts in the 94 federal districts, and the ITC that provides a parallel trade-statute-based trial/enforcement system separate from the US district courts and uses the Federal Circuit as its appellate court, tries its cases to administrative law judges – not to juries – and provides non-damage remedies (limited or general exclusion orders and/or cease-and-desist orders).
Enforcement of US patents, including availability of preliminary injunctions when appropriate, remains robust and effective. That, in turn, tends to make patent application filing practices agnostic in the face of economic uncertainty. The USPTO is self-funded and government filing and maintenance costs are set against statutory fees schedules. However, fees for patent application preparations and prosecution are not set against a fee schedule and are highly competitive.
New technologies, of course, present market challenges and risks as to efficient patent filing regimens, which are principally grounded in the complexity of the technical subject matter and types of claims sought. The science, as it were, does require skills in both the law and the tech, carefully chosen country coverage and density of filings, but that continues to balance things out as markets and inventors adjust and refine.
How is the advent of the UPC and the unitary patent affecting global IP strategies?
Especially once it hits its stride as new patent applications are filed and new patents come online, the unitary patent system will eliminate the current structure of repetitive enforcement proceedings in multiple countries, with their substantial accompanying expenses and time consumption.
Already, more than 100 proceedings have been brought, with a target date of 12 months from filing for a trial-level judgment. Several preliminary injunctions have been granted without any (mandatory) obligation to secure or post a bond. That speed of initial completion with a possibility of preliminary injunctive relief in an all-encompassing single case with multi-jurisdictional effect is extremely valuable for patent owners.
My expectation is that the UPC system, if available, may well become the usual global standard enforcement proceeding for suspected patent infringement. Licensing of UPC patents will also likely be more rapid where patent owners make licences available.
One should expect a need for system-operating debugging and fine tuning, as well as the building of experience and strategy with regard to the UPC’s opt-in/opt-out process. Building that experience and skill, which will take some time, may slow the adoption of a standard practice of using the UPC as the system of choice. Also, building up the UPC’s system-accessible patents will take some time, including to generate momentum and acclimating the user base.
How do you stay abreast of all the latest developments in the US patent space and beyond?
With great difficulty – despite the availability of reasonably priced search engines and tools and many other information resources, such as massive legal databases, AI tools, proprietary suppliers and the like.
Because it is so easy to drown oneself trying to keep up with everything – locating, organising and reviewing – risks consuming unconstrained amounts of time, no matter how fast your software or hardware is designed to be.
I have found that the key to an effective daily keeping-up regimen starts with a finite resource list of ‘must read’ and ‘should read if time is available’, which should be reviewed bi-weekly with new materials being added and older, outdated or ineffective materials being culled.
You must choose that list yourself and limit yourself to inputs that experience has taught you offer the most bang for the buck – both in time and breadth of relevancy. Critically, you must not fall victim to looking at everything that shows up on your screen; you need to develop a ‘pull’ philosophy, not a ‘push’ habit.
You must review this resource list and its content every day without fail. Falling behind or having a day off can quickly snowball into paranoia that you are missing crucial information. That, in turn, will prove to be distracting, which defeats the purpose of a consistent approach to keeping current.
It is vital to build in a bias towards including resources that summarise key information sources that your experience has shown are accurate and concise, while self-selecting away from minor matters. For my practice as a trial lawyer specialising in patent and trade secret cases and USPTO post-grant proceedings, that means reviewing Law 360 Intellectual Property, Law 360 International Arbitration, a selection of blogs (eg, Dennis Crouch’s Patently-O, Kevin Noonan’s Patent Docs, IPO Daily News, IP Watchdog), the US Court of Appeals for the Federal Circuit’s advance sheets and Docketreport, among others.
In sum, your experience will guide you to a reasonable and effective source construct that you create, time efficiency will teach you diligence and focus, success and failure will temper you and keeping a focus that is of sufficient depth will help you – yet not so broad so as to consume an unsupportable level of effort. That is the system and approach that has worked for me.
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 state and federal courts and before the ITC, 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.