Richard W Hoffmann
What are the key skills that a litigator needs in order to succeed at the top US courts?
The ability to effectively simplify and communicate what are often complex technical and legal issues in both written and oral communication, whether the audience is a judge or a jury, without being inaccurate or inconsistent. Further, a litigator needs to identify the most important issues and focus on developing and presenting those without seeking to contest matters that are superfluous or not important to the overall case. Finally, it is imperative to know the procedural rules in the venue where a case is pending.
You are known for your expertise in licensing – what are the most notable changes that you have observed in the space over the last 10 years?
One of the more notable changes is that entities that have historically obtained IP protection as a defensive mechanism (eg, to have an effective portfolio in order to avoid being sued), are now looking at their intellectual property as a means of generating revenue. Also, companies that invested in intellectual property at one time, which may have then abandoned the technology for some reason, might later seek to generate revenue from that intellectual property and are less reluctant to license it. For these reasons, we are seeing significantly more licence agreements directed to maximise revenue generation. Accordingly, the strategy involved in IP protection should consider how the intellectual property might be used in the future so that it can generate revenue.
What, for you, are the key components of a world-class IP enforcement strategy?
At the outset, rights holders must develop a comprehensive approach to protecting their intellectual property in all of the markets where their products may be produced or sold. Where possible, it is important to use multiple different types of intellectual property to cover a single product and utilise these various forms as a base for further IP rights. For example, a utilitarian product may have important ornamental features that can be covered by design patents, while also being protectable as trade dress. A rights holder can thus take advantage of the exclusivity offered by a design patent to acquire distinctiveness to then in turn obtain protectable trade dress, thus maximising its ability to remove infringing products from third-party seller platforms as fast as possible.
How do you build trust and understanding with clients to ensure that they make the most informed decisions?
I am very careful to be sure that the client understands all of their options from the beginning on all of the ways to protect their intellectual property. We work together to build a strategy that attempts to position the client, and their intellectual property, in such a way that litigation is avoided. Clients appreciate being involved in such proactive measures. If litigation is necessary, the clients, having participated in their IP strategy from the beginning, understand the need to proceed in this manner. Further, we try to provide clients with effective tools so that they can remove infringing products from third-party seller platforms. We work with the client to develop the strategy, so ultimately they can take on that enforcement if they choose.
What advice do you have for anyone considering a career in intellectual property?
For anyone who is interested in IP litigation, I first tell them that the most important class they will have in law school is that on civil procedure. As I said above, knowing all of the procedural rules available is paramount. With respect generally to the field, I also inform people that the IP space is extremely diverse and includes IP procurement, agreement work and litigation, each of which can be a specialty of its own. It is helpful to undertake internships that expose those interested to all of the areas so that by the time they are ready to enter the field as a practitioner, they will know which area they find the most satisfying.
Richard W Hoffmann
Rick Hoffmann is a shareholder at Reising Ethington PC, with over 30 years’ experience in intellectual property. He has a BS in chemical engineering from Michigan Technological University (with honours) and a law degree (magna cum laude) from Michigan State University College of Law. Mr Hoffmann’s practice focuses on IP litigation. He has been lead counsel in IP cases in district courts throughout the United States, before the USPTO and the International Trade Commission.