James A Flight

What are the key characteristics that clients look for in a top-level IP attorney?

Clients look for attorneys who exhibit a deep understanding of the law, the technology and end use of patents. Knowledgeable clients do not want to just ‘get patents’. They want to secure patents that can be successfully enforced in litigation.

If you could change one thing about the US patent system, what would it be and do you think that it is likely to happen?

I would reverse the Supreme Court’s decision in Alice Corp v CLS Bank International on patent eligibility, and it may happen. In fact, US Senator Thom Tillis introduced the Patent Eligibility Restoration Act 2022, which would accomplish that goal. There should be bipartisan agreement that the Alice decision is judicial overreach that has introduced an unprecedented level of chaos into the patent system. Only parties interested in weakening the US economy or who have no understanding of US patent law would be in favour of retaining the Alice decision.

What considerations should US patent owners make when engaging in inter partes review proceedings?

From a cost perspective, inter partes reviews can be a good alternative to litigation. A patent challenger should consider the strength of their invalidity case, whether the patentee has a continuation pending, and should they have a product that may infringe the challenged patent, consider making the necessary changes to their product to avoid the patent.

You work with clients across a diverse range of technologies. How do you stay up to date on the latest legal developments in these fields?

Hanley Flight & Zimmerman subscribes to several patent news feeds. I receive daily updates on significant cases and events. I also regularly engage in ‘continuing legal education’ programmes and attend industry meetings.

What changes to the US IP scene have you observed over the last 10 years – and what effect has this had on your practice?

The Supreme Court’s Alice decision has been the most significant event in the patent industry in the last decade. By ignoring the wisdom of Judge Giles S Rich, one of the drafters of the Patent Act of 1952, who urged that patent eligibility should be completed separate from other patentability tests and should present only a low bar to patentability, the Supreme Court has significantly damaged the patent economy. Patent eligibility is now unmoored from any reasonably definite standard. As such, patent settlements are harder to achieve as the predictability of court cases has diminished. This unfortunately makes it far more difficult to value patents accurately.

Which key court decisions have had the biggest impact on your practice in recent years?

The Alice decision was easily the most impactful decision on patent practice. Williamson v Citrix Online LLC (Federal Circuit 2015) was also significant for its impact on functional claim drafting, particularly with regard to patent practice in the software arts.

What advice would you offer someone considering a career in intellectual property?

For those starting a career in patent law, work as a patent engineer for a law firm that provides mentoring and training, while attending a night law school programme. Such an approach will enable them to graduate from law school as a functioning patent attorney, while their peers who went to law school during the day will be starting from square one. In addition to an accelerated career and training trajectory, the opportunity cost in terms of lost salary is significant. In present dollars, by attending a full-time day programme, they will miss out on at least $300,000 in salary, all for the ‘privilege’ of being less prepared to start practising law than their night school colleagues who spent their days in real-world training programmes.

Name something that is characteristic of your practice that is not common in the industry.

Hanley Flight & Zimmerman’s practice stands out because we proactively consider trends in the case law and prepare and prosecute patent applications with an eye on those trends. Many firms simply do what they have always done and are relatively detached from the evolving legal landscape. In contrast, our firm is focused on constantly developing the best techniques to secure patents that are likely to withstand challenges in the future. We also spend considerable time thinking through our strategies to make sure our clients’ patents cover the marketplace activity that aligns with their business interests, and that infringement of our clients’ patents can be detected. At the end of the day, patents are business tools, and we prepare and prosecute patents to be leveraged to meet our clients’ needs in a cost-effective manner.

How have you and your firm earned the trust of so many of the top patent-earning companies in the United States?

Clients trust us because we always put their interests above our own. Clients know we have an ironclad dedication to doing the job right. Many clients have transferred work from other firms to us, so I have seen a wide range of work styles from other firms around the United States. Based on those observations, some law firms appear to be more focused on maximising their own bottom line than serving their clients. Hanley Flight & Zimmerman never gets that priority backwards: we are lawyers, and our clients’ interests come before ours. That is our duty, and it is non-negotiable. Clients respond to that level of dedication with commitment to their relationship with us. For example, during the pandemic, at least two clients contacted me and offered to send the firm additional work because they wanted to be certain our firm would safely weather the worldwide challenges. It is gratifying to be valued to such a degree by some of the greatest companies in the world.

You are one of the founding members of HFZ. What does effective leadership look like to you?

At HFZ, we see effective leadership as leadership that confidently fosters an atmosphere of teamwork and collaboration. We set out frameworks based on the latest law and legal trends, and then, against that background, unleash our talented team to be creative and forward thinking. This creates a rich environment where our attorneys and patent engineers flourish, cultivating ideas and achieving excellent results for our clients. Many law firms are little more than a loose affiliation of attorneys who internally compete over resources to feather their own nests. In contrast, founders Mark Hanley, Mark Zimmerman and I have been on the same page since the firm’s inception about working as a team. As a result, HFZ functions as a collaborative unit rowing in the same direction. That vision has set the tone to enable all members of the firm to utilise their abilities to consistently deliver excellent service and work product to our clients.