Richard W Hoffmann

Why is strategic patent knowledge important to dealmaking?

Understanding the patent landscape helps businesses to understand the value of the intellectual property involved. The value of specific patents subject to any transaction can be better evaluated by a client who knows what specific protection they offer within a given field. If a patent has a narrow scope, for example, but protects a key factor needed in a given industry, the dealmaker will know the value and what it can add to the bottom line of their company. There is no guarantee either that seemingly broad patent claims have any real value in connection with a particular need of the dealmaker. Thus, knowing how the patent fits into the industry will lead to better and more informed transactions.

Kathi Vidal was appointed head of USPTO earlier this year – what difference, if any, have you observed so far?

Focusing on the quasi-litigation side of the USPTO, the PTAB and the application of the new Trademark Modernisation Act, the director has been involved in the review of petitions that are filed. In some cases, the director acts voluntarily (without the need for a petition) and is more proactively involved with certain issues.

Which emerging technologies are having the biggest effect on the IP transactional space?

I believe that the development of autonomous vehicle technology is having the biggest effect right now because it encompasses both traditional transactions and also SEP transactions. The effect of the latter also reflects the position of the current administration in connection with SEP transactions.

You are a member of organisations including the Michigan Intellectual Property Law Association (MIPLA) and Michigan Intellectual Property Inn of Court. What role should these organisations play in shaping IP practice?

MIPLA is an organisation that includes both in-house and outside counsel. The opinions of its various members are incredibly diverse and represent the opinions of several types of clients, from original equipment manufacturers and suppliers to individual inventors. When an issue of importance is commonly agreed upon, MIPLA should make this position known. The association can also shape IP practice by holding seminars or lectures related to timely issues in IP practice. The Michigan Intellectual Property Inn of Court is an entity that primarily promotes interaction and collegiality among its members. Its role in shaping IP practice is to provide educational resources to its members and to establish a society of judges, lawyers, legal educators, law students and others to promote excellence in legal advocacy.

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

I enjoy the challenge of framing litigation matters in a manner that sets up the best possible outcome for my clients, with the best outcome being one that meets their specific needs. I enjoy interacting with clients to determine their needs and then developing a strategy that most effectively can achieve the desired result.

I also thoroughly enjoy seeing that the intellectual property we have obtained for a client directly leads to its monetisation, whether it be by licence or enforcement. A comprehensive IP strategy can lead to considerable economical benefits for our clients.

How do you expect the US patent licensing landscape to evolve in the next five years?

I believe the evolution and increased need for licensing between tech companies and automotive manufacturers will be a major driving force. These entities will have to engage in licensing relationships to bring new innovation to market, which will include many licences that will relate to SEPs and involve FRAND licensing, shareware and the like. Due to the likely need to provide patent licensees to multiple parties, rights holders will have to develop creative ways to monetise their patent assets. The automotive market is competitive and margins are not always large. This will require work with companies providing technology to today’s connected vehicles. Even more creativity will be needed in connection with autonomous vehicle technology, where multiple suppliers will likely need to integrate their respective technologies.

Which of your cases or deals has been the most memorable?

Two cases stand out to me. We had an IP case taken to the US Supreme Court that involved the interplay between trademark and patent law. In the case, we were successful at the district court level, but the 6th Circuit Court of Appeals reversed the decision. The Supreme Court then reversed that Circuit Court reversal with a 9-0 majority. That was very satisfying. The case has proven to be a significant one relating to aspects of trademark law.

The second case resulted from a culmination of aggressive patent and trademark strategy. I represent a client that has a seemingly simple product known as a toe stretcher. However, take a closer look and the product is not that simple. Our strategy was to cover the product as best we could using a utility patent. Ultimately, no fewer than eight patents were issued in connection with the product. The product also included a decorative and distinctive feature, which I thought it best to protect using a product configuration trademark registration, which we were able to obtain. As it turns out, the decorative feature had been copied by several entities and people who sold these copied products on third-party seller platforms, such as Amazon, eBay and Groupon. These third-party platforms tend to take down infringing products much more quickly when a registered trademark is involved. My client was able to use the trademark registration to take down hundreds of listings containing infringing products. In one instance, one third-party seller did not take down an infringing product in response to our request, which led to a lawsuit. We brought an action for trademark infringement and were able to obtain an injunction against the platform. As a result of our aggressive and comprehensive approach to IP protection, my client has enjoyed considerable economic benefits resulting directly from his intellectual property.

How have client demands changed over the course of your career, and how has your practice adapted to this?

My clients’ demands have evolved essentially in parallel with the evolution of technology. When I started in this field, all patent searches were carried out manually. In the normal course, it would take over a week to obtain a copy of a patent. Technology improvements now allow patent searches to be carried out electronically, including foreign patent offices. Along with this, however, has come an increase in time pressure from clients. Clients’ expectations are now that things should be done quickly and they often request responses in a matter of days, if not hours. Further, the change in priority for patents from first-to-invent to first-to-file has added additional time pressure.

To manage these demands, we have used technology to streamline certain processes. State-of-the-art searching capabilities and document management software facilities for the preparation and filing of patent and trademark applications – as well as reporting filing, office actions, allowances and the like – are used to respond to clients demands in an efficient manner.

Better searching is also available electronically now in connection with case law, that is reported in federal reporters, before the PTAB and TTAB. The ability to get search results fast allows us to inform the client of the state of the law on a given issue and to present the current most decided cases at any tribunal.

How do you measure the success of an IP strategy?

In connection with a party owning the intellectual property, I believe that favourable monetisation of a patent is a success. Monetisation can be gained in many ways, including exclusive use of the technology, enforcement of the patent, licensing or obtaining injunctive relief to protect the client’s IP rights. This is best if we can protect the clients’ interests prior to the need for litigation.

In connection with an accused infringer, a success is when the client can continue to make or sell the product that is accused of being infringing. This can be by way of licence, settlement or judgment. As above, it is always best to put together the case before any litigation commences so as to lead to the inescapable result that my client will have the right to continue creating their product.

Your technology specialities include mechanical and chemical engineering. What are some of the biggest challenges currently facing clients in these fields?

In any of these arts as well as others, the biggest challenge is drafting an application that can withstand the scrutiny of a validity challenge, such as by way of ex parte re-examination, inter partes review, post-grant review or litigation. Now that patents get challenged at the PTAB on a regular basis, the preparation and prosecution of cases has become increasingly important. This requires skilled patent drafters who truly understand the technology. There is considerable time pressure to draft and file the application due, at least in part, to the first-to-file rule of priority.

Another challenge is meeting client requirements for diversity. We are a small boutique law firm focusing primarily on patent practice. We always endeavour to find diverse candidates, but this has proven to be more difficult than it seems, particularly as such candidates are now, quite rightly, in such high demand.