How do you expect the US patent litigation landscape to evolve in the next five years?
I expect that it will increasingly focus on litigation between competitors and against new market entrants. The US market continues to be vitally important to many companies and this is driving the number of strategically important litigations that are important for companies’ core businesses. I also expect that political issues will continue to impact global business and, consequently, litigation. We see that sanctions and restrictions are elevating the importance of supply-chain security and companies’ decisions on what markets to participate in. Public relations awareness also plays a more prominent role in cases with international companies. These factors make it increasingly important to have a comprehensive strategy that is developed with the support of the executive suite and key managers.
Alongside working with US and European companies, you have developed a practice representing clients from Brazil and China in IP matters. What are the biggest challenges facing international clients looking to enforce their patents in the United States?
Representing international clients has become the largest part of my practice and this led me to become the managing partner of Steptoe’s representative office in Beijing. Effective communication with companies based outside the United States requires an in-depth understanding of the client’s local legal system and business culture. US litigation is not one-size-fits-all, so each case must take into consideration the business and legal realities from the client’s perspective. This knowledge comes only through years of experience. Many international clients are surprised by the cost of patent ligation in the United States. The high cost is unfortunate, but we try to manage the cost by creating strategies that focus on the most important issues in the case rather than fighting everything. Evaluating the cost-benefit of the litigation strategy is the best way to manage the client’s resources.
Nearly halfway through the Biden administration, how has its outlook on patents developed compared to previous administrations?
We have seen several positive signals from the Biden administration, but there is always hope for more action. The appointment of a USPTO director who has real-world experience with intellectual property was an important step. The Biden administration has also nominated judges who will strengthen the enforcement of the patent laws. Overall, the administration has helped the patent system and we are optimistic to see continued emphasis in the coming years.
You work with clients from a diverse array of industries, including chemicals, electronics, medical devices, pharmaceutical, software and computers and telecommunications. How do you tailor your approach depending on the type of client that you are dealing with?
Each client requires a tailored approach, but the key to success in any technical area is to approach each case as a partner with the client. The litigation strategy must consider the client’s business goals and economic realities. Winning a case in the courtroom is not a true victory if it does not address the underlying business issues driving the litigation. I also try to rely on the client’s technical expertise and supplement it with attorneys who hold advanced degrees in the relevant field. Finally, I include attorneys who are fluent in the client’s native language to ensure that we have seamless communication.
What trends do you see emerging in FRAND licensing and how can companies best prepare themselves to take advantage of these?
FRAND litigation will continue to be significant in the coming years. I find that it is important for companies to participate in the standards-setting process and keep informed on how implementing the standards can impact their products. This awareness can enable early negotiation of patent issues, which is often the most likely way to resolve disputes before reaching the point of major litigation.
Managing Partner, Beijing Representative Office
Head of China Intellectual Property and Litigation
Timothy Bickham is a first-chair litigator who represents companies in US patent infringement and trade secret cases. He focuses on competitor litigation and ‘bet the company’ cases. Mr Bickham litigates cases in district courts throughout the United States and in the US International Trade Commission. From offices in Beijing and Washington, DC, he continues his legal practice while deepening his connections with companies, universities and other IP stakeholders in China.