You founded Avantech Law in 2021. What led you to start your own firm and what advice do you have for anyone considering doing the same?
Law firms have operated under the same model since the 1960s. While highly profitable, the industry rewards maximisation of hours billed over technology investments and process refinements that generate the same high-quality work at significantly lower costs, which can then be passed onto clients. The pandemic provided an opportunity to accelerate change across the industry, proving that even basic technology can generate real value for clients and that a significant portion of the overhead embedded in the traditional model is unnecessary.
My advice to those interested in launching a new firm is to be bold. Abandon those aspects of the traditional model that fail to promote client interests and lead to lawyer burnout and general dissatisfaction. New firms provide a clean slate, so use it to integrate the wide range of available software that reduces the time lawyers spend on low-value tasks. Consider alternative staffing structures that use specialised, cost-effective talent to perform some of the work traditionally done by lawyers, which will ultimately create better value for clients. Lawyers should focus on high-value activities that move the needle. Finally, offer alternative fee structures that minimise reliance on ‘the billable hour’ and provide clients with more flexibility and certainty around their legal spend.
The landscape for patent eligibility in the United States continues to lack certainty – what action should rights holders be taking to put themselves on a more secure footing?
Litigation over patent eligibility has led to many confusing and sometimes conflicting decisions. Although patent owners cannot eliminate uncertainty, they can develop arguments before filing suit that can improve the odds of heading off an eligibility challenge.
First, patent owners should be ready to characterise claims in a way that captures the invention and demonstrates that they are not directed to ineligible subject matter. Challengers will invariably seek to characterise claims in a highly abstract manner, sometimes in only a few words. Patent owners should also identify elements of infringed dependent claims that provide unique arguments for patentability. A motion is much easier for a challenger when it can lump every claim together in a single argument.
In some cases, characterisation of the claim for eligibility purposes can turn on the meaning of certain claim limitations. Before filing suit, patent owners should identify claim construction disputes that bear on the eligibility inquiry, and arguments as to why those limitations must be resolved before the court can rule on eligibility. Preparing these arguments before filing ensures that constructions are consistent with those advanced later in the case to address infringement and alleged prior art.
Patent owners should also prepare arguments to explain how the invention solved existing problems in the art. A meaningful advance over prior art can be persuasive in the eligibility inquiry. Before filing, patent owners should develop arguments (and evidence) that demonstrate the claim is not directed to subject matter that is well understood, routine or conventional. Courts have been known to consider subject matter routine and conventional in the absence of any contrary arguments or evidence.
Patent owners can also take steps outside of litigation to put themselves on a more secure footing with respect to eligibility. Where possible, they should seek continuation applications to build a diverse set of claims. It is much more difficult to prevail on an eligibility challenge when the court must address several distinct claim sets. For new inventions, patent applications should include robust disclosure for key aspects of the invention that identifies specific structures and avoids broad generalisations that might fuel patent challenges.
What are some of the biggest pressures your clients are under and how are you helping them face these?
The current economic environment is presenting a significant challenge for our clients. The cost of external legal services has drastically increased and shows no sign of letting up. We have helped by offering a variety of alternative pricing structures that focus on predictability and value. We are also investing in our innovative platform, which integrates the latest legal technology to promote efficiencies, offers unique staffing to increase value and puts top-notch representation within the reach of most legal budgets.
You have successfully handled cases in district courts throughout the United States. What has been the secret to your success?
The roadmap to a successful litigation outcome starts with a deep dive into the case at the outset. Doing so allows your team to start developing facts and legal positions before your opponent even appreciates their importance. Skipping this step may save money, but learning the case as you go is not a winning strategy.
After that, it is critical to understand the endgame and to keep it in focus throughout. Much of what happens during litigation is a distraction from the real issues that will impact the outcome. One way to maintain focus is to develop a well-defined litigation plan that identifies the evidence needed to prove your claims, the strategy to obtain that evidence, and a clear schedule that your legal team should follow to avoid bottlenecks that create an unnecessary (and expensive) team expansion to meet deadlines.
One key to success is working with specialised teams with varied skills and experience. The traditional approach of loading a team with junior lawyers usually backfires because they lack the necessary experience to win high-stakes cases, so are not an efficient use of ever-shrinking legal budgets. My most successful teams have included senior lawyers and specialists armed with the latest legal technology, who can do much of the low-value work traditionally performed by junior lawyers.
How would you characterise the SEP environment in the United States at present?
The SEP environment in the United States remains in a state of uncertainty. The Biden Administration recently scrapped a Trump-era policy aimed at strengthening SEPs, but then also withdrew its own proposal on the issue. Related work by the administration continues, but we do not expect to receive any executive or legislative guidance in the near term.
In the meantime, the judicial system continues to grapple with the correct approach for valuing licences to SEPs and whether (and to what extent) antitrust liability exists related to an SEP owner’s licensing practices. Over time, I expect patent litigation both in the United States and globally to bring some clarity to the extremely complex and hotly contested issue of how to determine an appropriate royalty for SEPs. Each case is closely monitored and serves as a laboratory to construct SEP licensing theories that lead to a fair and reasonable royalty rate. From this work, I believe that the industry will eventually reach a consensus around the most reliable and equitable methods of valuing SEPs.
What are the top considerations for US patent owners engaging in inter partes review proceedings?
The early days of inter partes review proceedings were difficult for patent owners. The PTAB was even labelled the ‘death squad’ due to the large percentage of patents invalidated as a result of the process. However, recently the pendulum has swung to a more neutral position for US patent owners engaged in inter partes review proceedings.
Back when patents rarely survived the process and inter partes review estoppel in litigation was construed narrowly, the challenger effectively received two bites at the apple: one before the PTAB and the other in litigation. Recently, courts have estopped challengers from asserting any invalidity grounds based on materials that could have been presented to the PTAB. In one of my own cases, I was able to extend estoppel to a prior art system, which is not available in an inter partes review proceeding, where that system was described in a printed publication. Patent owners can now take advantage of a less expensive forum to test the validity of their patents knowing that they could have a significant advantage at trial when a challenger lacks an invalidity defence.
Another important consideration for patent owners relates to whether it should reserve arguments on the merits until after inter partes review institution. The PTAB will prevent challengers from introducing new evidence or arguments after institution, whereas in litigation, often nothing can prevent a challenger from adding evidence or arguments in response to the patent owner, especially when litigation is at an early stage. Thus, the inter partes review setting may be a better venue for an invalidity fight and estoppel can prevent a challenger from ever raising those counterarguments.
How do you expect the US market in IP transactions to evolve over the next few years?
With persistent inflation and a looming economic downturn, the market for IP transactions will see significant change over the next few years. With increasing interest rates and a reduction in available capital, I expect that IP transactions and patent litigation (which can drive transactions) will fall overall. At the same time, activity in certain areas should increase. For example, acquisitions and enforcement activities backed by litigation funders should remain steady or even increase slightly. In addition, companies with strong balance sheets will take advantage of the downturn by scooping up distressed companies’ assets. Given the long-term importance of intellectual property, most companies will continue filing patent applications on their most critical innovations, and related transactions should remain steady.
What would you say makes a world-class IP strategy?
A world-class strategy first requires an organisation to recognise the importance and immediate value provided by IP protection, both offensively and defensively. Those that do not leverage intellectual property in their business plans and understand its significance in protecting future revenue streams and gaining access to technology through cross-licensing miss a critical opportunity to create value.
Organisations must commit to investing in high-quality IP protection. This starts with a thorough understanding of the global market for the technology and existing IP landscape. For patents, experienced counsel is key – counsel that is capable of navigating patent eligibility issues and avoiding the many pitfalls that can render a patent impossible to enforce in litigation. Patents are intensely scrutinised by the investment community, potential licensees and litigants alike. Patent quality matters – now more than ever. If budget constraints limit the optimal strategy, choose high-quality patents in a few important jurisdictions over greater worldwide coverage. Be sure to budget for continuation applications to address unexpected changes in the market and provide flexibility if the patents are challenged by a third party.
Another key aspect of a world-class IP strategy is paying careful attention to ownership and licence rights. Clarity of IP ownership requires formalised agreements with founders, employees, suppliers and strategic partners. Involve experienced counsel to assist with important documents such as licence, assignment, joint venture and co-development agreements to clearly establish who owns and has the right to practise the intellectual property.
Finally, create an IP enforcement plan, should this become necessary. Experienced counsel can assess potential legal outcomes so you can determine whether they satisfy business objectives. Enforcement actions are expensive and uncertain. To mitigate risk, consider legal counsel or funders who will participate by sharing any proceeds from a successful outcome.
What effect – if any – are you seeing the climate crisis have on the innovation landscape?
Developing the innovation necessary to meet long-term emission goals will require a pace and scale not seen since World War II. While continued work in carbon re/capture, energy storage and transportation will be important, a focus on new technologies is also essential. The landscape of these new technologies gaining interest in the investment community and IP space include advances in green infrastructure, materials (eg, graphene), food waste reduction and analytics to assess pollution and land management.
William Woodford is an IP lawyer with 20 years’ experience handling high-stakes litigation. He has also led numerous appeals, including the landmark case Halo Electronics. Over the past two decades, Mr Woodford has analysed and valued thousands of patents for potential enforcement, commercialisation and sale. He has also worked with numerous clients on the development of worldwide patent portfolios to protect mission-critical technology.