What do you enjoy most about your work, and why?
Technology-based litigation in the United States tends to involve some of the most complicated legal issues and some of the most talented and capable attorneys. Patent matters in particular are often ‘bet-the-company’ cases for which no expense is too great, and where no issue is inconsequential. I enjoy the challenge of confronting some of the country’s biggest companies and best litigators, finding ways to protect my clients’ valuable innovations and vindicate their patent rights.
I also enjoy leveraging technology to deliver more cost-efficient results for clients. My teams and I have developed a host of tools that allow us to move faster and at lower costs than our adversaries and competition. While clients appreciate our efficiency, our effective use of technology better positions us to outmanoeuvre the other side and win the case.
As one of Texas’s standout patent litigators, you have worked on a wide range of technology-oriented cases, from smartphones to virtual reality. How are you able to synthesise information across such a broad range of technology and litigate cases involving such diverse technology?
At root, I am a generalist and a translator. My educational background is in both electrical and computer engineering, disciplines that helped to hone my critical thinking skills and required me to comprehend a diverse range of technical areas. The more I learned, the more I developed my skills for drawing on one area of technology in order to understand another. My work as a trial attorney allows me to put this expertise to use in the courtroom, no matter what is at issue. I enjoy taking complex subjects and explaining them in ways that any juror can understand, but without superficially glossing over the intricate technology that is often involved in our cases.
A few big trade secret cases have made headlines around the world. What considerations should companies contemplating trade secret litigation bear in mind?
Trade secret litigation is full of potential traps for unwary litigants. Those dangers are ever-present; from strategically defining and disclosing the trade secrets at issue, to protecting their secrecy throughout the litigation, to proving misappropriation. Each of these hazards warrants significant consideration by litigants, preferably at the outset. However, the biggest issue I see is that trade secrets cases tend to turn on the story of misappropriation or theft. Such a narrative is often the focus of the jury’s attention and would likely drive the outcome. Developing a compelling case for theft should be the focus of the plaintiff’s initial investigation and pre-filing strategy, while rebutting it should be the central focus of the defendant’s strategy.
What, for you, are the key elements of a world-class IP portfolio?
The value of an IP portfolio depends on quality, not quantity. A world-class portfolio should include strategic assets that have been the focus of work to ensure that they are substantively relevant for innovation protection, and tactically curated to stand-up in adversarial proceedings. On top of that, I prefer to see a diverse set of assets in clients’ portfolios, such as utility and design patents, and pending applications for continued refinement of claims and intellectual property. Such a portfolio simultaneously represents a strategic threat to competitors and positions the owner to drive advantageous licensing or cross-licensing deals.
Shareholder, Business Litigation
Michael Karson is an experienced trial lawyer. He helps his clients to monetise their portfolios and protect their rights in federal courts and before the US International Trade Commission.
Mr Karson’s preparation, attention to detail and courtroom experience allows him to skillfully litigate for successful outcomes and to argue at Markman hearings and at trial.
Winstead’s unique and nimble model reduces client conflicts, affording Mr Karson and his team the opportunity to develop innovative fee arrangements.