Munck Wilson Mandala LLP
What led you to pursue a career in IP law?
My formal training is in computer science, electrical engineering and mathematics. I had always wanted to be a police officer like my father, but he had other plans for me. I saw the law as a way to please my dad and still get the chance to go after bad guys. Because of my computer science, electrical engineering and mathematics background, IP law was a natural fit for me.
What aspect of your work do you enjoy the most?
Through my work, I can help people and make a difference in their lives. Some of our clients are garage start-ups or inventors with big ideas. Others are Fortune 50 companies with massive patent portfolios. All of them have varying legal challenges, whether it be patent infringement, stolen trade secrets or general patent portfolio management. I like how our team combines efforts, to assess the client’s needs and find solutions. We have a remarkable combination of skilled trial lawyers and an IP practice with more than 40 registered patent attorneys. Our attorneys have more than 900 years of combined technical and IP law experience. When they collaborate, there is nothing more powerful. It is not uncommon for us to go to trial against much larger firms and beat them. This makes me proud because it validates what I have always believed – that quality is much more important than quantity.
How do you stay abreast of the latest technological developments?
We are a tech-focused law firm so many of our clients are in the industries where the latest technological developments are happening. We are fortunate to experience a great deal of cutting-edge technology in real time just doing our daily jobs. Many years ago, I started building a technology skills matrix to show clients the wide range of industries that we represent, including semiconductors, telecommunications, software, consumer electronics, aerospace and defence, and financial technology. The matrix is constantly updated as we learn and add new skills, and as our clients develop new technology. We also have a dynamic group of young attorneys who are extremely tech savvy and remain up to date with various technologies such as 5G and AI. Combine this with the regions in which we have offices – Dallas, Austin and Los Angeles – and we are well placed in all the tech hubs in the United States that continue to make the top lists of cities with the most tech-focused jobs, opportunities and growth.
What are the key characteristics of a world-class patent litigator?
My answer applies to all attorneys, not just patent litigators. What makes an attorney world-class is client service. People remember those that take the time to understand them, their business and their business’s legal needs, and those who formulate actionable suggestions that bring value.
As a law firm leader, I have emphasised the value of good service as a fundamental characteristic of any successful lawyer. This service mindset is a result of how I was raised. I grew up on Long Island, my father was a NY street cop and my mother an office manager. My father always emphasised the importance of good service and taking pride in what you deliver.
Our society respects the best customer/client service, from our e-commerce experience to the server at a restaurant and how we are treated at the car dealership. We are always seeking and demanding good service and in law, clients have the right to expect the highest level of service from their attorneys.
Good service means estimating a fair cost, delivering on time and standing behind your work. Most importantly, it means that the attorney understands the client. This takes instinct. It takes asking questions and knowing what is important to the client and that this will vary for each client.
Finding solutions and bringing value is what makes a good attorney worth the cost and world class.
Which technologies are currently seeing the biggest growth in US patent activity?
In the United States, the dominant technologies receiving patents are in aerospace, communications, computers, pharmaceuticals, medical devices, semiconductors and motor vehicles and parts. Of these, the technologies with the most growth are anything related to AI, medical devices and 5G. I expect to see more patents issued in healthcare, transportation, education and financial services as covid-19 and its effects on our society take hold. There will likely be an influx of patents related to kiosks, apps and AI entities to help us obtain the products or services that we need while minimising human contact.
What are the biggest challenges that US start-ups face in enforcing their IP rights?
There are many vulnerable areas in starting a business, from interacting with investors to choosing a trademark and determining what to patent. Start-ups have confidential information and as they bring in investors and developers, they must ensure that this information is protected. Many people involved in a start-up come and go, including investors, developers and employees. Start-ups do not always take the critical steps necessary to protect their IP rights from the beginning so when an investor, developer or former employee infringes on their intellectual property, they may not be prepared with legally binding documents such as non-disclosure agreements (NDAs) or non-compete agreements that could help them to enforce their IP rights.
If a start-up brings in a qualified IP attorney from the beginning to ensure that NDAs and employee contracts are reviewed and in order, and that IP assets are identified, documented and protected, it has a much better chance of enforcing its IP rights.
What would you say are the key considerations for parties defending against third-party infringement claims?
If a client is defending against a third-party infringement claim, we first want to prove that it is compliant. This is accomplished through data, documents and any other evidence that demonstrates the company’s compliance. If this approach is not going to work in our defence strategy, then we look at the patent to determine whether it is valid and enforceable or potentially invalid. Other considerations include negotiating licensing fees or possibly terminating the sales and production of the alleged infringed product.
How have client demands changed over the course of your career, and how has your practice adapted to this?
The 1990s and early 2000s saw significant growth and clients were comfortable with billable hours. Many clients had less pressure on them to watch legal costs so they would hire larger firms and pay high legal fees. Firms grew larger, partners made more money and legal fees increased annually.
After the 2008 economic downturn, clients became more cost-conscious. In-house legal departments were pressured to economise. This began the era of alternative fee arrangements and law firms had to re-evaluate how they delivered legal services. Clients began to assess law firms on skills, costs and efficiencies.
Today, as technology continues to advance, clients have put more demands on law firms to use technology to streamline legal services and cut costs. Client files are now electronic, and more meetings are conducted through email and teleconferencing. Clients are demanding innovation, intelligent market analysis and cost-effective service, with more emphasis on delivering accurate and timely documents and using data to predict risks and outcomes. Because many records and files have become electronic, clients are now more focused on physical and electronic security.
Munck Wilson Mandala LLP has continuously looked for ways to be more efficient and cost-effective to service users while bringing them value as business advisers. For example, the firm employed a new docketing system and the technology has helped us to streamline our high volume of IP dockets. We have clients that rely on us for significant volumes of patents and managing their portfolios has become more error-free and efficient through this new technology. We are also embracing virtual office technologies so that our attorneys and paralegals can work securely from any location with wireless connectivity.
How can US tech companies best protect themselves against patent trolls?
Prevention comes first. Tech companies should always conduct due diligence; if they have an idea for a product or service, they should bring in an experienced IP attorney to help with the research.
They should also take care to protect their documents and intellectual property. Anything online can be trolled and if rights holders do not have maximum protection, hackers can snoop around and find their valuable intellectual property. A general rule for a tech company is to not place anything on its public website that would be of interest to a troll.
Lastly, tech companies should stay connected with one another and network with other tech companies to keep informed of their experiences. Staying connected to similar businesses will help them to learn and grow.
How do you expect the US technology transfer market to evolve in the next five years?
I do not see the technology transfer market changing profoundly over the next five years, but I do expect there to be more focus on AI and machine-learning technology developed for the healthcare industry. Data and advanced computing hold great promise for the medical sector. MRIs, for example, have been tested for accuracy using AI versus human analysis and AI is as precise, producing results at a much faster speed. There will be many instances of AI and machine-learning technology improving medical procedures and reducing costs and the risk of human error.
William A Munck
William A Munck is managing partner at Munck Wilson Mandala, a technology-focused law firm headquartered in Dallas with offices in Austin and Marshall, Texas and Los Angeles, California. Mr Munck has more than 28 years of experience, leading a team of attorneys focused on patent, trade secret, trademark and copyright procurement, IP and technology litigation and licensing. In addition to representing well-known names in the high-tech and defence industries, Mr Munck represents start-ups and privately held companies in all areas of technology and business.
Click here to see his IAM Patent 1000 2020 profile.