March 31, 2016
Protecting Clients' Assets: Fish & Richardson
Best Lawyers: New England 2014
This article first appeared in The Best Lawyers: New England 2014, and the full article is available here.
If numbers alone told the whole story, then everything anyone could possibly want to know about the Boston-based IP juggernaut of Fish & Richardson could be summed up in a few key statistics. Here's a good start: 220. That's how many cases the firm's litigation department handled in 2012 making it the busiest firm in the country for patent litigation, says Corporate Counsel magazine and is a figure quickly brought into perspective against Fish's closest competitor's caseload, which clocks in at 95. Then there's this: more than 300 of the firm's attorneys out of 362 have advanced degrees in technical and scientific disciplines, and some 75 hold PhDs. Its litigators routinely win millions at trial and its seasoned patent prosecutors helped clients get more than 3,100 patents issued in 2013. That's a truly impressive number, eclipsed only by this small tidbit: Fish issued 1,100 patents in March of this year alone.
But these facts and figures which barely scratch the surface of this firm's true capabilities don't exist in a vacuum. The people that make all this happen are on the ground and in the trenches every day, and firm president and CEO Peter Devlin (himself an electrical and computer engineer) says there's a unifying goal among them. "We help our clients, both individuals and companies, protect their technology and use it to maintain their competitive edge, whether it's issuing patents, enforcing those patents against infringers or defending our clients against allegations of infringement by others," says Devlin, who assumed the firm's helm in 2000 and has since ushered in a period of substantial growth, expanding both domestically and internationally under his management. "In this day and age, it's all about the intellectual assets of corporate America, and we fight on all sides."
Where Fish really hits the sweet spot, says principal Frank Scherkenbach, a trial lawyer who joined Fish's Silicon Valley office in 1993 before moving to Boston 13 years ago, is at the intersection of its patent prosecution and litigation practices. "Historically speaking, prosecutors were prosecutors and litigators were litigators and never the twain shall meet," says Scherkenbach, who recently led a team of Fish litigators in securing $105 million in damages in federal court for longtime client Power Integrations against Fairchild Semiconductor, which a jury found willfully infringed the company's patents. "But we have prosecutors on our litigation teams because they have critical technical expertise and knowledge. It's a collaborative approach to solving clients' needs and is a distinguishing characteristic for us."
Prosecutors and litigators also work together closely on inter partes reviews (IPRs), which Scherkenbach describes as a form of administrative patent litigation that has arisen since the recent introduction of the America Invents Act (AIA). "We have the most active IPR practice in the country," Scherkenbach says. "Congress has been making the interplay between litigation and Patent Office proceedings more and more critical. It's very common for there to be parallel proceedings in district court and in the Patent Office involving the same patents."
Principal David Feigenbaum, one of the firm's most senior prosecutors, says a key goal of the AIA was to introduce post-grant tools that allow for the testing of the validity and appropriateness of the patents that the U.S. Patent and Trademark Office issued without full blown litigation. "A big argument in favor of the AIA is that the Patent Office sometimes issues patents that maybe it shouldn't," Feigenbaum says. "To some extent the AIA will make it harder to get patents." But it's hardly surprising that Fish is on the cutting edge of IPR proceedings, and is able to achieve complete victories as it recently did for client Micron Technology against three University of Illinois semiconductor patents. As a result of Fish's intervention, the firm said that the Patent Trial and Appeal Board determined each claim of the University's semiconductor patents was unpatentable.
There's no small amount of finesse involved as a prosecutor in helping clients from computer engineers to medical device innovators and drug makers (the latter who operate under a series of constraints dictated by the Hatch-Waxman Act) build and protect their patent portfolios. "How do you persuade the Patent Office that your client's invention is a broad idea that deserves broad protection?" Feigenbaum says.
Another area of expertise (among many) for the firm is in copyright litigation, says Devlin, who notes that one of Fish's cases was recently heard by the Supreme Court (decision expected by June). "It's a cutting edge copyright issue with broad implications," he says. "Our client offers a remotely located antenna and DVR technology that allows the consumer to record and view broadcast television on mobile devices; it has been sued by the major networks, including NBC and Fox." Then there's trademark prosecution. "We help companies pick new marks and get new trademarks registered," says principal Tim French, the managing partner of the firm's Boston office and a patent and trademark prosecutor who specializes in licensing, opposition, and acquisitions.
For French and the rest of the attorneys at the firm, the thrill and satisfaction in IP law comes with helping clients see their "eureka moments" inch ever closer to realization. "We get those kinds of calls three or four times a day," French says. "Back in the early 1900s there was an idea that everything had been invented already. As a firm we're always on the razor edge of what's new." As it has been since the firm which helped quixotic American inventors like Alexander Graham Bell and the Wright brothers obtain patents was founded in 1878 by Fred Fish, himself a visionary.
"He was Mr. Patent in the late 19th century," says Feigenbaum. "The tone he set at the firm's founding, of being a great part of the culture in the city that he loved, is something that's carried through to this day."
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