Jesse.

Patent cases, in federal district courts around the country, for clients from near-startups to some of the world's most valuable technology companies. For the company being accused as readily as for the company doing the accusing, which is worth saying out loud, because the two sides argue in the same language and most people only ever hear one half of it.

The first years of the career were spent at the other end of the same document, writing patent applications and answering the patent office. Hundreds of them, drafted or supervised. That is the reason a case here starts with the written record rather than with the accusation. Someone who has spent years narrowing a claim to get an application allowed knows exactly what that narrowing costs the owner a decade later, when the same words have to be stretched over somebody else's product.

Nine of those months were spent inside a client, on secondment at T-Mobile as IP counsel. Building a portfolio, managing outside counsel, sitting with inventors, and deciding what was worth doing offensively and defensively against a budget that did not move. Litigation reads differently afterwards. Every invoice has a person on the other end of it who has to explain the number to somebody else.

Where the technology usually sits

During my career as an in-house patent counsel, having a trusted relationship with outside counsel was essential. For over 15 years, I worked with Jesse on various patent prosecution and patent litigation matters. Jesse's legal advice is top-notch and his case management skills are excellent. He provides high quality and timely legal services at a reasonable cost.

Steven Funk Retired in-house patent counsel. Client. Written on LinkedIn, September 2021. Verify Steven Funk's recommendation on LinkedIn
You
Does all of this end up in front of a jury?
Jesse

A good deal of it never sees a courtroom at all. Multiple inter partes reviews at the Patent Trial and Appeal Board, five of them argued in person, along with covered business method proceedings and ex parte reexaminations. Those are patent fights held in front of patent judges, on a different clock and a different budget than a district court case.

Above all of it sits the Federal Circuit, where the briefing is the work and the argument is a short stretch of interruption. The argument in Buckman Laboratories against Solenis is in that court's public recordings, if listening to one is useful.

You
Who have you stood in front of?
Jesse

District judges vary more than people outside the system expect. One will decide the meaning of the claims early and let everything else fall out of it. Another will hold the line on schedule above all else. Knowing which room you are in is not a detail.

Arguments made before Judges Lucy Koh, Rodney Gilstrap, Vince Chhabria, Leonie Brinkema, Jon McCalla, Catherine C. Blake, Mary Pat Thynge, Susan van Keulen, Jan DuBois, Philip Gutierrez and B. Lynn Winmill.

You
Is it only patents?
Jesse
Trademark and copyright matters as well, including proceedings before the Trademark Trial and Appeal Board, and the transactional side of intellectual property: licenses, assignments, and the diligence that gets done before somebody signs. A patent portfolio is an asset before it is ever a dispute, and the two conversations are closer together than they look.
You
If we called tomorrow, where would you start with ours?
Jesse
With the numbered claims at the end of the patent, and then the whole file the patent office kept while it was being argued into existence. After that, the product as it was actually built rather than as the marketing describes it. Those two readings, side by side, decide most of what happens next.