Managing An IP Portfolio In Difficult Times

Thursday, January 1, 2009 - 01:00

Editor: Lisa, please review for us the growth of the firm's overall IP practice and how the Silicon Valley office fits into that picture. Describe your role and your background.

Kobialka: King & Spalding has had a strong and broad IP practice, both in litigation and transactional IP. In the patent arena, the firm has extensive IP expertise for clients involved in biotechnology and pharmaceuticals, as well as in the electrical, computer and mechanical arts. Firmwide, we do all kinds of IP litigation, and our transactional IP practice includes patent and trademark prosecution and counseling. My practice consists primarily of patent litigation, and includes trade secret and trademark litigation.

With the recent addition of the Silicon Valley and San Francisco offices, we have added significantly to our bio/pharma patent prosecution practice and to the firm's IP litigation and trial work done across multiple technical disciplines. We have 24 IP professionals in California alone.

I joined King & Spalding in February 2008 when we opened the Silicon Valley office. About a month later, we opened the San Francisco office. Paul Andre and I were two partners who moved laterally to join the firm, and we assisted in opening the Silicon Valley office. We brought in a team of IP attorneys that we'd worked with previously who wanted to continue practicing together.

The firm's practice group leader for IP, Courtland Reichman, will be in California to grow these offices. A number of other partners in other practice groups have moved to California. In Silicon Valley, we have a corporate partner from Atlanta, who works with emerging growth companies. Several lateral partners have also joined us in other practice areas, such as commercial litigation.

In entering the California market, the firm has been very strategic about how to have a successful presence in this competitive market. We have hired local practitioners as well as had partners who are culture carriers moving from other offices. It is not a situation where you only have lateral partners with no connection to or previous history with the firm.

Editor: Can you call on other people throughout the firm if you need specialized help?

Kobialka: Yes. Because King & Spalding is a general practice firm, it has expertise in many key areas. For my clients, it's been incredibly helpful to have the legal excellence in so many critical areas. They have found that we can support all of their legal needs, which has significantly expanded the relationship with those clients. For example, King & Spalding has one of the pre-eminent FDA practices. That expertise has been incredibly helpful for our bio/pharma clients.

Editor: Are many foreign companies coming into the area as well?

Kobialka: Many foreign companies have offices in the Bay Area. Since they are focused on cutting-edge technology, they welcome the deep talent pool and the opportunities to get funding that they can find in the area. I represent a company founded in Israel, but which subsequently opened offices here to take advantage of the business opportunities and tap into the brilliant talent pool found in the Bay Area.

Editor: In looking at the types of cases you have handled, you've covered a lot of different technologies.

Kobialka: We are fortunate to have a diversity of professionals at the firm with a variety of technical backgrounds and real industry expertise. They are quite specialized and have a passion for their area of technology - whether it's in the semiconductor area or security software or recombinant DNA technology. They are constantly attending the trade conferences and keeping up with new technological developments in their respective areas. Many of our attorneys had significant industry experience before deciding to go to law school. As a result, being able to stay on top of technological developments isn't so much a challenge as it is just something we enjoy doing. Working with such a talented team enables me to apply my litigation skills to a wide spectrum of technologies. There are several areas that I'm interested in and that I try to stay on top of as the technology develops, but it's not limited to a specific segment.

Editor: How is the current economic and financial crisis affecting Silicon Valley? What kinds of IP issues is it generating?

Kobialka: We are starting to see a trickle-down effect for technology companies. Funding for research and development is more limited and focused. We are finding that much greater demands are being placed on companies, including startup companies, to be strategic about their business model and to adhere to their budgets. They are expected to clearly articulate and focus on their business strategy and revenue model. At the same time, when a company has what it feels is a valuable innovation, we are seeing companies being aggressive in seeking a patent or some other form of IP protection.

One of the hot areas that many assumed or predicted would probably be untouched by the economic and financial crisis was clean energy and green energy technology projects. Yet there have been reputable reports that one highly visible solar energy company has cancelled a planned one-megawatt solar facility in California for lack of financing. We're starting to see those types of things happening in industries and technologies that were thought to be immune to an economic crisis.

We also anticipate an uptick in IP litigation. There are reports that general counsel expect to see more litigation. Historically, when the economy has been down, companies have often looked to their IP to determine if they can monetize the portfolios. It could involve selling or licensing their IP. They may also decide to use their IP to seek an injunction against competitors who they believe are infringing their patented technology.

Editor: What issues relating to IP do you expect will be brought before the new Congress?

Kobialka: It is expected that a new patent reform bill will be introduced in the new Congress. Exactly what that is going to look like and how it will compare to previous bills - which have not been successful - is not completely clear. In the past, there have been coalitions formed to support such proposed legislation. There is the Coalition for Patent Fairness that includes a number of companies - Apple, Microsoft, and Google. They championed a patent reform bill previously, and so they may try to have some new proposed legislation introduced again.

The discussion of issues to be covered by the proposed bill in the past has been incredibly broad. They include provisions regarding how courts will handle patent disputes to damages issues. A past patent reform bill proposed placing limits on where a patent action can be filed. Today, a plaintiff has a fair bit of latitude regarding where they can bring a patent lawsuit. Some companies have felt that they have been sued in less favorable districts where they did not have much connection, as opposed to venues where they are based or where they have local offices. It is unclear whether this is going to be part of any proposed bill.

There have also been discussions in the past about harmonizing our patent prosecution system with that of Europe. They have included having opposition proceedings, like they have before the European Patent Office. An opposition proceeding permits a third party to challenge a patent issued by the European Patent Office within a specified time frame. The United States Patent Office presently does not have such proceedings available.

Editor: What general advice can you give to corporate counsel concerned about the management and protection of IP assets?

Kobialka: Identifying and protecting your key technologies is incredibly important, especially in today's economy. Often companies will have prosecuted patents covering a broad range of technologies, even though they are no longer pursuing business interests in those areas. While you can continue to pursue those patents, it can be very costly. Being strategic about what you want and need your IP portfolio to look like is important. This includes ensuring that, as your company branches out into new areas, it is appropriately protecting the IP it has created.

One of the best things you can do is work with your IP counsel on a strategic plan to help manage and protect your IP, while considering whether your company is using its IP to its best advantage. In developing this plan, consider what the company wants to do with your IP and how to protect it. You may wish to license your IP to generate royalty payments. Alternatively, you may wish to sell or to contribute it to a business or joint venture in which you have an interest. If you're going into a new business venture, having a strong IP portfolio can be immensely important to potential investors and partners. A strong IP portfolio can open doors to different opportunities that might not have been otherwise available to your company. As your company is inventing technology, determining the best way to protect it will include cost considerations and what type of technology is involved. For example, there can be instances where trade secret protection is a better option for a company than seeking patent protection. These are the kinds of things that should be considered in developing a strategic plan so the company has a clear overview and focused perspective of what IP you have, whether it is adequately protected and how it fits strategically in your company's future plans.

Editor: Does that get complicated with a global company?

Kobialka: I don't think so, as long as the company has a clear understanding about where it wants to be and how it will get there. There will be other issues to consider, such as tax implications. Working closely with your IP counsel to identify how to protect your IP and where you want to protect your IP is a good first step. Your IP counsel will be able to help navigate the countries where IP protection is available and discuss how various countries handle IP enforcement, so you can assess how to get the most value for your investment in IP.

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