Venable's intellectual property (IP) litigators extend across our offices, working together to provide comprehensive solutions to IP disputes. In this Q&A, partners Adam Kelly and Steve Lubezny talk about how the firm's Chicago-based litigators bolster Venable's nationwide IP litigation practice. They also discussed the inherent challenges of IP disputes, current trends in IP litigation, and their experiences joining Venable as lateral partners.
What are the top strengths of the IP Litigation Group in Chicago?
Adam: The depth of our practice and experience across technologies and different types of legal matters makes us unique. Although there are industry practice groups that focus only on certain technologies, between Steve and me, as well as the other folks in the Chicago office, we have counseled clients across countless industries involving a variety of technologies, both in and outside of court. We typically counsel clients on a range of IP issues across several industries involving copyrights, patents, trademarks, and trade secrets, including the transaction issues that flow from those intangible assets.
Steve: I would also point to our vast amount of trial experience. Because of the cost and complexity of patent cases, most patent litigation never makes it to trial. Indeed, there are many seasoned IP lawyers who don't see a trial for decades at a time, if at all. This is an area where I believe our depth of experience truly sets us apart from other practitioners. Between Adam and me, we have successfully tried about a half-dozen cases in just the past five years alone. So we understand what it takes to win at trial, what really matters for judges and juries, and how to put our clients in the best position from the outset of a case.
What are some challenges unique to IP litigation today?
Steve: Two things come to mind. First, these are cases that can often impact the heart of a company's business. For example, a patent infringement matter, especially with smaller companies, can become a "bet-the-farm" issue for your client. So, the stakes in those infringement cases can be very high. Second, unlike other types of litigation, patent cases are often litigated, sometimes simultaneously, in multiple venues, including federal district courts, the International Trade Commission, and the Patent Board of Appeals. Each of the jurisdictions has its own rules, burdens, and remedies. And clients need to be fully apprised of their options.
Adam: There are several other unique challenges. A thoughtful counsel will appreciate that IP issues may intersect with multiple disciplines. And those disciplines may involve a variety of domestic and international IP laws. So, it is critical to know the industry of your client and their adversaries, as well as the technology that is associated with the products or services within that industry. And you need a strong understanding of your client's business and the commercial environment in which they operate. As Steve said, the smaller to midsize clients may find themselves in an IP dispute that impacts the very heart of their business. If that client is unable to provide the products or the services they customarily offer, then their business may fold. So, given what's at stake, a trusted counselor has to appreciate the laws, the industry, the commerce, and the technology that are at issue.
Are you seeing any trends in IP litigation? Are specific issues popping up more often than they used to?
Adam: For litigation, I see an upward trend in the number of cases filed by non-practicing entities. These are entities that don't manufacture any of their own products but are simply in the business of asserting patents against others, or extorting license fees outside of court. I'm seeing an increased number of suits filed in the Eastern District of Texas, the Western District of Texas, and other jurisdictions. There are also more trade secret cases than in prior years. For my transactional practice, perhaps not surprisingly, I see an increased emphasis on trade secret protection for employees of companies, including ensuring trade secret protection in the employment agreements. With employees working remotely and having access to confidential information, more companies now have research and development departments to bolster their ability to protect trade secrets.
Steve: In addition to the increasing number of cases being brought by non-practicing entities, we are also starting to see more patentees seeking to avail themselves of the International Trade Commission (ITC). Patent litigation in the ITC is fast paced, costly, and high stakes. If a company is found to infringe in the ITC, then the ITC may bar all imports of the infringing product into the United States. This can be a huge detriment to a company, and so we have seen patent owners increasingly using the ITC as an additional lever to put pressure on litigants and defendants.
What was it like to join Venable as a lateral? And what drew you to Venable?
Adam: There are four standout reasons: the people, the platform, the IP capabilities, and the Chicago office. First, the people I've met and worked with at Venable have been terrific. Private practice can sometimes be demanding, given client and judicial deadlines. So you want to work with high-quality people, whether they are partners, associates, paralegals, or staff, or they work in marketing or business development. And high-quality people are what Venable has, from top to bottom. Second, there's a diversity of practice groups that complement each other and have strong practitioners. Third, there's also a strong bench of very experienced and diverse practitioners in intellectual property whom you can call on when needed. And fourth, the ability to join the relatively new Chicago office and have a role in helping lead and grow it is exciting. And I have the opportunity to work with great friends like Steve.
Steve: My experience is similar to Adam's. I found the practice and the IP depth at Venable very impressive. Venable has a deep bench of talented lawyers across a wide breadth of practice areas. On top of that, Venable is full of great, personable people whom I wanted to work with, and whom I thought our clients would love to work with.
The idea of helping to start a new office and being part of its growth and direction was also incredibly exciting. I joined the office in 2020, not long after it opened. At that time, our IP litigation group was only the second practice group to have joined in Chicago. Since then, this office has seen tremendous growth, and it has been exciting to be a part of it.
Learn more about Venable's Intellectual Property Litigation Practice.