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August 12, 2013 Articles

Just the Facts on Intellectual-Property Litigation

An IP attorney talks about recent trends and what changes can be expected in the field.

By Young Advocates Committee

An Interview with Tommy Wang


How did you choose to practice in intellectual-property (IP) litigation? Is there anything that or anyone who drew you into this area?
As a trained biochemist and having worked as a clinical researcher at the Department of Orthopaedic Surgery at the University of Pennsylvania, I have always had a fascination with science and technology. During the time I worked as a clinical researcher, a mentor of mine, Dr. Paul Lotke, MD (a pioneer orthopaedic surgeon) helped me understand the importance of medical technology and the role patents play in the field. As I discovered these advancements in medical technology, I became more interested in patents and the IP field in general. Eventually, I went to law school to pursue a career in IP law.

What is your favorite part of practicing in IP?
My favorite part of practicing IP law is the unique process I go through with each of my clients to secure their IP rights. I enjoy helping my clients develop and refine their innovative ideas by helping them navigate the legal systems in the United States and on the global stage. Every step of the way, from starting with an idea in its infancy to helping my clients launch their innovations onto the domestic and global markets, makes me feel a sense of pride and growth.

Name and describe one case that anyone who practices in IP litigation should know.
There are many significant cases that IP litigators should know about, such as KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Bilski v. Kappos, 132 S. Ct. 1289 (2010). However, I would like to elaborate on a recent seminal case, Mayo Collaborative Services v. Prometheus Laboratories, Inc., 130 S. Ct. 3218 (2012), which, in my opinion, sets a new level of legal precedence. The U.S. Supreme Court ruled that claims pertaining to the method of giving drugs to a patient, such as drug dosage, are not considered patentable. The key consideration that the Court faced was whether the process of administering the drug and adjusting the dosage according to metabolite levels in the body constituted an innovation or whether it was covered by the law of nature. The Court unanimously ruled in favor of the latter. The simple application of a law of nature is not enough to qualify for patentability. This fact will have far-reaching consequences for the medical field and future patent laws.

Describe a case on which you have worked that involved a lot of the key issues in IP litigation.
One recent case of mine involving the U.S. Customs and Border Protection, a branch of the U.S. Department of Homeland Security, addressed a number of key issues in IP litigation, including trademark infringement, trademark dilution, unfair competition, and counterfeiting. In this case, my client was accused of importing counterfeit items into the United States. The counterfeit items constituted trademark infringement of protected designs. The basis of trademark infringement in this case was trademark dilution, which applies to cases involving famous marks. The circulation of counterfeit designer items would potentially lead to consumer confusion, which would lead to unfair competition as the owner of the original mark would lose business over the sales of the counterfeit product. Eventually, the outcome of the case demonstrated the value of the negotiation and settlement processes, as we were able to mitigate more than half a million dollars’ fine in full using this tactic.

What is a common mistake people make when practicing IP litigation?
There are two common mistakes people make in IP litigation. The first one, which is relevant to litigation in general, is overconfidence. People sometimes hold such strong conviction in their cases that they lose sight of potential downfalls or fail to recognize the weaknesses in their arguments. Always strive to perfect your legal product and performance and to anticipate potential fallbacks in the process. The second common mistake—and this is more specific to IP litigation—is the over- or under-evaluation of the patent or trademark. People who believe their patent is worth millions will pursue a costly litigation process to gain rights to that patent. When the judgment comes out to be much less, however, the litigation can ultimately be a loss from an economic standpoint. Always perform a well-sounded cost-benefit analysis before pursuing litigation, which is costly, time consuming, and potentially emotionally draining.

What advice would you give to junior attorneys in IP litigation? Are there any key skills that new lawyers should develop to excel in IP litigation? 
Do not be afraid to make mistakes. Mistakes must be addressed early on in the process to correct without incurring bigger consequences. The consequences of mistakes will only be amplified the further you delve into the legal process.

For new IP attorneys, keep yourself updated with new trends in your field. With the enactment of new legislation like the America Invents Act (AIA), we do not know how the future of intellectual property will play out. Keeping well versed in the area will only mean that you will be ready to adapt to new situations and conflicts that arise. In addition, the world is getting smaller as the result of intellectual property and business developments, and it is important also to understand the global market and economy to understand the direction of your practice. Finally, for new lawyers practicing litigation, always be courteous to the opposing counsel and always put your client’s interest first.

What trends have you seen in IP litigation over the last several years?
In terms of IP trends, I will touch on three subjects: International Trade Commission (ITC) cases, patent-troll cases, and interference-proceeding cases. All of these cases are becoming more prevalent with the advancement of IP law and modern technology.

ITC cases will become more prevalent due to the ever-expanding development of technologies that will cross international borders to enter various markets. As more technologies are developed and imported to other countries, more cases of patent infringement will appear as the new imports may violate preexisting domestic patents.

Patent trolls, on the other hand, will hoard a set of patents and not use them. Their sole purpose is to sue those who may have similar patents to gain financial reward. Now that a first-to-file system is established, patent trolls can claim patent rights by filing first. They do not have to be the original inventors.

Finally, interference-proceeding cases are quite visible in IP litigation. The proceeding rearranges priority order of multiple patent applications. With the enactment of the America Invents Act, however, the category constituting interference-proceeding cases will be eliminated. Any case filed on or after March 16, 2013, will not be able to initiate an interference proceeding.

What do you do to stay abreast of emerging issues in IP Litigation? Are there any specific practice publications or web resources that are particularly helpful?
It is certainly important to stay on top of the emerging issues in intellectual property. No matter how knowledgeable you are in a specialized field, there will always be new innovations and developments that will be relevant and important to understand. The ABA Tech Journal and the are some examples of IP sources that may provide a wealth of information on most recent IP trends. In addition, I receive a good amount of information from my colleagues in corporate and IP practices and from my active engagement with the legal community, such as being proactive in local bar associations and business organizations.

What changes do you expect to see in this practice over the next five years?
With the implementation of the AIA and the transition to the first-to-file system, I would expect an uptick in the number of IP-litigation cases. Now that our patent-filing system is aligned with the world’s system, I also would expect more ITC cases to emerge. In addition, because of the Internet Corporation for Assigned Names and Numbers’ decision to expand top domains in their generic top-domain-system project (gTLD), there will be a bulk of cases concentrated in dealing with domain creation and maintenance and cases involving trademark protection against the influx of new top domains now allowed.

If you weren’t practicing in IP litigation, which area of law would you like to practice and why?
If not IP law, then I would practice immigration law. As the son of immigrant parents, I would not be here nor have gone to law school and business school if my parents had not come to the United States with the help of an immigration lawyer. I would be very honored to give back to the community in this way and to give others the opportunity to come to the United States and achieve the American dream.

Interview conducted by Lindsey Nelson, a content editor for the Young Advocates Committee.

Tommy Wang is a partner at Yang & Wang, P.C. in Los Angeles, California.