On Thursday, April 17th, LFJ hosted a virtual town hall featuring key stakeholders in the legal funding for patents and trade secrets markets. The panel featured Anup Misra (AM), Managing Director of IP at Curiam, Robin Davis (RD), Director at Fortress Investment Group, Erick Robinson (ER), Partner and Co-Chair of the PTAB Practice Group at Brown Rudnick, and Scott Davis (SD), Partner at Klarquist Sparkman. The panel was moderated by Salumeh Loesch (SL), Founder at Loesch Patents, LLC.
Below are key takeaways from the panel discussion:
Do you feel like in the litigation world generally, that there is a greater interest in trade secret enforcement and litigation just because of the difficulties with patent enforcement? Do you feel like there's a growing interest from the funder's perspective to fund trade secret cases?
AM: I think every funder is going to be a little bit different on how interested they are in trade secrets litigation. Just to be perfectly candid, for example, Curium has not typically been as interested in this because collectively in our practices and in funding, we haven't had the best experiences with trade secret cases. Other funders, though, probably love trade secret cases.
Now, that's not to say we won't do them. And we certainly see more of them. And we're certainly seeing a lot more sort of combo trade secret / patent litigation, which I think is extremely interesting for funders. And if you can manage that, it really puts your case on the upper shelf of what funders are going to consider.
I want to get a sense of how we should consider the multijurisdictional approach in the patent context and how this applies when you're seeking funding?
RD: Obviously, if you have patents in multiple jurisdictions, the US, Europe, beyond, that is a real asset and obviously something you should be bringing to the attention of a litigation funder if you're seeking investment in your case. The key is going to be to make sure that whatever international strategy you're considering is one that takes advantage of the various strengths and differences between different forums around the world.
For instance, many people have always enjoyed filing in the US because there's the potential for large damages awards. However, US district court litigation, especially with the advent of stays for IPRs, can be slow depending on where you're litigating. There are faster forums in other parts of the world; Germany has long been considered a favorite in that regard. And with the advent of the UPC, the Unified Patent Court, which is now in many of the EU member states, this gives you both a faster timeline to a resolution and a much bigger market now that you've got multiple EU member states that are all able to be adjudicated in a single proceeding.
What are your thoughts on the impact of that [PTAB rule changes], in terms of the changes to the types of cases that may potentially arise in both patent litigation and patent litigation funding.
SD: Discretionary denials are increasing. Just in our own practice, we've seen a dramatic change very quickly on that. And I think that's going to continue as a trend for some time, at least until folks filing petitions figure it out as far as what the rules are and as far as what the standards are and what factors are weighed most heavily in the analysis in order to basically present the best argument they can to keep their petition on track.
Certainly in the short term, discretionary denial is a real thing and it's surging. So there's an opportunity to take advantage of that while the rules shake out and both litigants and the board are trying to adapt and adjust to the new reality.
Do you have any tips for how companies can protect their trade secrets but still obtain litigation funding?
ER: My first advice to companies is to have a trade secret management system. That can be as complicated as having an entire software suite. That can be as simple as having a spreadsheet that has trade secret, date, who came up with it, and additional details.
That actually feeds into the real answer, which is you need to know what the trade secret is. Once you know what the trade secret is, things get easier. And that's easier said than done. I've been in cases where nobody really knew what the trade secret was until throttle, which is what makes it crazy. The good news is that damages are a lot more flexible, for instance, in the patent world; you can get actual losses, you can get unjust enrichment, you can get reasonable royalty, you can get punitive damages. There's just a much broader system of damages.
To view the entire discussion, please click here.
