Alfonso Chan is a trial lawyer who focuses on litigating and licensing complex intellectual property cases on behalf of universities, research institutes and technology companies. His matters are primarily focused on semiconductors and electronic technology-intensive matters, as well as biomaterials and medical devices. Alfonso represents plaintiffs and defendants in district courts nationwide and before the Federal Circuit Court of Appeals. He is also registered to practice before the U.S Patent and Trademark Office (USPTO) and has experience in inter partes review proceedings before the Patent Trial and Appeal Board (PTAB). His international practice includes handling matters in China, Taiwan, Japan, Korea and Europe. Alfonso served as an adjunct professor of International Comparative Law at Southern Methodist University, Dedman School of Law. Below is our LFJ Conversation with Alfonso Chan: What are the unique challenges that universities and research institutes face when seeking litigation funding for intellectual property disputes? What strategies do you employ to navigate these challenges? 

Unlike commercial patent owners, universities are not unitary organizations with a hierarchically-defined command and control structure. Universities can comprise several constituencies and legal entities, not all of whom have completely aligned intellectual property interests. Successfully representing a university requires being actively aware of each facet of its make-up and serving as a facilitator between them. For example, a university’s president may not view patent litigation positively, whereas its research sponsor considers patent enforcement to be an essential right that must be exercised under its exclusive license. Successful counsel and funders of university patent owners patiently seek out all interested parties within the university umbrella to ensure a litigation strategy and funding arrangement satisfies as many interests as practicable.

How do you address the potential conflicts of interest that might arise when public institutions enter into litigation funding agreements? Are concerns here legitimate, or are they overblown?

Politics may require consideration when public universities are involved. For example, is approval from the state attorney general required? Can the litigation funder represent that no foreign investors are involved? Should the university be a party to a litigation funding agreement? If so, which part of the university should engage with a litigation funder? If not, how can the university’s public interests be protected in a law firm-facing litigation funding arrangement? These considerations are extraordinarily important and cannot be glossed over.

When it comes to IP enforcement, how do you balance the need for aggressive litigation with the broader mission and reputational considerations of public institutions? 

Protecting institutional reputation is always the primary concern. A university may have spent decades or even centuries building its academic reputation. But reputations are fragile. A university will not risk ruining its reputation by its trial lawyer’s misconduct or funder’s lack of transparency. Everyone working with a university, including its counsel and funders, are de facto arms of the university and must be willing to uphold its high standards of ethics.

What are the trends to watch out for when considering legal funding for public institutions?  How will this sector of the market evolve over the coming years? 

I predict that more funders will become interested in acquiring university-originated patents rather than just funding litigation. This affords a university much-needed up-front monetization while simultaneously providing the funder more control over strategic decision-making. I also predict that a commercially-run version of the University Technology Licensing Program (UTLP) could be very successful in the funded patent litigation marketplace.