Kenneth G. Schuler
Two appellate victories at the U.S. District Court for the Federal Circuit and a separate ruling granting its client $1 million in attorney fees?
Yes, the week of March 23 was a successful one for the intellectual property litigation practice at Latham & Watkins LLP.
On March 23, the appellate court for patents ruled in favor of Latham client Mallinckrodt Pharmaceuticals, upholding a ruling that said two patents covering an injectable pain reliever sold as Ofirmev were infringed by Exela Pharma’s attempt to create a generic version.
The victory means Ofirmev will likely remain competitor-free until 2020.
Three days later, a different Federal Circuit panel affirmed another ruling in related litigation between Mallinckrodt and Exela. And that same day, a federal trial court judge in Virginia sided with Latham client Volvo, granting the automaker nearly $1 million in attorney fees after granting summary judgment in a case related to patents over child seats.
Kenneth G. Schuler is the global co-chair of Latham’s 85-lawyer IP litigation practice. Ten of those lawyers reside in Chicago.
Schuler has been in that role for about a year, and he argued in the Federal Circuit on behalf of Mallinckrodt in the case decided March 23.
Schuler spoke with the Daily Law Bulletin about how he handled a tongue-twister in that case, additions to Latham’s patent trial team and the difficult role judges face in complex patent trials. The interview has been condensed for space.
Law Bulletin: One of the things being argued about in your case was something the appellate court refers to as a “vacuum stoppering step.” I’m just curious, did you ever have to say that in court?
Schuler: I did. I called it the “vacuum packing step.”
LB: Vacuum packing step might have been easier to say than vacuum stoppering step. Let me start by asking you about the Federal Circuit Court of Appeals. How many times have you stood up in front of those fine folks?
Schuler: Twice. The other case was a subsequent one this past March in another pharmaceutical case.
LB: Did you get a result in that one?
Schuler: Yes. Unfortunately, the court affirmed the ruling below on a preliminary injunction decision. The lower court had denied a preliminary injunction, and we had appealed it. The court left it undisturbed, so we’re moving onto the trial.
LB: Do you have any strategic initiatives for the firm’s IP litigation practice? Any goals or objectives?
Schuler: I think we basically accomplished what we set out to do, which was to build a deep roster of what we call first-chair patent litigators. … We have a number of first-chair patent lawyers who have first-chaired trials over the last several years.
While some firms kind of have one person designated at the top of the pyramid who tries most if not all of their patent cases, we have a full lineup of seven or eight people who do so on a routine basis.
We just added Dave Callahan and Ann Marie Wahls from Kirkland & Ellis last year. We added Mike Morin and Dave Frazier in our Washington, D.C., office (in February) and prior to that (in May last year) we had added a group (of four partners) from Kasowitz, Benson, Torres & Friedman LLP in our Silicon Valley office.
Each of those groups has accomplished trial lawyers in addition to the people we already have here. I think we have the deepest bench of first-chair patent trial lawyers of any firm that I’m aware of.
LB: Trying cases requires being able to convey ideas to people, which is probably one talent or skill in itself. But doing it in the complex area of patents and IP is probably even more difficult.
What are the things you need to be good at in order to be a first-chair patent trial lawyer?
Schuler: First and foremost, you have to understand the technology. You need to understand it enough to be able to do a deep dive into the technology to understand the prior art, to understand the accused products and the arguments about those.
But you also need to be able to stand up and to see the forest through the trees. Because if you stay down in the weeds, the audience — whether it’s the jury or the judge — they’re not going to be able to follow you because they’re not going to have that level of technical acumen.
So it’s a balance of being able to understand the technology in a way that allows you to get to the truth, so to speak, regarding the merits of the claims, but also to be able to communicate in a way that is clear and cogent.
LB: Do you ever have any empathy for the task of a trial court judge in patent cases? Having to figure out what an expert in any given technology knew at any given time? It almost seems impossible.
Schuler: It’s a very substantial task. But I have to say that I have been uniformly impressed with the diligence and intellect of our judges to grasp these issues at the level that they need to be grasped in order to make intelligent decisions. And I think they do a terrific job.
It is true that while we have a generalist system, a lot of the cases do tend — at least in my space, the pharmaceutical space — to be filed in certain jurisdictions. So I think those judges have a little more familiarity with the pharmaceutical patent litigation, for instance, those in Delaware and those in New Jersey get a lot of the cases. So there is a little built up familiarity.
But I’ve had cases in New York City, the Southern District of New York and here in the Northern District of Illinois. And the judges, even though they haven’t had as many pharmaceutical cases, are uniformly terrific.
LB: You have pretty vast experience in Hatch-Waxman Act cases, which have to do with generic drugs. Recently, the pharmaceutical industry in America saw the first (Food and Drug Administration) approval of a biosimilar, which are kind of like generic drugs for biologics. What effect do you think biosimilars will have, if any, on litigation in the U.S.?
Schuler: I think that it’s clear that there will be increasing amounts of litigation over biosimilars over the next several years. And then I think we’ll reach some sort of equilibrium. But we’re really at the cusp of it with the first skirmishes, and I think those are going to escalate as more and more biosimilar applications are filed and get accepted by the FDA. … We look forward to hopefully handling those litigations in the future.
LB: Patent reform has been somewhere on the docket for legislatures over the past two or three years.
Do you think we’ll see any action on that any time soon? And are there any changes you would advocate as a patent trial lawyer?
Schuler: I think that with the America Invents Act, patent reform was implemented recently. We’ve now come to parallel most of the rest of the world — we now have a first-to-file system rather than a first-to-invent system. We also have inter partes review proceedings, which are an increasingly important part of what people do in the field.
My view is, it will take a decade or so in order for people to get comfortable with those, and there will again become some sort of equilibrium over the next decade.
So I think reform has happened, and I’m not sure there will be much appetite to have additional reform until there has been enough experience with those recent changes.
As far as how the patent system is, I think it’s functioning very well. I don’t have any issues that I think are substantial enough to warrant any major changes.