For its “Leading Questions” series, Bloomberg Law interviews attorneys and other legal industry professionals who are at the top of their fields. Bloomberg Law interviewed Finnegan partner and leader of the firm’s litigation section, Frank DeCosta, to discuss what legal questions keep him up at night, the increase in patent litigation during the pandemic, challenges he faces, and diversity.
Frank attributes the increase in patent litigation over the past year to economic insecurity brought on by the pandemic. He said, “Companies use litigation to leverage IP assets to protect market share, which has even greater bottom-line significance in the economic environment presented by COVID-19.” He also noted that patent litigation has been cyclical, and the return of district court patent filings mirrors the trend in 2017.
Regarding questions that keep him up at night, Frank points to Section 101. Clients are always asking if their invention is patentable but it’s difficult to provide certainty regarding patent-eligible subject matter given the unclear guidance coming from the U.S. Patent and Trademark Office (USPTO) and the courts.
Frank was also asked how he has helped his colleagues navigate the transition to virtual trials and the challenges surrounding trial scheduling. He said:
“We had a running start pre-Covid because remote engagement was not a completely new concept for us. We had on occasion conducted remote depositions. Many courts were already in the habit of conducting telephonic hearings. Trials at the PTAB routinely had judges participating by video. If there is anything positive coming out of the pandemic, we all now have a robust and proven toolkit that allows for remote engagement for virtually all phases of litigation. We are using remote litigation engagement to provide opportunities for junior lawyers to participate in deposition, hearings, and meetings that may not have been as readily available given travel costs pre-pandemic.
The wildcard has been jury trials. Protocols in place have limited bandwidth in the courthouse. In some cases, protocols are limiting scheduling to one jury trial at a time per courthouse.
Going forward, while there is a significant backlog, some clients may consider whether they will decide to forgo jury trials and elect to try their cases to the bench.”
Regarding diversity, Frank discussed the recruiting challenges that come with such a niche practice. He said:
“There are several layers of filters that inherently limit the pool. For our patent practice, candidates have undergraduate and, in many cases, advanced degrees in STEM-related fields. So, you start with the pool of graduates of STEM-related university programs. Then you take only the subset of those graduates that choose to go to law school instead of pursuing the many other career opportunities for STEM graduates. And from that group of law students you further separate out the law students with STEM backgrounds that have no interest in IP law. The net pool is relatively small. And when you look within that already small pool to find candidates from underrepresented groups, the population of potential recruits is quite small.”
However, to respond to that challenge, the firm focuses on being intentional with its diversity, equity, and inclusion efforts as it relates to recruiting, developing, and retaining talent.
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