September 4, 2019
“The best opportunity to preserve patent claims is also the quickest: convincing the Board not to institute a trial at all.” – James Carmichael
A recent study by Patexia analyzing the win/loss record of 784 law firms representing patent owners in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) found that Carmichael IP had the highest win percentage. The study counted all decisions rendered in the past five years for firms that handled a significant number of IPRs before the Board. Carmichael IP ranked #1 out of the 784 qualifying law firms in the Patexia survey and Carmichael himself ranked third out of 3,462 individual attorneys.
“It was a nice recognition from Patexia,” said James Carmichael, founder and managing partner of Carmichael IP. As a former Administrative Patent Judge (APJ) on the Board, Carmichael understands how APJs think, and Patexia surmised that may be why he has done such a good job representing clients in IPR proceedings:
Carmichael IP with a total of 40 cases, was one of the surprises for this year,” the published Patexia summary explained. “The firm ranked the Best Performing firm for representing patent owners. James Carmichael, the founder of the firm, is a former PTAB judge, who started his firm after leaving the USPTO. This may explain his good performance when it comes to representing his clients.
While Carmichael doesn’t dispute that his experience as an APJ on the Board has given him some insight into how to best present cases to APJs, he also cites the time he spent in the Solicitor’s Office briefing and arguing cases to the Federal Circuit as an important factor in his success. He has briefed and argued more than 30 cases at the Federal Circuit, again with a very high win ratio. Carmichael told IPWatchdog he feels very lucky to have worked in the Solicitor’s Office at a time when even its young lawyers could expect to argue half a dozen Federal Circuit cases every year.
But apart from that experience, Carmichael largely credits his mentors and colleagues. “I am fortunate to have worked with some great lawyers and judges over the past 30 years. Surrounding myself with smart people has served me well.” Among those whom Carmichael served with in the Solicitor’s Office are Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit, John Whealan, long time USPTO Solicitor and current Dean of Intellectual Property Law at George Washington Law School; the late Fred McKelvey, former Chief APJ of the Board; and APJs Jameson Lee and Muriel Crawford. Carmichael also acknowledges the important contributions of top litigation firms with whom he has worked, as well as the lessons he learned as the sole law clerk to former Chief Judge Markey at the Federal Circuit.
Carmichael says he also learns from lawyers that are lined up against him. “I have seen opposing counsel do really clever things. [As a result], next time, I’m better positioned to try to either preempt such tactics or, if appropriate use them myself.”
As for advice on how best to approach representing patent owners facing an IPR, Carmichael says: “The best opportunity to preserve patent claims is also the quickest: convincing the Board not to institute a trial at all. At the preliminary stage, APJs are receptive to certain arguments that are not available, or less effective, after a trial has begun. The opposite is also true; some issues are better left for trial. In addition, attorneys should pay attention to shifts in how the Board is approaching its decision-making process, some of which are reflected in updates to the Trial Practice Guide and recent precedential opinions issued by the PTAB. Finally, remember that judges are people, too. For example, an APJ may be more comfortable agreeing that your opponents have a hole in their position, as opposed to finding they are completely wrong.”
Carmichael is on the faculty of IPWatchdog’s Patent Masters Symposium and will speak at IPWatchdog’s Annual Meeting in 2020 on the topic of ethics, in addition to moderating a panel on the PTAB.
Gene Quinn and Jim Carmichael at the June 2019 Patent Masters Symposium.