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Don’t try to make rain by inviting David Simon out to a fancy restaurant. Dinner offers are a deal-killer for any law firm looking for Intel Corporation’s patent-prosecution business. Simon, Intel’s 47-year-old chief patent counsel, prefers to stay home with his family, building Lego structures with his elementary school-aged son and daughter. Any firm that manages to grab Simon’s attention will soon learn his hiring bias: brand-name firms from large cities need not apply. “We are moving to what we call low-overhead firms: individual practitioners or firms that are no more than seven people, not in major cities,” he says. At large firms second- or third-year associates wind up doing the bulk of Intel’s work; at smaller firms Intel gets more attention, Simon says. Outside firms do approximately 60 percent of Intel’s patent applications work, and they must accept Simon’s guideline price of $7,500 for most patent applications. Simon’s staff of about 65 patent lawyers does the rest, focusing on Intel’s key technology. Three firms receive the bulk of Intel’s prosecution work: 60-lawyer Schwegman, Lundberg, Woessner & Kluth of Minneapolis; six-lawyer Konrad, Raynes & Victor of Beverly Hills; and the 28-lawyer Sunnyvale, Calif., office of Los Angeles’s Blakely, Sokoloff, Taylor & Zafman. Blakely Sokoloff probably handles the biggest chunk of work, Simon says. Edwin Taylor, a name partner at Blakely, says he’s been prosecuting Intel patents for 20 years. And he’s recently seen an uptick in the company’s patenting efforts. In 2003 Intel received 1,592 U.S. patents, placing the Santa Clara, Calif.-based company sixth among the companies receiving the most patents that year. Intel ranked 14th in 2002. The chip-maker has about 9,000 U.S. applications pending. Taylor says Simon has pushed to increase the number of patent filings since he was promoted to the newly created position of chief patent counsel in January 2003. “In the distant past Intel was not as aggressive in filing patents as they should have been,” says Taylor. “Compared to Texas Instruments in the early days, Intel was way behind in getting patents, even though they were both spending an equal amount of money in R&D.” The push came from Simon’s commitment to build a “patent thicket” around important Intel inventions, particularly those that relate to industry standards. It’s not that he’s litigationhappy, but Simon wants to make sure the company can continue to create products in these critical areas without fear of interference by competitors. Simon and his staff decide which Intel inventions should be patented and whether to continue paying maintenance fees on existing patents. Sometimes technology becomes outdated so fast that it’s not worth the time or money to file a patent. “Some technology lasts forever, others are gone in 19 months. So we spend a huge amount of our time trying to guess where the future is going to go. It’s not easy,” Simon says. Simon may be a homebody, but sometimes his job forces him on the road. He frequently testifies before Congress on patent-policy issues. The Berman-Boucher bill is currently highest on his agenda. If it passes, interested parties can use a less-costly proceedure before the Patent and Trademark Office to try to invalidate a patent. Simon says the bill will “restore some of the balance between ‘patent trolls’ and corporations that are actually in the business of making products.” The term “patent trolls” — used to describe individuals or companies that buy up patents and assert them with no intent ever to create a product — was coined at Intel, he says. So was “patent extortionist,” which Intel spokesperson Chuck Mulloy once slung at Chicago’s TechSearch in the 1990s, when the two companies were involved in patent litigation. (Intel successfully beat off TechSearch’s challenges). Simon has no use for nonmanufacturing companies that amass patents for the purpose of asserting them. “They’re just a tax on the industry,” he says. Although Intel now has a healthy patent portfolio with about “35,000 IP assets in our inventory,” Simon says he’s not interested in working with outside consultants who want to help him leverage those assets. “That’s not the space Intel is at,” he says. “Our head is at being a successful business rather than using the IP department to make money. I’d rather have us see a lot more product — which will contribute a lot more money to the bottom line — than to maximize my assets trying to get people to take a license.” Like many other patent lawyers at Intel, Simon has an undergraduate degree in electrical engineering (his is from the Massachusetts Institute of Technology). Simon rebelled against his father, an electrical engineer who tried hard to dissuade Simon from following in his dad’s footsteps. “He wanted me to be a doctor in the worst way,” says Simon. But Simon had trouble with organic chemistry — a med school requirement. He headed off to Georgetown University Law Center right after his 1979 graduation from MIT. Unlike many patent lawyers who went to Washington D.C.-area law schools, Simon never worked at the patent office and hadn’t planned on a career in patent law. But as soon as he received his law degree in 1982, he went to the now-defunct Spensley Horn Jubas & Lubitz in Los Angeles, where he started as a patent litigator. What happened? The early eighties “was a hard time to get a job in law firms,” he explains. The only openings he saw were in insurance-defense or patent work. Patents seemed the less boring of the two. After a few years, he added patent prosecution to his repertoire. Simon moved to Intel in 1996, about a year and a half after Spensley was absorbed by Los Angeles’ Loeb & Loeb. “I had gotten soured about being in a law firm and dealing with the problem of having partners,” he says. “I wanted something different.” After he moved to Intel from private practice, Simon’s liking for patent litigation quickly waned. He sees its impact on the company: Intel engineers have to take time away from designing products to participate in depositions. And the legal fees are a huge hit. “Any one patent lawsuit will cost us in the area of $20 million-plus, given the complexity of our technology,” he says.

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