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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 Corp.’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 young 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, he figures, second- or third-year associates perform the bulk of the legal work. At smaller firms, clients like Intel receive more attention, he says. Outside firms, which handle about 60 percent of Intel’s patent applications work, must also 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 currently 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 office of Los Angeles’ Blakely, Sokoloff, Taylor & Zafman. Edwin Taylor, a partner at the Blakely firm, says Simon has pushed to increase the number of patent filings since becoming chief patent counsel a couple of years ago. “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 computer chip maker recently had about 9,000 U.S. applications pending. 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 litigation happy, 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 Sometimes technology becomes outdated so fast that it’s not worth the time or money to file a patent.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,” says Simon. “So we spend a huge amount of our time trying to guess where the future is going to go. It’s not easy.” Although Intel now has a healthy patent portfolio with some 35,000 IP assets, Simon says he’s not interested in working with outside consultants who offer to help leverage those assets. Intel, he says, is more interested in “being a successful business than in 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, which he received at the Massachusetts Institute of Technology. He went from there to Georgetown University Law Center. Unlike many patent lawyers who went to law schools in or near Washington, D.C., Simon never worked at the patent office and had not planned on a career in patent law. But that changed after he started his career as a patent litigator for a Los Angeles firm, Spensley Horn Jubas & Lubitz, that was later absorbed by Loeb & Loeb. The early 1980s, says Simon, “was a hard time to get a job in law firms.” The only openings he saw were in insurance defense or patent work. He opted for patents, and later added patent prosecution to his repertoire. Simon moved to Intel in 1996 after tiring of the law firm life. That’s also when he began to sour on patent litigation and the impact that it has on companies like Intel. Engineers have to take time away from designing products to participate in depositions. And the legal fees are a huge hit. Says Simon: “Any one patent lawsuit will cost us in the area of $20 million-plus, given the complexity of our technology Victoria Slind-Flor is the West Coast editor for IP Law & Business magazine, an ALM publication affiliated with GC California magazine.

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