Founder, CEO, RPX Corporation
Many in the tech world were skeptical in September 2008 when lawyer John Amster launched RPX as a defensive patent aggregator with the mission of buying up patents and patent rights as a way of cutting into what he calls “the nonpracticing entity problem”—and what others call the “patent troll problem.” Two years later, some of that skepticism is fading. In July, RPX announced the addition of eight new clients, including NEC Corporation and Hitachi, Ltd., to bring its total roster, which already included such tech titans as Cisco Systems, Inc., International Business Machines Corporation, and Microsoft Corp., to more than 50 clients. The RPX model—under which clients, according to their size, pay fees ranging from $50,000 to $5.2 million to protect themselves from NPE patent assertions—is clearly winning converts among the kinds of companies often targeted by NPEs. Amster is a long way from his stated goal of making the patent licensing marketplace more “rational” by eliminating the NPE “problem” altogether. Still, among patent defense groups, RPX alone appears to be making steady progress in that direction.
Senior Vice President and General Counsel, Eli Lilly and Company
In his 11 years at Lilly—and especially since ascending to his current post seven years ago—Armitage has helped shape every aspect of the pharmaceutical giant’s stance on patent regulation, becoming an industry leader in the process. Last year, for example, he took a prominent role in negotiations over the Pathway to Biosimilars Act, legislation aimed at creating an approval process for generic versions of biotechnology-based medicines. While some suggested that new biotech-based drugs should get a relatively short period of exclusivity before facing generic competition, Armitage, with the help of Lilly’s government affairs staffers, articulated the branded drugmakers’ position by pushing for a 12-year window. Pharmaceutical companies, he argued, need a longer exclusivity period to recoup the huge sums they spend bringing new drugs to market. That Lilly has in recent years sunk big money into biotech may help explain its stance. Whatever the reason, Armitage’s view prevailed: When the biosimilars legislation was signed into law as part of the sweeping health reform bill, the 12-year exclusivity window was part of the package.
CEO, Internet Corporation for Assigned Names and Numbers
Rod Beckstrom’s job is defined by an alphabet soup of acronyms. Take the nonprofit organization he heads, ICANN. Serving as a kind of Web postmaster, it coordinates, oversees, and doles out Internet domain names. Beckstrom joined the organization in June 2009, just as it began to embark on an ambitious plan to vastly expand the available stock of gTLDs (a.k.a. generic top-level domains—think .com, .net, .org). While brand owners are concerned that adding unfamiliar Web suffixes will confuse consumers and make protecting corporate IP more difficult—and increase costs by forcing them to buy something they don’t think they need—Beckstrom has championed the new domains as a way of boosting competition. So far on his watch, ICANN has introduced new Chinese language domains, floated the idea of a “.xxx” suffix for pornography sites—and, in a sign that Beckstrom isn’t ignoring trademark owners’ worries—begun to develop a more streamlined process to resolve disputes over cybersquatting while putting what he hopes are the finishing touches on the plan to expand top-level domains.
U.S. Representative, D-California
Now in his fourteenth term representing a suburban Los Angeles district, the man critics sometime deride as “Hollywood” Howard Berman continues to be a strong advocate for large copyright holders. As chairman of the House Foreign Affairs committee, and a ranking member of the Judiciary Committee—which has oversight of copyright, trademark, and patent issues—Berman is well placed to push for tougher global IP enforcement. One way he’s doing that: throwing his weight behind the Anti-Counterfeiting Trade Agreement (ACTA), under which the European Union, Japan, and other nations would join U.S. efforts to crack down on piracy [for more on ACTA, see "What's the Big Secret?," page 25]. Whether Berman finishes a fifteenth term remains to be seen. Given his deep ties to the movie industry, he’s seen as a possible successor to departed Motion Picture Association of America head Dan Glickman.
TERRI YUN-LIN CHEN
Chief Trademark Counsel, Google, Inc.
Having inherited the job from longtime chief Google trademark counsel Rose Hagan in January, Terri Chen has two overriding responsibilities. First, she is the steward of what in a relatively few years has become one of the world’s most trusted and valuable brand names. Safeguarding its integrity is critically important to the company as it extends its reach well beyond its search engine roots. Equally, if not more, important: Chen must build on—and defend in court—Google’s lucrative keyword-advertising program, a substantial chunk of which relies on the sale of third-party trademarks. A number of trademark infringement lawsuits have been brought against Google in connection with its keyword sales—and several are still pending—but none of the claims have yet dealt the company a serious legal setback. Keeping that record intact will be a top priority for Chen. That and the other trademark policies she pursues will ripple well beyond Google’s Silicon Valley headquarters and across the entire universe of brand owners whose marks the company puts on the block.
Senior Director, Associate General Counsel, eBay Inc.
Like Google, eBay is a company whose policies and practices affect virtually every trademark holder in the world. And as eBay’s top IP lawyer, Daniel Dougherty can expect that he and his in-house colleagues will hear from at least some—if not hundreds—of those trademark holders on a daily basis. The Tiffany v. eBay case—which the online auctioneer won at the U.S. Court of Appeals for the Second Circuit and which the luxury jeweler is expected to petition the U.S. Supreme Court to consider—has shown that brand owners will go to great lengths to do what they feel is required to combat counterfeiting—and to control their distribution channels. It has also shown that while eBay takes counterfeiting seriously, it will fight to assure that consumers have access to a vibrant secondary market on the Internet—and to protect the form of online commerce that eBay pioneered. Dougherty’s job: to continue to balance those competing interests—something that’s sure to keep his phone ringing.
Professor, George Washington University Law School
When the Federal Circuit originally considered the case then labeled In Re: Bernard L. Bilski and Rand A. Warsaw, of the dozens of amicus briefs submitted to the court, it chose two to be argued. John Duffy, in his of counsel role at Fried, Frank, Harris, Shriver & Jacobson, coauthored one of them. Writing on behalf of Datacorp Inc.—in an argument that presaged the appellate court’s ruling in the case, and the U.S. Supreme Court’s—Duffy urged the court to resist “the temptation to apply a static, formalistic test to exclude subject matter from patentability.” A onetime blackjack card-counter and former clerk to Justice Antonin Scalia, Duffy also served as cocounsel to KSR International in the landmark 2007 Supreme Court case KSR v. Teleflex, which found the latter’s patent of a gas-pedal feature obvious and invalid and raised the bar for the protection of readily apparent inventions. “He’s not a hired gun, he’s a scholar,” says colleague John Whealan, associate dean for intellectual property law at George Washington. “And he’s almost always right.”
United States Intellectual Property Enforcement Coordinator
While the job Victoria Espinel inhabits may be new, the issues it encompasses are hardly new to her. A Georgetown Law School and London School of Economics grad, Espinel previously served as chief IP negotiator in the Office of the U.S. Trade Representative, a job that required her to advise key congressional committees, as well as to lead trade talks with other countries and at the World Trade Organization. Given the global challenges of safeguarding IP rights in the modern era, that experience will come in handy as she moves to create a consistent national IP enforcement policy. In June, Espinel unveiled the first-of-its-kind “Joint Strategic Plan on Intellectual Property Enforcement.” And though the plan included tough talk about punishing counterfeiters, illegal music and movie downloaders, and rogue Internet pharmacies, it also strongly backed the notion of fair use, stating that enforcement efforts would be built around “stopping those stealing the work of others, not those who are appropriately building upon it.” Espinel is clearly mindful of the balancing act ahead—and realizes that as the first to hold her title, she’s in a position to forge her own path.
Executive Vice-President, General Counsel, Secretary, Viacom, Inc.
As the lawyer overseeing Viacom Inc.’s $1 billion infringement claim against Google Inc.’s YouTube, Michael Frick-las is playing a key role in a battle over user-generated content, fair use, and the Digital Millennium Copyright Act—one that could also shape the law about how liable Internet service providers are for Web sites that host copyright-infringing works. While Fricklas isn’t necessarily as one-dimensional on copyright issues as his critics believe—at a 2009 Yale Law School lecture, he said that suing people for infringement felt “like terrorism”—he is unrepentant when it comes to the YouTube litigation. After a federal district court judge delivered round one to Google in June by ruling in its favor on summary judgment, Fricklas issued a statement saying that Viacom “always knew that the critical underlying issue would need to be addressed by courts at the appellate levels,” and that the company was confident it would win on appeal.
Director, Patent and Trademark Office
Appointed to lead the Patent and Trademark Office in June 2009, David Kappos has taken the agency’s reins at a time of great possibility—and great tension. Expectations are high for what Kappos can accomplish, and he’s already made more big changes in a little over a year than some of his predecessors made in an entire term [for a detailed take on the changes Kappos has brought to the PTO in his first year, see "Shake It Up," page 22]. Having arrived at the PTO from International Business Machines Corporation—where he ran one of the country’s most vigorous corporate patent programs for a company that routinely secured more U.S. patents annually than any other—Kappos does not appear to be letting the transition from private industry to the public sector slow him down. And with congressional action on patent reform stalled, and with the PTO facing a potential $200 million shortfall this year, he’ll need all the energy he can muster—not to mention an ability to stretch his limited resources as far as they can go—to continue shaking things up.
Justice, U.S. Supreme Court
Though his status as the U.S. Supreme Court’s one true swing vote may come into sharper focus in other types of cases, Justice Anthony Kennedy can not be easily pegged when it comes to predicting how he’ll vote in IP cases either. Consider Kennedy’s concurring opinion in eBay v. MercExchange, in which he expressed serious reservations about the rise of nonpracticing entities and the role that patents play in their litigation-heavy business model. Was it possible to take that as a sign—as the Court’s Bilski deliberations dragged on this year—that Kennedy was in the camp of those keen to rein in patent rights? No, it turned out. When the 5-to-4 Bilski opinion came down, Kennedy, who wrote it, sided with the Court’s conservative bloc and its more expansive view of what constitutes patentable subject matter. One more thing: With Justice John Paul Stevens gone, Kennedy’s newfound seniority status gives him the power to choose the author of some opinions. That’s right—he’s a swing vote with added clout.
U.S. Senator, D-Vermont
If patent reform moves ahead this year, U.S. senator Patrick Leahy will be a major reason why. Since retaking his previously held post as chairman of the Senate Judiciary Committee in 2007, Leahy has pushed for what many believe is a long-overdue overhaul of the nation’s patent laws. A coauthor of the Patent Reform Act of 2009, Leahy in March announced a legislative compromise among fellow committee members, suggesting that the present bill—which would, among other things, convert the present “first-to-invent” regime to a “first-to-file” system—just might be able to avoid being derailed by hotly divided industry camps. Leahy said he had also been able to strike a compromise on the issue of capping damages—a flashpoint that has pitted the pharmaceutical and biotechnology industries, which oppose such caps, against high-tech companies, which support limits as a way of paring back the rising tide of patent litigation. Still, though Leahy’s committee approved the legislation, the full Senate had not yet voted on it as of July—opening the door to a possible post–Election Day lame duck vote.
Director, Stanford Law School Program in Law, Science, and Technology
After publishing 109 articles and seven books, including Intellectual Property in the New Technological Age, Mark Lemley is unquestionably the most-quoted IP scholar alive today. In fact, a recent survey conducted by legal research outlet HeinOnline of 19 million pages of content in the Law Journal Library found Lemley to be cited more times than the legendary U.S. Supreme Court justice Louis Brandeis. Lemley’s writings often offer counterintuitive theses. In one 2010 study, for example, he noted that contrary to popular belief, the Eastern District of Texas is not actually the most favorable venue in the country for patent plaintiffs. And his studies can have real-world impact: In its landmark 2006 ruling in eBay v. MercExchange, for example, the Supreme Court adopted much of the reasoning that Lemley laid out in his amicus brief on behalf of a group of law professors. A founding partner of Silicon Valley litigation boutique Durie Tangri, Lemley has been mentioned as a potential judge. Maybe, but that could be a bit restrictive for someone who clearly relishes writing on whatever topic he likes.
Chief Administrative Law Judge, U.S. International Trade Commission
The International Trade Commission has enjoyed soaring popularity of late. Indeed, the ITC is on pace this year to see its docket of so-called 337 patent investigations nearly double from where it stood in 2006. That was the year the U.S. Supreme Court handed down a decision that limited the ability of federal district court judges to grant injunctive relief in patent infringement cases. That decision immediately raised the ITC’s profile, thanks to the agency’s ability to issue exclusion orders that bar infringing products from entering the United States. “Ever since the Supreme Court restricted injunctive relief, plaintiffs have been rushing toward us. That’s all we do here,” says Luckern, who oversees judges, assigns cases, sets deadlines for when investigations must be completed, and hears claims himself, including separate recent disputes involving Nokia Corporation, Apple Inc., and Panasonic Corporation. Luckern has also traveled throughout Asia, educating foreign lawyers about the intricacies of ITC patent disputes. No wonder foreign-based companies are increasingly taking their patent wars to the commission.
RICHARD LUTTON, JR.
Chief Patent Counsel, Apple Inc.
As Apple’s lead IP strategist since 2001, Richard Lutton, Jr., who is known as Chip, manages patent development, licensing, and litigation for the company. His most important duty may be making sure Apple isn’t caught napping. Twenty-five years ago, the company was blindsided when Microsoft appropriated much of Apple’s user interface to develop Windows. Ever since, Apple, whose patent portfolio now tops 3,000, has turned to patents as weapons, and, especially on Lutton’s watch, has become more active in court. For example, Apple recently sued HTC Corporation for infringement in federal court and at the International Trade Commission. Apple, whose iPhone has made it a smartphone industry leader, is also often hit with infringement suits, such as the one filed in July by NTP, Inc., over wireless e-mail technology. More fuel for Lutton’s view that the patent system is “tilting out of bounds” by favoring nonpracticing patent holders.
J. THOMAS MCCARTHY
Author, McCarthy on Trademarks and Unfair Competition
To say J. Thomas McCarthy wrote the book on trademark law is accurate, but something of an understatement. The book in question is actually a seven-volume treatise that has been cited more than 3,000 times in judicial opinions. A senior professor at the University of San Francisco School of Law and founding director of the school’s McCarthy Institute for Intellectual Property and Technology Law, he updates McCarthy on Trademarks and Unfair Competition quarterly and continues to pursue important research in the field. A study to be published in November, for instance, tracks the sale of trademarks by search engine companies to determine whether purchasers use them to hurt copyright holders or mislead consumers—a piece of scholarship that Google’s Terri Chen [see page 14], among others whose businesses rely heavily on keyword advertising, will surely be keen to read.
Retired Chief Judge, U.S. Court of Appeals for the Federal Circuit
Judges who retire with visions of becoming thought leaders are often disappointed when it turns out that the aura of authority that marked their time on the bench recedes when they step down. Don’t count on that happening in Paul Michel’s case. When he retired as the Federal Circuit’s chief judge in May, Michel ended a 22-year run on the nation’s top patent court (which has only been around for 28 years), with no plans to fade into obscurity. Instead, Michel vows to act as an advocate for the U.S. patent system, which he believes is in danger of becoming too backlogged to support innovation. By choosing to act as a citizen lobbyist for the patent system now that he’s no longer deciding cases, Michel is in essence continuing what he saw as part of his mission during his time on the bench: providing the judiciary with a strong voice in the important patent debates going on in Washington. Only now, he’ll be less constrained [for more on Michel, see "There Goes the Judge," page 50].
CEO, Intellectual Ventures, Inc.
In 2006 Fortune asked: “Who’s afraid of Nathan Myhrvold?” The answer today is pretty much the same as it was then: lots of tech-sector heavyweights. Intellectual Ventures, the Seattle-area company that Myhrvold founded and over which he presides, is undoubtedly the world’s largest and most mysterious patent-holding entity. But so far, IV appears to be that rarest of patent enforcers in that it has never had to resort to directly filing suit. It has, however, handed off a few of the more than 30,000 patents it owns to troll-like companies that then sued companies that hadn’t already struck licensing deals with Myhrvold’s outfit (such as Hewlett-Packard Company and Eastman Kodak Company). IV also keeps using its patent stockpile to strike big licensing deals, collecting as much as $350 million from Verizon in 2008, and $120 million from Intuit in 2009, in exchange for a pledge not to sue and a potential slice of future IV profits. Still, it’s not clear that IV will be able to pay back the huge sums it got from its original investors; by one estimate, the company is $4 billion in the red. But when Myhrvold knocks, people pay attention—even with no signs of litigation on the horizon. The question is: Why? Says one patent industry insider: “Nathan Myhrvold is just the greatest salesman you’ve ever met.”
Author, Nimmer on Copyright
As a child, David Nimmer watched as his father, Melville, become influential in IP circles with the 1963 publication of his treatise, Nimmer on Copyright. It wasn’t until the 1980s, though, that he put his own mark on the book. By then, David Nimmer was a federal prosecutor, and his father was ailing. The two teamed up to produce a new version of the book, and when his father died in 1985, David Nimmer finished the project. He has continued to publish updated versions regularly ever since. Passages from the book have been quoted in some 3,000 federal and state court rulings, informing the way judges have decided cases involving the first-sale doctrine, injunction requests in infringement cases, and the U.S. Copyright Act’s termination provisions. (On the latter topic, judges have lately leaned on Nimmer’s analysis when deciding such cases as Siegel v. Warner Bros.) He also takes on matters in his of counsel role at Irell & Manella, but Nimmer says, “My perfect day is when I start writing up cases for the treatise and the phone never rings.”
Senior Copyright Counsel, Google, Inc.
It’s not just that he’s a top copyright lawyer for a company that’s testing the boundaries of what copyright means in the digital age. Or that he’s authored important treatises on copyright law and fair use. Or that his career has encompassed stints as a congressional staffer, a Copyright Office adviser, a big-firm litigator, and a law school professor. What makes William Patry stand out—in a field often marked by fierce fights between defenders of the status quo and those on the so-called copy-left—is his self-avowed position as a centrist. Patry decries the entertainment industry for clinging to what he sees as outmoded business models, but won’t back those who break the law to take what they want. As readers of his 2009 book Moral Panics and the Copyright Wars know, Patry’s true enemy is the loaded language he thinks has turned an economic debate into an emotional one. That’s a foe worth fighting against.
Chief Judge, U.S. Court of Appeals for the Federal Circuit
Being the chief judge for the Federal Circuit doesn’t bestow the power one might think. Unlike the chief justice of the U.S. Supreme Court, the Federal Circuit’s top judge doesn’t even decide which of his colleagues writes the court’s opinions. To lead on this court, a judge needs to practice the art of persuasion. Early indications are that Randall Rader, who took over the post in June, has talent in this area—and that he’s not going to be hands-off. Rader has signaled that he’s set to revamp the court’s relationship with the Eastern District of Texas, the federal district with the most active docket. Rader visited East Texas in April to sit in on trials, and wound up overseeing an unprecedented five. Rader’s 20 years at the Federal Circuit may also portend a better relationship with the Supreme Court, which has in recent years taken a dimmer view of patent rights than the appellate court has. Consider that when the 5-to-4 Court majority that decided Bilski said the patent application at issue in the case deserved to be rejected because it covered an abstract idea, it aligned itself with the view previously taken by just one Federal Circuit judge: Randall Rader.
CEO, Acacia Research Corp.
A former investment banker who has repositioned himself as a champion of the individual inventor, Paul Ryan has led the country’s largest publicly held patent-holding company since 1997. These days, Ryan says, Acacia is shifting its emphasis from helping individual inventors get cash by enforcing their patents to working with corporations that want to more aggressively capitalize on their IP. Meanwhile, despite losing three trials that could have boosted its reputation as a patent enforcer, Acacia has buoyed its finances by striking hundreds of license agreements. And by doing the things a “normal” publicly traded company does—filing financial disclosures, speaking publicly to investors—Acacia has done more to legitimize the patent enforcement business than any other player. Whether one loves, hates, fears, or simply respects him, Ryan is building Acacia into a company that will continue to change the patent litigation landscape.
FRED VON LOHMANN
Senior Copyright Counsel, Google, Inc.
For almost a decade, Fred von Lohmann was the public face of the Electronic Frontier Foundation, championing the fair use rights of Internet users over, usually, the objections of large copyright holders. With von Lohmann’s crucial strategic input, the EFF submitted influential amicus briefs in such important cases as Vernor v. Autodesk and Perfect 10 v. Google. Among the more notable recent cases in which the EFF got involved was the fight over whether the U.S. Copyright Office should allow a Digital Millennium Copyright exemption for the “jailbreaking” of Apple’s iPhone. In July—less than a month after von Lohmann took an in-house post at Google—the exemption was granted. In his new job, von Lohmann will get the chance to shape copyright law even further—working from the inside out.
T. JOHN WARD
Federal District Court Judge, Eastern District of Texas
The Eastern District of Texas has been the nation’s most popular patent venue for several years now, and Judge T. John Ward is the man who made it happen. How? With a speedy docket, thorough discovery rules, and few summary judgment grants. Add in the perception that East Texas juries can be counted on to deliver generous awards, and the area has become fertile territory for patent plaintiffs. While Ward’s docket has slowed a bit lately, the environment he created remains at the peak of its influence. When patent holders are deciding where to file, there’s East Texas, and there’s everywhere else. As a result, patent lawyers from California to New York still attend seminars to hear East Texas judges and IP experts talk about the best way to practice, and win, there. One example of how the district’s influence endures: Special discovery rules for software patent cases, written in East Texas, could well be adopted by courts nationwide.
President and CEO, Teva Pharmaceuticals
Shlomo Yanai has led the world’s biggest generic drugmaker, which accounts for 22 percent of all generic prescriptions in the United States and produces 8 billion pills a year, since 2006. And Jerusalem-based Teva has never shied away from using litigation to feed its success. Now, despite the recession—or maybe because of it—Teva’s revenues are set to grow by 27 percent this year, to $14 billion, keeping the company on pace to meet Yanai’s two-year-old prediction that revenue would climb to $20 billion by 2012. The ex–Israeli Defense Forces strategist is willing to spend to achieve that goal. In March, Teva expanded its global reach, buying German generic maker Ratiopharm for $5 billion.