Novak Druce + Quigg rang in 2012 by announcing the addition of partner Michael O’Neill, a former administrative patent judge at the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences. Earlier, in March 2011, the firm added former Howrey partner Janelle Waack, who specializes in patent interference hearings.
The moves were all about the America Invents Act (AIA), which took effect in September. The law will expand the avenues for challenging other parties’ patents. It also adopts the first-to-file test for settling disputes over patents filed after March 16, 2013. The added expertise in handling the motions, depositions and evidence-taking in interferences proceedings should translate well to the new, similarly adversarial procedures, according to executive partner Tracy Druce.
“We began to prepare ourselves procedurally with the addition of Janelle Waack and the teams that she’s been able to build when we knew [patent reform] was going to pass,” Druce said. Managing partner Gregory Novak concurred, saying of O’Neill: “We spent more than a year preparing and trying to lure him away from the bench.” With both noted national players on board, “the AIA will become a further significant boost to our business and ability to service clients and…to combine litigation re-examination and prosecution,” he said.
The Washington-based intellectual property firm was already on a tear, having opened a fifth office in Cupertino, Calif., around the time the AIA was taking effect. Novak and Druce launched the firm in 1988, merged with the now-defunct Howrey in 2000 and then reformed as a separate shop in 2004.
“There is definitely a market for a focused ‘superboutique,’ ” Novak said. “The market is verifying that.” The firm has 61 lawyers and 11 patent agents and law clerks. Additional offices are in Houston, San Francisco and West Palm Beach, Fla.
Novak Druce’s loyal clients include Nvidia Corp., for which it mounted an offensive against technology licensing company Rambus Inc. in response to its infringement suits over memory-controller patents. The cases were filed in the Northern District of California and the International Trade Commission.
The company tapped Novak Druce because “they have a really strong reputation in patent re-examinations, which was part of our defense strategy,” said general counsel David Shannon. Furthermore, the firm has strong relationships with the patent officials and understands the process very well, he said. “It’s really an area of strength of theirs.” In February, Nvidia and Rambus reached a license agreement that resolved all the legal disputes between the parties.
Novak Druce has taken an important role in the smartphone wars, having helped Apple Inc. uphold four of its patents so far, including those in the Nokia Corp., HTC Corp. and Motorola Mobility Inc. lawsuits. An International Trade Commission injunction on sales of HTC devices took effect this month, following the first fully litigated U.S. patent case between Apple and an Android smartphone maker. On the other hand, in June Apple made a one-time confidential payment to Nokia to settle four district court and four ITC cases. Novak declined to specifically comment on the firm’s work for Apple.
Still, there’s more than patent work on the menu. Novak Druce has a growing trademark practice, and has focused on startups and early-stage companies during the past few years. “We do try to have a truly balanced and full-service IP practice that’s built off of a national platform,” Novak said.
The firm helps long-standing client Thule Inc., the U.S. arm of Swedish roof rack company Thule Group, manage patents without the need for an in-house U.S. patent lawyer, said Joe Flaherty, the company’s chief engineer and patent coordinator. The work includes patent prosecution and due diligence, he said.
Novak Druce lawyers are masters at including patent claim language that gives Thule the broadest possible protection, Flaherty said. The firm is good at explaining complex legal issues in a simple way — which is particularly important during litigation, he said. “We really rely on Novak Druce to boil things down and digest it so we can make decisions we need to make.”
Sheri Qualters can be contacted at firstname.lastname@example.org.