R&G Tech Studio Presents: Technology, Media & Telecommunications Co-Leader Andrew Thomases

In this episode of the R&G Tech Studio, technology, media & telecommunications co-leads Andrew Thomases and Ed Black get together to discuss Andrew’s decades-long career as a patent litigator, and they also explain how patent trolls continue to be a major cause of concern for high-tech companies.

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Transcript:

Ed Black: Hi, this is Ed Black. I’d like to welcome our listeners to the latest edition of the R&G Tech Studio podcast. I am very pleased to be here today with my friend, my partner, superstar patent litigator, and actual rock star (more about that at the end), Andrew Thomases. Andrew, thank you so much for joining us. I do have some questions about your legal practice, but before we dig in, can you give us just 10 seconds about who you are, where you’re based, and what life is like for you?

Andrew Thomases: Sure. I’m based in Silicon Valley. I’ve been practicing intellectual property litigation out here for 27 years. I originally had a degree in physics and then decided to go to law school, and a good way to put that to use is practicing high-tech law. My wife and I, we have three kids, and we’ve been in the Bay Area for 20+ years now.

Ed Black: Have you spent the whole time down on the peninsula? Do you live in the valley?

Andrew Thomases: For the first eight years, I was up in San Francisco. And then, when we had our second kid, we moved to the suburbs. We live in Menlo Park, which is kind of the heart of Silicon Valley—it’s currently where Facebook and Meta are based. I’ve always worked in Silicon Valley, but originally, I had the reverse commute, which turned into, in the dotcom boom, the actual, more difficult commute. But then, we decided to move down here about 20+ years ago.

Ed Black: Wow. So, for 27 years, the drive down the 101 has been horrifying. I thought it might just have been the past 10 years, but it sounds like it’s been bad for a long time. Alright, I know you are a patent litigator. Could you tell us a little bit about your practice and who are the clients?

Andrew Thomases: I have a lot of clients in the high-tech space, many of which are here in Silicon Valley and all over the globe, actually. But some of the clients I’ve been doing work for recently are Apple, Marvell semiconductor, and then video streaming companies like Roku and fuboTV.

Ed Black: And across those clients, is it all disputes? Is it all litigation all the time?

Andrew Thomases: So, we do some counseling as well as litigation. Usually, we’re trying to resolve a dispute before it comes to litigation, and therefore, we do a lot of negotiations over IP rights. Then, sometimes, our clients are sued without any negotiation and we’re brought in to defend them. And there are some clients who ask us to enforce their own patents or trade secrets, and so, we then represent our clients as the plaintiff in a dispute.

Ed Black: I know, of course, for 27 years deep in the field, you’ve had a lot of experience across a lot of different matters, but if you had to pick top concerns that are affecting your clients today, what would those concerns be?

Andrew Thomases: One major concern for high-tech companies is the phenomenon of what are called “non-practicing entities”—some people more colloquially call them “patent trolls”—these are entities that don’t make any of their own products, but they do hold patent assets. Sometimes they’ve acquired them from bankruptcy or auction. And what they want to do is get a return on their investment, and extract licensing or settlement fees from the high-tech companies. So, the high-tech companies turn to us to defend them in these assertions of patents.

Ed Black: The patent trolls, I know they’ve been around for years. There have even been various times where there has been legislation—laws passed to make it harder for patent trolls. But inside Ropes & Gray, do you handle that case just like any other? Are there any special twists and turns that you’ve seen in your practice or special skills that we bring to bear to deal with these trolls?

Andrew Thomases: Yes, we’ve been dealing with them for long enough that we have developed a playbook internally. And our playbook has a lot of strategies. We obviously custom tailor them to particular clients, but one of which we use a lot was a proceeding at the Patent Office in front of what’s called the Patent Trial and Appeal Board (or the PTAB), where you can petition the Patent Office to cancel a patent owner’s claims based on the art or the technology that existed before the patent. We as a firm were the first movers at the PTAB—we filed the first four petitions. And we often do that as a primary strategy in dealing with patent trolls and non-practicing entities. We draft a patent cancellation petition called an IPR, and often, we show that to the other side to say, “If you pursue our client, we’re going to get your patent canceled.” And that takes away the patent assertion entity’s leverage, because they’re now going to be on the defense instead of the offense, and their patents, which they may want to assert against other companies, are going to be put at risk.

Ed Black: You say we were the first movers. Of course, everybody’s in there now. This is something that I think most people who handle patent disputes would say is something that’s in their toolkit in a general way. Have you had good success with this? Do we have a track record here or do you have any special twists and turns that help us be effective as we follow this strategy?

Andrew Thomases: We are one of the high-volume practitioners at the Patent Office in this field. Every year, we’re one of the top one or two law firms practicing before the PTAB. And our track record is great—once a PTAB proceeding is instituted, our group/our firm has a 96% rate of canceling patent claims. So, 96% of the claims that we’re challenging get canceled, and that gives a lot of leverage when you’re dealing with someone on the other side.

Ed Black: It seems to me that that must be the kind of thing where you don’t need to file half the time, that if there’s a 96% win rate, once you show up, people must calm down. But is that the way you’ve experienced it?

Andrew Thomases: Yes, it is one of the reasons why clients come to us is because of our success in the field, and then our reputation when we’re dealing with assertion entities. They know that if Ropes & Gray is hired, then they will have a bigger fight than if they see another law firm on the other side.

Ed Black: Moving beyond crushing troll patents, are there other things that you’d say are currently really key or top of mind for tech companies that are looking at enforcing or defending from an IP perspective?

Andrew Thomases: Yes, there are a number of aspects that involve international affairs. We are very active in what is called the International Trade Commission. That’s an agency in Washington, D.C. that has the authority to issue orders to the Customs Department to ban importation of certain products that the ITC finds have been infringing on any particular IP right, mostly patents. And so, both patent trolls and competitors are using the ITC as a tool because of the power of these importation bans, because so many high-tech products have components or the entire product built abroad and have to be imported. So, one of those orders is a very powerful tool, and we are very practiced and have a number of trial attorneys who practice in the ITC. And, in fact, I just had a bench trial virtually last year, during the heart of the pandemic, at the ITC.

Ed Black: And how did it go?

Andrew Thomases: It went very well. It was for our client, Roku. And they were actually facing a competitor who was trying to ban importation of all Roku devices and TVs. They initially asserted six patents. We got three of those knocked out very early. The other three went to trial. The Commission—first the administrative law judge, and then the full Commission—found that one of the designs that we had for Roku’s products did not infringe, and then, that was also confirmed at the Customs Office. So, it was a very big case for Roku, because their entire product line could’ve been shut down. But we were very successful, and now, you can still go to your stores or online and buy your Roku devices.

Ed Black: As a Roku customer, I’m pleased—I’m a heavy Roku user. But you mentioned that you did this during the pandemic. Were you sitting at home in your jeans trying cases? The ITC went virtual during the pandemic and we just kept trying cases?

Andrew Thomases: That is right, yes. So, it wasn’t jeans—it was shorts with a suit top, shirt and tie. But we were on video—it was my first virtual trial. And it is a little different to have to, for example, cross-examine an expert witness over a video when you’re not there right in the same room as the person. But it went well, and the judge took it under submission and issued a several-hundred-page order that was in our favor.

Ed Black: How long did that take? Is the ITC fast or slow?

Andrew Thomases: The ITC is probably the fastest docket in the IP arena. Once a case is initially filed, you usually have a trial within eight to ten months. And then the judge takes a couple months to make their written decision. There’s then an internal agency appeal process, which could last another three or four months. And then they issue their final decision, which either can ban importation or not.

Ed Black: During a virtual trial, especially at that time, people must have been telling the, “I am not a cat,” joke over, and over, and over again. Everyone had their Zoom screens appropriately working—no one turned up as a simulated animal, I take it.

Andrew Thomases: That’s right. It was quite formal.

Ed Black: Quite formal. Alright, particularly with the ITC, another thing that I read about in the news, and I just wonder if it’s affecting your practice, is, as you point out, particularly in high tech, it’s a global market, things are crossing borders right and left—that’s why the ITC is such a key forum. But the other thing you see in the paper everyday are rising tensions, particularly between the U.S. and China, and increased focus on national security concerns where something is perceived, accurately or not, to be a critical technology that we somehow need to control and keep out of the hands of certain other people. I know it’s not strictly speaking patent law, but have you been involved in that angle on the tech business? And how does it affect your day-to-day activity?

Andrew Thomases: Very interesting question—there’s actually two sides of that issue. And in fact, we have a number of clients in the semiconductor space, both the chip makers, but also the equipment manufacturers (equipment that’s used to make semiconductors). You’ve probably heard about the CHIPS and Science Act, which gives a lot of investment in the U.S. to semiconductor manufacturers. So, a number of our semiconductor CHIP companies are happy because they get funding and other support through the CHIPS Act. But some of the makers of the equipment that’s used to manufacture semiconductors are very worried about some of these export controls that were also just invoked, because they get a lot of revenue from selling, for example, to China or elsewhere overseas, and now, they also have to deal with possible sanctions and export controls. So, frequently, we refer those kind of questions to our CFIUS practice—Ama Adams in our D.C. office who deals with export controls and sanctions. It shows that we, as a firm, can service the clients in all different fields, not just intellectual property, but we do have referrals. Also, we host one of the only what’s called the Semiconductor Roundtable for Silicon Valley—that’s a Ropes & Gray hosted event, and one of the hot topics there is this issue, CHIPS Act and the export controls. And so, the roundtable is a lot of people from in-house, executives, and legal teams from CHIP companies, and it’s going to be a very, very interesting discussion, I'm sure.

Ed Black: It sounds to me like this is an open-ended discussion. You don’t just turn up and say, “I’m here to answer the patent questions.” But is that how it works—it’s an industry forum?

Andrew Thomases: Yes. Ropes & Gray members are at the dinner and the roundtable, but we’re just the facilitators. Most of the participants are the people who are living and breathing in the trenches in the semiconductor space—in-house counsel, in-house executives—and so, it’s a discussion amongst themselves facilitated by Ropes & Gray. So, a lot of different points of views are going to be expressed, and so it should be very interesting.

Ed Black: Interesting. And I take it, it’s a confidential environment. You don’t see quotes in the press the day after the roundtable, I take it.

Andrew Thomases: Correct. It’s a Chatham House Rule, so nothing is mentioned after. It is a closed event—there’s actually no recording, no PowerPoints. It is really just a dinner discussion, but with some very interesting topics.

Ed Black: I'd love to talk more about the law stuff, but as part of the R&G Tech Studio podcast series, we’re devoted to making sure people come away understanding who you are as a person. So, this is the personality test part of the interview, Andrew. I’m going to ask you a couple questions—quick questions, quick answers. Maybe we’ll talk about them, we’ll see. But they’re not about the law—just going to warn you, they’re not about the law. First, in your family, do you have any pets?

Andrew Thomases: We do. We have a dog—her name is Oakley. And she’s probably the most spoiled dog in the world.

Ed Black: What breed?

Andrew Thomases: She is half Australian Poodle and half Bernese Mountain Dog Poodle. So, she’s got a little bit of Australian Shepherd, a little bit of Bernese, and a little bit of Poodle.

Ed Black: Wow. It sounds like she’s also one of the smartest dogs in the universe with all that shepherd blood. Alright, next question: When you’re not practicing law, what’s your favorite activity?

Andrew Thomases: So, favorite activity is probably skiing. I actually raced in college, and then between college and law school, lived in Vail, Colorado for a year.

Ed Black: Ski bum? You just went there and worked as a lift guy, and skied for free?

Andrew Thomases: I was a bartender and a waiter. And then, I went to law school, looking back fondly on my year of fun. I’m happy to say that, especially my two older kids, we’re a ski family. They are probably surpassing me now with double black diamonds, back country skiing, and that sort of thing. So, that’s our favorite family activity.

Ed Black: Wow. Last one, and I already know the answer to this—it’s just too interesting for me to stay away from it. Do you play a musical instrument?

Andrew Thomases: Yes. So, I played bass guitar all through high school, college, and law school. And, in fact, I started at age nine, because my father took me to see Beatlemania on Broadway. I idolized Paul McCartney, so I got a bass guitar very early in life.

Ed Black: Do you play the bass left handed just like him?

Andrew Thomases: No, I am right handed. But I had to put it aside for family and career—for a while, I didn’t touch it. And then, when the pandemic hit, I had some free time because we didn't have soccer, baseball, and other kids’ activities, so I picked up the bass guitar, and bought myself a guitar, taught myself guitar through online videos, and also taught myself songwriting and recording. So, I started recording some rock tunes and learned how to mix them on my home computer. All this is done at home, and I play all the instruments. The drums are actually a software created drum set, but other than that, I play all the instruments. And then, I had them commercially mixed.

Ed Black: So, this is the heart of the pandemic?

Andrew Thomases: In the height of the pandemic, I had them commercially mixed, again, all remotely. I now have a set of nine songs up on Spotify, Apple Music, and other streaming platforms. And each one of them has a music video you could find on YouTube just under my name, Andrew Thomases. And in fact, I have my own website, andrewthomases.com, where all the music is.

Ed Black: Alright, let’s not miss the website plug. But just to be clear, based on our earlier conversation, so you’re getting up in the morning, you’re putting on your formal ITC trial court shorts with the business shirt and tie. Then for a few hours, you’re trying the case at the ITC—and winning. Then, time for a lunch break—you have a little food. And now, in the afternoon and the evening, you’re recording rock songs and posting up on Spotify. Is that sort of a day in the life?

Andrew Thomases: A little bit. Although during trials, I think I’m a little more focused than that. Most of the music was recorded either before or after trial.

Ed Black: So, trial was still all-consuming. And I forgot the part about where you take a little time to pet your dog, so that’s in there too. Andrew, I want to say thank you. Thank you for joining—thank you for talking about your practice. A reminder to the listeners, the R&G Tech Studio podcast series is available on the Ropes & Gray website, on the R&G Tech Studio page within that website. All the podcasts are also available, alongside Andrew’s musical recordings, everywhere you can find your podcasts, including the major platforms. Thanks so much.