Coronavirus Q&A: Fish & Richardson's PTAB Group Co-Chair

By Dani Kass
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Law360 (July 10, 2020, 9:22 PM EDT) -- In this edition of Coronavirus Q&A, the co-chair of Fish & Richardson PC's post-grant practice group discusses adjusting to remote proceedings at the Patent Trial and Appeal Board, what patent concerns may be coming down the line and how he ended up quarantining in Virginia with a trio of mail-order ducklings.

W. Karl Renner

W. Karl Renner, who has argued before the PTAB multiple times during the pandemic, is a 20-year veteran of Fish & Richardson, where he serves as a principal in its Washington, D.C., office. Earlier in his career, Renner worked for intellectual property firm Birch Stewart Kolasch & Birch LLP and Pillsbury Winthrop Shaw Pittman LLP, and as an engineer with the U.S. Department of Energy.

Renner discussed how his patent litigation practice has had to adjust to social distancing requirements as part of a series of interviews Law360 is conducting with prominent lawyers about legal and business challenges from COVID-19.

This interview has been edited for length and clarity.

The PTAB already had an element of remoteness to it. Can you explain how it's changed?

They really prepared themselves wonderfully for this. It was commonplace before the pandemic that one or more judges were remote during hearings where people were presenting live, and they were being brought in by video. Sometimes you'd have two remote judges. I had never had a case where there were three, but I'd heard of cases where that was true. Moving from one remote judge to two remote judges or three remote judges is a very minor step because we're already used to seeing one of the judges remotely on video.

In the hearing themselves, there's not a tremendous change. The PTAB is now conducting their hearings with video, and we're still able to interact with the judges and opposing counsel. They were built for it and, from our perspective at least, they really transitioned nicely to a situation where we all can still have hearings in a way that's informative.

In fact, it's interesting that when we have the video monitors close to us, we actually can see the judges and opposing counsel even a little better, as we're a little closer to them. You do lose the in-the-room feel of a hearing and there is some information lost, but it's as good as it can be.

The briefing schedule hasn't been modified terrifically. And like all litigation, there are depositions. That part is the most greatly affected. Like any other form of litigation where there's depositions, you accommodate. It's not a perfect situation, but it's not a perfect world we live in at the moment.

How have you been dealing with teams being in different locations?

In the same way the PTAB was built for this, I think our firm was built for this as well. We have numerous offices throughout the United States, and for many years we've encouraged attorneys to work with people outside of their own office. Our teams are really designed to bring the right talents and experiences together without regard for location.

It is almost uncommon to work on a case with a team that is fully staffed by people in the same office. That's been the case for many years. Even our management and mentoring has really been distributed. There was a time when I was mentoring and managing attorneys in our San Diego office, and it's just not at all abnormal for us.

Because of the geography and the way we work, it has not been nearly as big of a moment as you might expect.

How have in-person limitations affected your relationships with clients?

That's harder. That is a place where special attention has been needed.

It used to be that you got on a plane or drove to see clients, and so the interactions might be more telephonic and less frequently in person. This pandemic has really forced everyone to get more comfortable with video. I find we actually have more pseudo-live interactions, more frequently and with a greater number of people, than we used to have. I think there's no substitute for human interaction. Video is always going to be second-best, but it's not a terrible second-best, and it does allow us to see a large number of people in the client teams and lets them see a larger number of people on our side more regularly.

Have you seen any changes in what work clients are coming to you with?

Not because of this. There's changing the process and the procedure and there's accommodating the changes that are happening at the PTAB, but the problems themselves are still fundamentally the same.

The one place that maybe would change is that district court trials had stopped for a period of time. What was asked of us wasn't different, but our need to deal with the change in schedule of litigation did create some legal questions. These proceedings are almost always part of a larger dispute, and when that dispute stops for a period of time, that can have some effects.

I imagine more changes are happening on the patent prosecution side.

I think that's right. It might change a couple of years from now — what's important, what technologies, maybe it accelerates videoconferencing, for instance. You can imagine all the changes that are happening on the back end of the telecom side to support all the video, all those things are having to accelerate along with it. But that's going to take a while to filter into what we're doing.

What are the biggest concerns you're hearing from clients?

Their personal bandwidth and their budgets. Harmonizing their legal process with their business reality and trying to find a way to keep up.

While the questions they're asking of us as it relates to this have been consistent, many of our clients have a great range of legal responsibility and they have a lot of new problems, new issues that they're having to contend with, often with reduced staff and sometimes with reduced legal budgets. And they still have the old problems. So they're having to find a way to solve all the problems they used to solve, plus a suite of problems that come with COVID issues, and they're doing this in a corporate environment that is often asking them to do it with less people or less money. So when we're talking with clients, we try to keep in mind that they have other issues that are important to them. It's important to have that conversation with them and to be sensitive to that.

I've heard you're essentially living in a zoo right now.

I have daughters that are 17 and 18 years old, and one of them in particular just loves animals and always has. We've always had our dog, we've had an assortment of friends that have lived with us that include tree frogs and bearded dragons and fish, of course, and guinea pigs, but we recently added a ball python, a canary and three ducks that round out the troop. There's a lot of legs in the Renner household.

My daughter decided during the pandemic that she wanted to raise ducks, and so one day she asked whether it would be OK to have a couple of ducklings, and two was the number we agreed on, and apparently they'll mail them to you. She went to get them, and when they came in there were three. So we have three ducklings. They're sweet, they're really cute. Right now they're outside in the front bushes, so we'll sit with them, bathe them, let them have a swim, and they stay in her room at night. The dog and they get along quite well. He walks around after them and they walk around quacking.

The Renner family's new ducks (Courtesy of Karl Renner).

--Editing by Alanna Weissman.

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