This week, we continue our written interview with Xaviere Giroud of Kirkland & Ellis’s Chicago office, regarding her experiences co-authoring what I believe will be a seminal exploration of how design patent litigation is conducted in the United States. Please see below for Xavi’s answers to my second and third questions regarding how she came to co-author the article with Professor David Schwartz of Northwestern Law, as well as her thoughts on what was illuminating about the data they reviewed regarding design patent litigation.
As usual, I have added some brief commentary to Xavi’s answers below but have otherwise presented her answers as she provided them.
GK: How did you come to co-author a piece on design patent litigation with one of your professors at Northwestern?
Northwestern offers a unique experience for third-year law students through the Senior Research Program. Students in the program work with a supervising professor to conduct a research project over the course of one semester or the entire school year. I took Professor Schwartz’s Intellectual Property Survey and Design Law courses during my first and second years at Northwestern, so I knew working with him for Senior Research would be a good fit. I asked if he would supervise a year-long Senior Research project and he accepted.
Professor Schwartz’s Design Law class sparked my interest in design patents, but I did not have the opportunity to explore them further during either of my summer associate experiences. For me, Senior Research was my chance to learn more about design patents. Initially I was interested in whether the phenomenon of nonpracticing entity, or patent troll, litigation existed with design patents. From there, Professor Schwartz and I collaborated on a list of different facets of litigation, like choice of venue and the size of the plaintiffs and defendants, to study for lawsuits where a design patent was involved, with the ultimate goal of determining the differences between utility and design patent litigation. I spent the first semester of the project almost wholly collecting and analyzing data and the second semester of the project finalizing the data and drafting the paper. The project has continued for myself and Professor Schwartz since I graduated from Northwestern Law through submitting the paper for publication and sharing our findings with others in the intellectual property law community.
GK: Again, we are grateful for the contribution the paper has made and it is not surprising that it is the result of a lot of hard work and dedication. It is also not surprising to me that despite Xavi’s interest in design patents — an inherently interesting subject, at least in my view — she was not exposed to design patent practice during her summer associate days. As I have said before, many patent litigators actually have little to no design patent enforcement experience. But that is changing, especially with respect to enforcement efforts on platforms like Amazon, where asserting design patents is often much easier than attempting to enforce a utility patent. Additionally, the fact that most design patents are enforced in a competitor context, as opposed to the increased market share that nonpracticing entity litigation commands on the utility patent side, illustrates the importance of IP litigators being prepared to approach design patent cases with increased care and a clear understanding of what is required for a successful result.
GK: What was the biggest thing you learned from looking at how design patent litigation really works?
The biggest takeaway from my research project with Professor Schwartz is that design patent litigation truly is different than utility patent litigation. Design patent litigation has been steadily growing since 2000, but the existing literature on patent litigation as a whole fails to provide a clear picture of design patent litigation and, as I learned from our study, we can’t apply our understanding of utility patent litigation to design patent litigation.
One of the most interesting parts of the study for me was collecting data on the size of the patent asserters and accused infringers based on their revenue. Each asserter and accused infringer was classified as small, medium, or large, and the pair was assigned a category based on whether a small company was asserting a patent against a large company or a large company had asserted a patent against another large company, for example. One might think that design patent litigation is mostly made up of battles between large companies, but the data reveals the opposite — the majority of design patent litigation is between small and medium-sized entities.
GK: If anyone had any doubt that design patent litigation differs significantly from utility patent litigation, I think even a cursory read of the paper will quickly disabuse them of that line of thinking. Take Xavi’s last observation as an example. The importance of design patents to relatively smaller companies is illustrated by the fact that most design patent litigation implicates competitors of similar size. Smaller entities will usually not have access to the same resources as larger companies to fund and sustain litigation, which contributes to the high consent judgment/settlement rate we see in design patent cases, a similarity they share with soft IP disputes, but less so with other types of patent litigation.
My thanks to Xavi for the insights and cooperation, and I wish her continued success in her budding career. It is always a privilege to hear from someone who has made an important contribution to our understanding of how IP litigation actually works, and I thank Xavi for agreeing to this interview. I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.
Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.