Six things that decide how a patent case goes, none of which are about how hard anyone is willing to work.
Before anything is decided
Understanding before strategyPrinciple one
What it means
The patent is read first, and so is everything behind it: the application as filed, every rejection, every amendment, every argument the applicant made to get the claim allowed. All of it, including the slow parts. Only then does anyone talk about what to do.
What it means for you
Strategy chosen before the record is read is a guess wearing a suit. Two engineering degrees and a career that began in patent prosecution mean that reading is done directly rather than handed to an expert and summarized back a week later.
In their words
He developed a deep command of the patent history, understood the prosecution record better than the opposition, and identified weaknesses that materially changed the leverage in the case.
Every person who decides anything in a patent case is a person who did not build the technology. A judge. Twelve people who were doing something else last month. Sometimes a board deciding whether to keep paying for the fight.
What it means for you
The explanation has to be true and it has to be short enough to hold in one hand. If your own counsel cannot give your technology back to you in words you would use with your board, a jury has no chance of it. That is a test you can run in the first meeting, before you have spent anything.
In their words
He has substantial expertise and experience, but also has the ability to reduce the issues into consumable information for executives / board members.
A limitation added years ago to get past a rejection. A sentence in an old datasheet. A difference between what an expert says now and what the inventor said then. These are small, specific and findable, and they are what actually moves a case.
What it means for you
Pressure applied at one or two right points does more than motion applied everywhere, and it is also the difference between a case a company can afford and one it cannot. Motion everywhere is easy to bill and easy to mistake for progress.
In their words
He was also very effective at applying pressure at the right points, without letting the matter spiral into unnecessary cost or complexity.
During my career as an in-house patent counsel, having a trusted relationship with outside counsel was essential. For over 15 years, I worked with Jesse on various patent prosecution and patent litigation matters.
Composure in a courtroom is not a personality trait. It is the visible residue of work done months earlier, on the questions nobody was sure would come.
What it means for you
Preparation is also the only honest way to keep a case small. The hearings that go badly are usually the ones where a lawyer met the hard question for the first time in the room, and everything that follows a bad hearing costs money.
In their words
He meticulously prepared every detail, anticipated opposing counsel's moves with remarkable foresight, and presented our case with compelling clarity and persuasive power that clearly resonated with the judge and jury.
Undergraduate business law, graduate mathematics and an electrical engineering lab, all taught at the University of Missouri before practicing. Then Patent Academy, a training program for patent lawyers built at Shook, Hardy & Bacon, and years of continuing legal education since.
What it means for you
A jury is a classroom that did not volunteer. The skill is the same in both rooms: finding the one sentence, the one drawing, the one comparison after which a hard idea stays put. Nobody is born able to do that, and it does not come from arguing more forcefully.
In their words
Jesse has a knack for working and studying intentionally and breaking down into bite-size pieces information that would not otherwise be easily digestible.
ProSolv, a computer services company founded to help pay for college. An analyst's job at Accenture. Wharton executive education in the economics of blockchain and digital assets. Daily use of AI tools now.
What it means for you
Tools make good judgment faster and bad judgment faster. Software can read a file wrapper in a minute and still not know which sentence in it matters. Used properly it holds your bill down, which is the only reason a client should have to care about any of it.
In their words
Jesse's technical abilities are second to none. He consistently demonstrates a command of all aspects of a case and leverages his skills as a patent prosecutor to great effect in litigation.