Michael C. Hendershot

Jones Day

Palo Alto

Patent infringement

Hendershot said maintaining a keen interest in the cutting-edge subject matter of his work motivates him.

A self-professed gadget geek, the Jones Day partner said he's constantly reading technology journals and asking for the latest updates on his clients' products in development.

"I still very much love the craft of IP litigation and find it incredibly intellectually rewarding," Hendershot said. "You've got to stay current and on top of arguments you can make under recent developments in the law but don't lose sight of age-old arguments or doctrines that people may not be looking back to as often."

Hendershot said he applied this rule in a case he resolved in favor of his client, Reich & Tang Deposit Solutions LLC.

"I had a client who had signed a contract and licensed a bunch of patents. The contract, at the time it was signed, may have been reasonable under the law but the law had really shifted since then in terms of which patents should be valid," he said.

"It was becoming really onerous, an almost oppressive agreement that my client was dealing with," Hendershot added. Reich & Tang Deposit Solutions LLC et al. v. Island Intellectual Property LLC et al., 16-CV01085 (D. of Del., filed Jan. 27, 2017).

Dealing with nearly 60 individual patents led Hendershot to invoke a 50-year-old Supreme Court precedent to secure a new arrangement for his client. The high court case was Lear Inc. v. Adkins, 395 U.S. 653, 673 (1969), which held that a licensee who challenges a patent license agreement has the right to challenge the validity of any licensed patent, making no challenge clauses unenforceable.

After realizing the matter would not be as simple as enforcing a signed deal, the defendants in Hendershot's case came back to the table and the matter resolved.

"We're facing issues together that my clients haven't faced before, there's no playbook or precedent. You've seen a lot of evolution in the law of venue for patent cases, in terms of where it's appropriate to be suing certain companies," Hendershot said. "You stay abreast of the laws developing but you're also making some of it, or trying to."

One of the primary issues Hendershot said he faced in many of his cases was the fact that very few judges and jurors are subject matter experts on the topics they are asked to adjudicate in court.

"One of the things I've prided myself on throughout my career is an ability to take complex subject matter, be it technological or legal and distill it down in a way that is approachable and readily understandable and persuasive to a judge or jury," Hendershot said.

"In my experience they generally want to get things right and are genuinely willing to learn," he added. "If you make it approachable for them and respect them, if you present technology to them in incremental steps, like you're teaching, they'll view technology through your lens."

The attorney added he had to remember to not make huge leaps in or make assumptions about jury's and judge's understanding.

-- Carter Stoddard