John “Jay” Neukom

In late March, John “Jay” Neukom was settling in behind his new desk at Debevoise & Plimpton LLP in San Francisco, where he’d moved just days earlier. Debevoise’s new outpost opened in 2021, the third U.S. location for the firm as it seeks technology clients.

The former Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates partner appeared to be a good fit for that ambition. Neukom was the head of Skadden’s West Coast IP litigation practice and co-head of its firmwide IP group. Earlier, he’d worked at Quinn Emanuel Urquhart & Sullivan LLP.

Neukom said he’d been happy at Skadden, but Debevoise offered a business model that fits the way he likes to practice law. “It’s the pure lockstep model. There’s no compensation committee, no compensation memo at the end of the year. The partners share in a nondiscriminatory way. It’s a better way to practice without having to think about the compensation side and who gets credit. So I voted with my feet.”

His Skadden clients came with him. On his first morning at his new job, Neukom said, one favorable result rolled in for a major roofing company he’s defending on patent infringement claims by a rival over software used in aerial roof survey techniques. Eagle View Technologies Inc. v. GAF Materials LLC, 1:21-cv-10669 (D. Utah, filed May 4, 2021).

“I learned my motion was granted to transfer the matter to Utah,” he said. Though GAF operates from its New Jersey headquarters, Neukom sought the move because the same plaintiffs have a suit pending there involving many of the same patents against a different defendant. His view prevailed despite the plaintiff’s preference that the matter be litigated in New Jersey. “I expect a hard fought battle” as the case progresses, he added.

Meanwhile, Neukom continues to represent longtime client Fortinet Inc., a cybersecurity company currently suing a competitor. “The case continues to gather steam,” Neukom said. In June 2021 U.S. District Judge Edward Chen of San Francisco declined to invalidate any of Fortinet’s cybersecurity technology patents under the defendant’s Alice challenges. Fortinet Inc. v. Forescout Technologies Inc., 3:20-cv-03343 (N.D. Cal., filed May 15, 2020).

“That result in this district is unusual,” Neukom said, referring to the court’s reputation as a good place to invalidate patents. “Now we’re beginning claims construction.”

Neukom said his former Skadden colleagues and his clients supported his move to Debevoise. “Skadden has shown the utmost in professionalism, making this a friendly and productive process. As you know, that’s not always the case when a lawyer changes jobs.”

– John Roemer