3 Questions For IBM's Chief Patent Counsel

Columnist Gaston Kroub interviews Manny Schecter, a leading voice in the IP community.

Manny Schecter

It is hard not to think of Big Blue, IBM, when thinking about the state of the U.S. patent system. The company’s place in the pantheon of U.S. innovators is well-established. It is no surprise that the company’s IP alumni include a former Director of the United States Patent and Trademark Office (David Kappos, now at Cravath), and that its current chief patent counsel, Manny Schecter, is a leading voice in the IP community.

We are fortunate, therefore, that Manny has agreed to a written interview on hot issues in the patent world. I reached out to Manny on the heels of reading a few of his opinion pieces, and recommend that anyone interested in seeing his views in-depth seek out and read them (e.g., this IPWatchdog column). As usual, I have added some brief commentary to Manny’s answers below (in brackets), but have otherwise presented his answers as he provided them.

GK: As Chief Patent Counsel at the perennial leader in U.S. patent filings, you are responsible for a sizable infrastructure of in-house and outside attorneys, paralegals, and others charged with helping IBM build and maintain its patent portfolio. Considering the recent prevailing sentiment about the declining value of U.S. patents, what techniques do you use to help motivate your team to continue operating at the level IBM needs them to?

MS: We motivate the team by aligning our objectives with those of the company overall and communicating those objectives to the team. IBM is an innovation company and invests billions of dollars each year in research and development. Our U.S. patent leadership demonstrates IBM’s innovation prowess. We regularly review the direction of our business with company senior leadership and adjust various dimensions of our patent strategy including patent filing volume, technology mix, geographic mix, maintenance, and more. We then inform everyone on our team of the updated strategy and how it came to be to ensure “buy-in” from the team. The recent decline in value of U.S. patents is a concern, but we continue to believe in the U.S. patent system and work to improve the recent well-intended changes to the law that occurred in response to prior abuses.

[GK: It is heartening to hear that IBM continues to prioritize innovation, and is willing to work as an agent of beneficial change in the U.S. patent system. As such a prominent and prolific “user” of the nation’s patent system, IBM’s voice is an important one — and lends weight to the concerns of smaller innovative companies and individual inventors who may not have IBM’s platform or position.]

GK: Because of IBM’s outsized importance in the U.S. patent ecosystem, you have rightfully become an important voice urging for sensible USPTO reform. How do you try and balance the need to forcefully advocate for changes you and IBM consider necessary with the need to maintain a favorable public perception about the value of IBM’s patent portfolio?

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MS: We seek to optimize the patent system’s promotion of innovation and remain confident in the value of our patent portfolio. We understand that our advocacy for certain reforms may sometimes present a different impression to others. Patentees should not have to face the expensive and time-consuming hurdles that currently exist to monetize their patent assets. A large well-funded company like IBM has an advantage as it can afford to stay the course and enforce its patents. Smaller patentees may not have the same luxury. In addition, the rhetoric used by some in recent years appears to have misinformed the public about the importance of the patent system generally. The patent system may retain a “black eye” in the minds of the public long after debates about the need to strengthen or weaken the patent system have subsided.

[GK: Manny raises an astute concern regarding the public perception of the U.S. patent system. No matter which way the pendulum swings with respect to inventors’ rights, there is no doubt that the concerted public campaign to tar patent owners of all types as “trolls” when they choose to enforce their patents has taken a toll. At the same time, sensible reforms that restore balance to what many now consider a patentee-hostile ecosystem could be a first step towards improving that public perception over time.]

GK: How important do you think the upcoming Oil States decision will be to U.S. patent practice, and what steps if any are you considering to deal with the fallout — regardless of which way the decision turns?

MS: The importance of the Oil States decision depends on the decision itself. If the decision finds the post-patent grant challenge proceedings to be unconstitutional, the impact will be profound. The outcomes of prior challenge proceedings and their impact on the validity of patents in those proceedings will be called into question. Obviously, the need for reforming the proceedings would be eliminated. If the decision finds the proceedings to be constitutional, the impact would be much less disruptive, but the devil would be in the details. I listed some of the issues with respect to the challenge proceedings here. Some of these issues could be addressed by the USPTO, and perhaps Andrei Iancu will consider them once he is confirmed by the Senate as the new USPTO Director. Greater availability of claim amendments during challenge proceedings could provide a better balance of outcomes and mitigate the need for additional changes. Given the wide variance in potential impact, we are only able to speculate as to precise steps we might eventually consider taking after the decision.

[GK: At bottom, we are in a state of profound uncertainty because of Oil States and the outsized impact that Inter Partes Review (IPR) proceedings have had on the entire US patent system. Speaking personally, I think this may be the most important pending Supreme Court patent case of my career, at least in terms of potential impact on my day-to-day practice. I am sure I am not the only one with that view.]

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My thanks to Manny for the insights and cooperation, and I wish him continued success in his role at IBM. It is always a privilege to hear from an important IP personality, especially one with such considered and well-articulated views on what reforms are necessary to help foster innovation in our country. I am always open to conducting interviews of this type with other IP personalities, 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.