Reprinted with permission. The original article appears at http://www.leventhalpllc.com/2015/03/minnesota-litigator-profile-robins-kaplans-jake-holdreith-an-elite-patent-litigator/
Minnesota Litigator profiles are of Minnesota civil litigators whose practices are somewhat “niche” and who therefore are not as widely known as the depth of their expertise might deserve. Jake Holdreith has had more than twenty years of civil litigation experience in two large Minnesota law firms, but his practice is national so it’s possible you have not come across him. Jake’s practice is extraordinary and Jake is extraordinary.
Question: How long have you been at the Robins Kaplan law firm?
Jake Holdreith: I started at Robins in February, ’01, so I guess that makes it 14 years. And before that I was at Oppenheimer Wolff & Donnelly for about eleven years.
Question: Before that?
Jake Holdreith: No. I summer clerked at Oppenheimer. Although when I started at Oppenheimer they had a wonderful trial program where they ran you through the state attorney general’s office for three months to defend drivers’ license revocation administrative hearings, for people who had either failed the breath test or refused the breath test, and were trying to get their licenses back, which is really stacked in favor of the state and almost impossible to lose if you were representing the state. These proceedings were really used as a discovery vehicle by DWI attorneys who were anticipating the criminal case and using the administrative revocation hearing as a way to cross-examine the cop and find out what the testimony was going to be like at the main event.
A very wonderful way for a trial lawyer to gain a lot of courtroom experience.
Question: So that was a program at Oppenheimer back in 1990?
Jake Holdreith: Yes. I think everyone who was assigned to a trial department would be assigned a rotation through that program.
I was the very first one in my class so before I even started worked at Oppenheimer, I did work at the AG’s office for three months.
Question: Does Robins any such program?
We do not have a program like that. We try to get our trial associates to trials, with us in trials for clients, as early as possible but we don’t have a formal program. In our pro bono program, we have some trial opportunities. It is not required but there are opportunities there.
Question: As a seasoned veteran of two major Minnesota law firms, are you of the opinion that large law firms are more or less fungible, similar institutions, just because they’re in the same business and include the same kinds of people, or do the firms have unique personalities?
Jake Holdreith: That’s a great question. My opinion is that they’re quite different from each other. When I was interviewing at “Big Law” in law school, I was certainly led to believe that they were all the same. And it was awfully hard to tell as a 2d year law student what the truth of it might be because you meet a few people from a firm who are all on their best behavior, and they’re selected to impress you.
And even when I was at Oppenheimer, I had a fairly strong belief that big firms are all pretty much the same. Now based on the “n” of two that I have now practiced at and been a partner at,that is not the case at all. They’re quite different, I think.
Question: What makes the difference: strong personalities, governance structure, compensation structure, or some of all of that?
Jake Holdreith: All of those for sure. Trial lawyers in particular, which is my world, all have strong personalities, and the strong personalities of trial lawyers in all organizations impact what it is like to work in their cultures. Certainly, the compensation structure filters a certain way. Some people are drawn to one kind of comp structure and some are drawn to others. And the structures vary dramatically. And the governance makes a difference.
Firms can be more or less participatory in management decisions. Some lawyers like to just do their jobs and not worry about firm management and that suggests a particular structure. Others couldn’t stand a place where they did not feel like they had a voice in almost everything. And that suggests a very different structure.
Question: Which of those is Robins? Is is “everybody do their own thing” or is it “everybody needs to pitch in and join management”?
We have a strong executive committee, which frees people up to practice law and to take care of their clients but we have a culture of very open dialog. We have partner lunches every Monday and quarterly partnership meetings. Plenty of chances for the exchange of ideas. It’s a good balance.
My personal view is that it is a culture where anyone who has got something to contribute to management can do it. But there are a few lawyers in our firm that really just want to tend to their clients and let other people take care of the minutia, so it’s a pretty good balance.
Question: You are 100% a patent litigator?
Jake Holdreith: 100% is strong, but yes. I will not qualify. A lot of my cases have trade secrets, some copyrights, other issues like that, an occasional non-competition agreement. Often those are mixed together with patent issues. The main thrust of my practice is certainly patent cases.
Question: And that has been the case for the past 15 years?
Jake Holdreith: Yes. And also at Oppenheimer, for the last five years there, as well. So it’s over 20 years.
Question: Your practice is national?
Jake Holdreith: Yes.
Jake Holdreith: To an extent. These days the international part is the discovery piece in cases venued in the United States for the most part.
As a younger partner, I used to have cases where we would sue out the patent cases in Europe, as well, which was really interesting, sue out cases in Netherlands, Germany, Sweden, and places like that. So I have some experience doing that. And it looks like that might be coming again. There are going to be economic and tactical incentives for filing in Europe again.
But these days, I am taking discovery in Asia frequently in my consumer electronics cases. Europe in my life sciences cases.
Question: What are your cases that are keeping you most busy right now?
Jake Holdreith: There have been a lot of drug cases lately, which I enjoy. Pharmaceuticals. The Hatch Waxman statute is its own very interesting corner of the life sciences patent world.
I just tried a case in New Jersey in December. The product is called Intermezzo. It is a middle-of-the-night dose of Ambien and we represented a company that would like to make its own version of that drug. So we were challenging the patent sin that case.
And those are very interesting cases. The subject matter tends to be interesting and complex. The lawyers tend to be very competent. So it’s challenging. The cases go to trial for reasons having to do with the economic incentives and that tracks from the statute. Trial is what I like to do. So I like those cases.
So I have another we’ll likely be launching in another couple of weeks that we’re getting ready for.
Question: So these are lawsuits on patent validity or patent scope?
Jake Holdreith: It is often on patent validity. It is sometimes on patent scope. These lawsuits happen before the new drug is launched into the market. The Hatch Waxman statute has a fairly unique structure that requires that someone who wants to market a drug that references another drug that is patented, that person has to notify the patent-holder prior to approval of the drug by the FDA. And then you can have a patent suit about whether this new drug would infringe the patents or not before it is ever approved and on the market.
So there is no damages piece in these cases. If it is a generic copy-cat drug, that’s going to be a validity case, usually. If it is another kind of filing that we call a 505(b)(2), there might be a different formula for the drug but it will reference the patented drug and that will probably include an infringement piece.
Question: How long was the trial in New Jersey?
Jake Holdreith: It as a 10-day trial before the judge in Newark.
Question: These are all generally bench trials?
Jake Holdreith: Hatch Waxman cases are generally bench trials. Very rarely there will be a suit after a drug launches and that could be a jury trial. The vast majority are bench trials.
Question: How many witnesses over ten days?
Jake Holdreith: Live witnesses — these cases are very expert heavy — there were probably ten or so. And then a number of depositions were played as well.
Question: How big was your trial team?
Jake Holdreith: We use really small teams in those cases. I had one of my partners in New York with me. I had a very senior really talented associate. And a newer associate. So there were four of us on our side.
Question: No technical people? No computer people?
Jake Holdreith: We had a consultant. There were two other defendants in the case so we shared the technical consulting. So we used a vendor for that.
But I run my own tech at trial for the most part. I like to have control of the presentation. So I don’t use the vendors very much for that.
Question: What is your “tech”?
Jake Holdreith: I almost always run the presentation of evidence through Trial Director. I present all of the evidence on screen. I stay away from PowerPoint. You see a lot of people trying their cases by PowerPoint, specially the experts’ examinations.
I think that is a mistake and a lazy and a poor way to do that.
What I can do with Trial Director that I really like is that I can make decisions on the fly about exactly what to present, how to present it, what to enlarge…
Question: You actually sit there in front of the lap top and manipulate the images while you yourself are questioning?
Jake Holdreith: Yes. I do. I do it with a laptop that I have at the podium with me. You control the mouse for the most part. The nice thing about that is that you’re not telegraphing to the other side exactly what your examination is going to be. If you do it by PowerPoint, those are demonstratives and you have to disclose them in advance.
You know, when I am defending a witness, that is one thing. But when you are putting a witness on, if you give the other side the entire presentation in PowerPoint, it creates huge advantages for the cross-examining lawyer. That lawyer knows exactly what the testimony is going to be and had a couple of days to prepare the cross.
Question: As someone who practices far more nationally than most Minnesota lawyers, do you think the practice of law is particularly different here as opposed to other jurisdictions in any respect?
Jake Holdreith: The majority of my practice is in federal court where there’s a patent involved. Occasionally, I handle a contract matter or a non-compete, that may be in state court. State court systems do vary quite a bit by culture, by rules. In the federal system, I would say that it’s — particularly in my world of intellectual property cases — there is a lot of commonality from district to district in how the lawyers handle their cases.
There are some important local rule differences. For example, in California, their rules are much more prescriptive about how the case gets handled through discovery and how the disclosures get handled. There are a lot of things that happen automatically and mandatorily.
In Texas, where I tried a couple of cases, I like it that that system, in a somewhat informal way, requires lawyers to be very forthcoming in their disclosures without being asked. You don’t necessarily use written discovery requests. You don’t use document requests so much. The rule is that you turn over anything you would want to see if you were on the other side and people comply with that, interestingly. That’s not to say there aren’t motions to compel or letters that go back and forth (“I’d like to see this or that or the other”) but that is a very different practice from ours here in Minnesota.
Question: Is that the district in Texas that is famous for patent litigation?
Jake Holdreith: Yes. It is. It’s the Eastern District. And it’s interesting. The courts sit in smaller towns. Marshall, Lufkin, Beaumont. These are very small towns. It is an interesting experience to try a case there.
Question: Do you have any particular trial story that you regale people with at parties and dinners?
Jake Holdreith: [Chuckle. Pause.] Lots. Normally they go on for an hour or so. So I have to assemble my thoughts to fit them into this format…
One of my favorite trials was in Beaumont, in Judge Clark’s courtroom, and it was a patent case and the defendant was Apple. The accused products were iPods. And I got to take the first every deposition of a guy named Tony Fadell. Apple called in Fadell when they decided to make a foray into the iPod music player.
It is hard for people to remember that time, a time when Apple was a computer company. They made laptops and small compact desktops, only.
The company was on the ropes. There were predictions that Apple was going to fail.
This would have been late 1990’s.
Almost as a side-product, they decided to make a music player which was part of what they called “the digital hub” at the time. We now all think it is normal that we run our entertainment through our computers but, at the time, nobody did that.
So Apple called this guy, Tony Fadell, who was a real whiz kid. He’s a wonderful and interesting guy. And he is now at Google where he works on Nest.
Tony engineered the first iPod. Although Apple has been involved in lots of lawsuits, at the time Tony Fadell had never been deposed. We took his deposition. We got what we needed. The trial turned out very well for us.
But the rest of the story is that there were some documents that came to light shortly before trial that involved Fadell and so Apple agreed to produce Fadell for more deposition. We took the supplemental deposition literally the Sunday night before we opened on Monday morning. I did not take the deposition. A colleague did. Fadell arrived in Beaumont at about 11:30 p.m. in a giant stretch limousine. He had apparently negotiated “rock star travel conditions” with Apple. He had recently left Apple and was consulting for Apple.
It was high summer in Beaumont, which is damp, oppressive heat. He gets out of the limousine. He is in flip-flops and shorts. He hasn’t shaved. He goes straight into the deposition, which is not being video-taped. He was a little nervous. Until the examining lawyer showed up, also in flip-flops and shorts to take the deposition and they went until about 2 in the morning.
Those trials go very fast. We tried that case in about 7 days even though we had at least a couple of patents in the case and more than a handful of iPod models at issue — four iterations of the software, as I recall. Our proofs involved effectively twenty-five different combinations of software and hardware. In any other court, that would have been a month-long trial. But the trial judges in that district are firm believers in timed trials. They give you a very few hours to put your case on. And you need to distill your case down to the essence. That actually works well for me.
We got an infringement verdict and ultimately got that reduced to a judgment.
Question: If you could change part of the legal system that you work in, what would you change?
Jake Holdreith: There’s been an incredible amount of change in judicial interpretations of patent law over the past ten years. Sea changes. And they happen really quickly. Over a period of months. You can file a case on one theory and have that theory be eliminated while the case is pending and it creates tremendous uncertainty for everyone involved. For patent owners. For defendants trying to design around patents. For companies trying to handicap risk and liability. And I think it’s led to a world in which those cases are hard to settle because nobody knows, nobody can predict with confidence, what a range of possible outcomes looks like.
So it means that patent cases are really resource intensive. Many go up on appeal because it is extremely hard to predict how the Federal Circuit, the appeals court for patents, will rule. The polite way to say it is that there decisions are very nuanced.
A less polite way to say it is that there is some panel dependency. There are some cases where your prediction of the outcome of an appeal is highly dependent on the particular three judges who are assigned as the panel for your case. And you don’t find out until the day of the argument.
So I think people who operate in the intellectual property world tend to be fiendishly intelligent, very comfortable with complexity, and they make very nuanced arguments. These are some of the things that make the practice wonderful but I think it has led to so much nuance in decisions that it is a disservice to the interested community.
Question: How could you solve that?
Jake Holdreith: It’s a problem. It’s cultural. It is not easy to solve. At the moment there are gigantic tectonic forces at work pulling on the patent law. Everyone knows about the Apple/Samsung patent wars that are literally global, with suits all over the world, for billions of dollars, with unimaginable stakes. And it’s not just Apple and Samsung. You see this in the telecommunications industry, in life science, where I practice.
The result is that the issues are not fought out only in courts. There is tremendous pressure on Congress. Tremendous pressure even for import cases at the ITC– the President has been asked to veto some of the results when a product is found infringing and is banned from import.
And there are huge differences in points of view. In general people would say that in the high-tech industry, telecom, software dependent industries, they are skeptical about patents and feel that patents are often an obstacle to what they want to do.
In the life sciences industry, on the other hand, they’re apt to viewed as a critical pillar of the business model. So I think it is hard with that type of war going on.
With the amount of money at stake, the incentives are incredible to push every argument and to push it to the nth degree.
It would really take some kind of unprecedented incredible act of Congress or a decision by the interested community that they want to reign in the uncertainty and the expense of patent litigation to make fundamental changes.
Question: If you were advising your kid who’s just now considering law school, would you say, “Go for it!”?
Jake Holdreith: I would be a lot more likely to say go for it today than I would have been five years ago. Recently, I feel like trial lawyering is a bit like the NBA where, if you get the top job and you’re a starter and you get to play in the big show, it is one of the greatest jobs anybody could ever hope for. But the number of people who want that job versus the number of jobs available has been grossly mismatched and it’s terrible.
You see young people who have worked really hard and spent a lot of money to get a law degree, competing for not enough jobs that meet their talent level and their skill level.
I feel like that’s changing. Law school enrollments are way down. That’s one thing, the supply side is getting addressed. But I also feel that, as the economy is improving and the supply problem has been regulated a bit, my prediction is that opportunities will be getting better for people going to law school today than they have been for several years.
Question: Would you direct young lawyers to any particular areas of law, as growth or opportunity areas?
Jake Holdreith: It is hard to predict but the places where I see growth over the next ten years… life sciences, which is where I spend most of my time. The advances right now in bio-tech, gene-based therapy, personal medicine and the convergence of computerization with health are creating huge focus and huge complications. Data privacy. Data security. These areas are huge right now and I don’t see that going away quickly. We see this is an important area today but I think it will be important for some years.
I think healthcare might be an area of some litigation as we switch from a third-party payer with fairly limited brakes on how much we spend on medicine, moving into a system with more feedback in the system, more checks on what we spend, more interest in federal government control of that spending. I think that will result in a lot of disputes and a lot of opportunity.
Question: If you could get on a soap-box and say something to the Minnesota bar, what would you like to say?
Jake Holdreith: In general, the quality of Minnesota lawyers is remarkable. We have a wonderful group of lawyers in the state. Smart people. Good people. People of good faith and good will for the most part. And we’ve largely managed to maintain a civil practice. The word, “civil,” is grossly overused but I think it is important and stands for something important. And you see some cracks in that culture. And I think that is a disservice to our clients, to the bar, to the courts, to the people.
Our job is to advocate for our clients but it is also to solve problems.
What I would urge my colleagues to do is to think deeply about our role as problem-solvers in our society and put that pretty high on the list of what our function is. That makes us more valuable and makes the job more rewarding.