Erik Milch's practice focuses on the representation of clients in connection with patent litigation, US Patent and Trademark Office post-grant proceedings and strategic patent counseling. He has experience litigating complex patent infringement matters involving malware detection, online transactions, call center technology, telecommunications, medical devices, consumer products and biofuels.
HTA - Tell us about your personal/professional background?
I grew up in New York and headed to Georgia Institute of Technology for my undergraduate degree. I began my professional career as a U.S. Naval Officer and went to law school as I was transitioning out of the Navy. My legal practice has evolved over the years from doing exclusively patent counseling and prosecution to primarily patent litigation today. I’ve prosecuted and litigated hundreds of patents in a variety of technologies, including a significant number of medical technology patents.
HTA - What excites you about Austin’s burgeoning health care technology market?
Austin is an amazing city with a true entrepreneurial spirit. I’ve gotten to know a lot about Austin since my oldest son first set his sights on attending The University of Texas a couple of years ago. The market in Austin is driven by a unique blend of culture and technology that is attracting some amazing medical technology companies. Austin isn’t building on decades of pre-existing institutional medical technology companies – it’s building a unique platform from scratch. The opportunity to be a part of the future of medical technology is incredibly exciting.
HTA - How do you learn? What are you reading?
I learn by consuming as much information as I can about what interests me. I start each day by reading patent case law summaries (which is more interesting than it sounds) to make sure I am up to date on the latest legal issues effecting my clients. I also read patents and articles about fields in which I practice. The best way to present a case to a jury, work with an inventor or advise a client in a transaction is to become well versed in the relevant technology.
HTA - What did you learn in the U.S. Navy that impacts how you practice law today?
The success of a young naval officer depends upon the people on his or her team and the realization that you don’t need to have the answer to every question. Learning how to work as part of a team to achieve results is something that I learned very quickly and I carry with me to this day. Bob Blake, my Commanding Officer in Iceland once said, “You can’t lead the journey to excellence from behind a desk.” Getting results is about rolling up your sleeves and getting your hands dirty. Nobody is exempt from that. Every person on the team has something to contribute and I do everything I can to make sure everyone has an opportunity to contribute in a meaningful way and feels invested in accomplishing our goals.
HTA - In your opinion, what makes Cooley such an innovative law firm?
For decades Cooley has focused almost exclusively on the representation of innovative and disruptive companies in the technology and life sciences sectors. High-growth companies have unique cultures and demands, and we believe that our focus in serving those clients allows us to better understand the dynamics of the businesses and management teams we represent. We think and operate like they do, at the intersection of the innovation and the law.
HTA - How can start-ups, as well as small and medium-sized companies, protect themselves from “patent trolls” and others who would challenge their IP?
Patent trolls have become an unfortunate part of the legal landscape. Just like any other patent, however, the patents owned by patent trolls need to be evaluated for potential infringement issues. What becomes problematic is when your company is sued by or receives a licensing demand from an entity that is stretching its patent well beyond its scope. These entities often make demands designed to encourage quick settlements. The best thing to do is quickly engage counsel to assess the facts and develop a plan to effectively resolve the situation. While it’s incredibly difficult to prevent these sorts of suits from being filed, the way the company deals with it can have a big impact on future events (e.g., investments, acquisition, etc.) and other potential plaintiffs.
HTA - What are some of the most important and fundamental legal issues a health care startup should be aware of when forming their company?
Health care startups need to be thinking about all of the same legal issues as other startups (corporate formation, investors, advisors, trademarks, patentability freedom-to-operate, etc.), but there is also the regulatory angle that comes into play. One of the most important considerations often overlooked by companies is the interplay between regulatory submissions and patent submissions. We’ve seen companies argue to the FDA that “our device is just like the predicate device” and then turn around and argue to the patent office that “we’re completely different from those devices.” There are ways to navigate these issues, but careful consideration needs to be given to the long term impact of statements made that will ultimately be discovered by investors, acquirers, or opposing parties in litigation. The best way for an early stage company to avoid a troll suit is to stay in “stealth mode” as long as practical.
HTA - Are there any pending US Supreme Court decisions that could significantly change patent law?
Inter partes Review (IPR) is a proceeding in which a party can challenge the validity of an issued patent in front of the Patent Trial and Appeal Board (PTAB). Because the standard of review for determining patent validity in front of the PTAB is not as strict as in front of a district court, companies have been more reluctant to bring lawsuits that would put their patents at risk since the inception of IPRs. In November 2017, the U.S. Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Green’s Energy Group, LLC. In this case, the Supreme Court will decide whether IPR proceedings before the PTAB are constitutional, or whether patent validity determinations must be made by Article III federal courts. If IPRs are ultimately held to be unconstitutional, we may see a larger number of patent lawsuits filed.