Daily Report Feature: Taylor English Adds Patent Capabilities

February 18, 2010

In The Trenches: By Meredith Hobbs, Staff Reporter Jeffrey R. Kuester has left intellectual property boutique Thomas, Kayden, Horstemeyer & Risley to develop a patent prosecution practice for Taylor English Duma. Kuester is the firm's first patent prosecutor, specializing in electronics, software and telecommunications patent applications. Kuester, a founding member of Thomas Kayden in 1996, said Taylor English also gives him the opportunity to develop his patent litigation skills. “I've done some patent litigation and would like to do more,” he said. He added that it is more difficult to expand into patent litigation in a firm such as Thomas Kayden where there are already plenty of patent prosecutors who are also established litigators. He added that Taylor English plans to hire patent agents to support the patent prosecution work. Daniel R. McClure, Thomas Kayden's managing partner, was out of town and not available for comment. Kuester said he became interested in the Taylor English model after talking to firm partner Gregory G. Schultz, whom he knew personally, and Perry McGuire, whom he knew from McGuire's tenure in-house at Chick-fil-A before McGuire joined Taylor English. “Patent prosecution has become more cost-pressured over the years,” said Kuester. “Taylor English is well-positioned with regard to its low overhead and rate structure to address those changes.” Taylor English is comprised almost entirely of partners, with few associates, and occupies suburban office space to keep overhead lower than at big Midtown firms. Two high-profile clients for Kuester are Bernard Bilski and Rand Warsaw, whose case over a patent application was argued at the U.S. Supreme Court in November. Bilski v. Kappos is being closely watched because it is expected to set parameters for what can be patented as a business method. Kuester is representing Bilski and Warsaw, who have an interest in the prospective patent but are not its owners. Finnegan, Henderson, Farabow, Garrett & Dunner is representing EQT IP Ventures, the putative patent holder in the litigation. Bilski and Warsaw applied for a patent in 1997 for what they say is a mathematical process that makes energy costs more predictable for utilities, by factoring in weather fluctuations and the effect on supply and demand in advance, so utilities can bill customers at a fixed monthly rate. The two started WeatherWise to offer this service to utilities. Bilski left the company in 2003, but Warsaw still runs the consultancy. The business method patent was turned down by the U.S. Patent and Trademark Office and then the federal appeals court. “That decision was the first in a long time that put the brakes on business method patents,” said Kuester. The two inventors appealed to the Supreme Court, and sixty-seven amicus briefs were filed in the case. A ruling that Bilski and Warsaw's process is not a patentable business method would put a freeze on the burgeoning field of business-method patents, said Kuester, who believes allowing such patents fosters innovation. “If it's not patentable, people will keep it a trade secret and proprietary,” he said. “That's been my professional life. I'm looking out for the inventors.”

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