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Ropes & Gray attorneys provide timely analysis on legal developments, court decisions and changes in legislation and regulations.
Andrew Radsch: Hi. I’m Andrew Radsch, partner in the intellectual property and litigation practice, and lead of our firmwide semiconductor sector at Ropes & Gray, located in our Silicon Valley office. I want to welcome everyone to the latest episode of the R&G Tech Studio podcast. In this edition, I have the great pleasure of welcoming my friend and colleague, Rachael Bacha. Rachael is counsel in the intellectual property litigation group here at Ropes & Gray, based out of our New York office. Rachael, welcome.
Rachael Bacha: Thanks so much, Andrew. It’s really great to be here.
Andrew Radsch: I know you and I have worked together for quite a number of years and have known each other for quite some time, but how long have you been at Ropes & Gray?
Rachael Bacha: I’m a Ropes & Gray lifer. I was a summer associate back in 2008, and I’ve been with the firm’s IP litigation group ever since. Because of my technical backgrounds—genetics and computer science—I had initially started out much more on the more technical side of our cases, but in the last five to six years or so, I’ve been focusing my practice on IP damages issues.
Andrew Radsch: That’s great. I’d like to touch on that a little bit more, but first, tell us a little bit about the types of cases that you’re working on.
Rachael Bacha: Because of my technical background in both life sciences and computer science, I’ve always worked in cases centered in a really wide variety of technical areas: from the life sciences—that’s pharmaceuticals, biotech, medical devices—all the way to consumer electronics and semiconductors. And since bringing my focus to the damages sphere, that breadth has really only expanded.
Andrew Radsch: You mentioned focusing on the damages sphere. Can you tell us a little bit more about that? What does that entail? What types of issues are you focusing on? And who are you working with?
Rachael Bacha: The damages case is, of course, the money. What’s the case worth? What does the defendant have to pay, if anything, for use of whatever the accused product is if they’ve been found to infringe? There are a lot of really critical issues that the damages work touches on. Specifically, I think one of the biggest issues right now has to do with the increased globalization in really everything. In the context of damages work, globalization really affects where products or their components are designed, tested, advertised, demonstrated, manufactured, exported, imported, incorporated into other products—things like that. That happens all over the world, and each of those things can happen in a different place. When you’re dealing with a damages case, you can only get damages for infringement that happens in the United States, and this is specifically in a patent context. But there are instances in which you could get damages based on sales that are made outside of the United States. And so, with increased globalization and what I was saying earlier about the different places where these different points of the product life occur, that you might be able to capture a sale that occurs outside the United States, because of things that happen within the United States. The calculation of damages and what sales may actually be incorporated into your damages base can be a really complex one.
Andrew Radsch: That sounds fascinating and also challenging. Have there been any recent developments in that space that have impacted the type of work that you’re doing or the advice you’re giving to clients?
Rachael Bacha: Yes, absolutely. The Supreme Court came out with a decision in WesternGeco v. ION Geophysical, I think, in 2018, and that case specifically expanded the scope of damages. You were able to pursue certain damages based on sales that occurred outside of the United States, and it was specifically in the context of lost profits. So, that began this expansion into being able to seek damages based on these foreign sales. Then, just in March, the Federal Circuit came out with this case, Brumfield v. IBG LLC. In Brumfield, the Federal Circuit clarified WesternGeco, in that in patent cases, you would be able to seek extraterritorial damages for direct infringement, including a reasonable royalty. Reasonable royalty is the more common sort of damages and/or a way of calculating damages in patent cases. Those two cases have been pretty important in expanding the ability to seek damages based on foreign sales.
Andrew Radsch: One of the things that I love most about being a patent lawyer is that not only the legal landscape, but the technical landscape is constantly shifting. How are you helping your clients keep abreast of these developments, especially in the damages sphere?
Rachael Bacha: Figuring out what sales may be drawn into your damages assessment can be really complicated, and it’s definitely a part of every case. We have to address them, whether we’re a plaintiff or whether we’re a defendant, and so, I think really understanding our clients’ and our opponents’ business is really critical. We have to understand where they develop their products, where they’re tested, how they’re advertised, whether they’re demonstrated in the United States, where they’re manufactured, how and where they win sales—all of these things. It can be extremely complex, and I think understanding the landscape of cases and really staying abreast of decisions in this area is incredibly important. In the Brumfield case, the Federal Circuit explicitly left open some very important issues about causation specifically, and we need to follow those cases to be able to determine the best way to help our clients, whether that’s seeking extraterritorial damages or defending against that.
Andrew Radsch: It sounds like you’ve worked across a wide variety of technologies, which I’m sure must just keep your practice all that much more interesting. Other than patent cases, do you also work on other types of matters?
Rachael Bacha: I do—I work on a lot of different types of matters, really everything IP-related. Patents, of course, is a big part of my practice, but I also do trademark, copyright, a lot of trade secret, false advertising—really all of it. I’m currently working on a big copyright/trade secret case that has an awful lot of technical issues in it. It’s been really exciting.
Andrew Radsch: That’s really interesting. Do you have a favorite type of case to work on?
Rachael Bacha: That’s a tough one. I probably do most of my work in patent cases, although in recent years, I can’t even say it’s most of it. I really enjoyed working on false advertising cases—it was something new to me maybe about five or six years ago. I love learning new things, which is of course what keeps us in IP litigation. I’ve really enjoyed doing the trade secret work—the investigation is really exciting and interesting.
Andrew Radsch: I bet. It sounds like one common thread across your practice is that they all involve technology. I certainly view myself as a technology lawyer and certainly view you as one too. Curious for your views on the ways that you see technology really impacting your clients right now.
Rachael Bacha: As you said, as an IP litigator, our practice literally is technology—it revolves around technology. Technology permeates quite literally every single aspect of every case we handle. For me and my practice, it’s really looking at those specific damages issues, looking at how globalization affects the clients’ product life cycle, understanding those issues, and how those affect damages, whether we’re seeking them or defending against them. I also think one of the big ways that we’re looking at it is to help our clients be more efficient with their cases—we can do things like using AI in the discovery process and document review. I think that’s applicable to every client—we’re always looking to do our work better, faster, and in a more cost-effective manner. AI tools have been able to help us more efficiently review documents, categorize documents, and understand, I think, factual narratives as they relate to specific witnesses, and that can be really helpful.
Andrew Radsch: You mentioned AI. It seems to me that you can’t open the newspaper these days or even a legal publication without reading an article about AI. I’m curious for your thoughts on—if you look into the crystal ball a year from now or five years from now—how you see AI affecting the types of cases that you’re working on and the type of industries that you’re working in.
Rachael Bacha: As it pertains to all of our clients, things like the use of AI in the discovery process will, I think, become just bigger and bigger. As for what types of cases we get, AI can also be an issue in patent inventorship. An AI system cannot be an inventor—it has to be a natural person. AI is used often to do things, especially in the life sciences, to look into, for example, what protein structures might bind to a receptor to help develop therapeutics and things like that. I think you’ll see a lot more cases—and you are seeing more cases—where AI is used with the help of a human to determine protein structures and things like that. Cases like that will probably be more prevalent as far as other industries where AI could be used to generate inventions. You’re seeing it in coding, so computer software—probably cases like that.
Andrew Radsch: You mentioned a little bit about the use of AI in the discovery phase. I’m sure really any client would welcome technologies and improvements that reduce their costs in the discovery space. What sorts of tools are you using or seeing being used to help streamline that process?
Rachael Bacha: There are more basic ones, I think, that use keywords. A group of attorneys has to actually train them, these AI tools, based on existing documents. You’ll have a group of attorneys do a sample document review set that’s then used to train the AI tool in what documents are critical, and so, the AI tool will use things like keywords. But these tools are getting better and better, and we’re seeing now that there are tools using natural language actually and being able to understand the narratives within the documents as opposed to just doing keyword searching. I think as that improves and those technologies improve, the discovery process will become much more streamlined, and you’ll have these tools able to help us not just figure out what documents are key and what documents aren’t key, but actually help us prepare for depositions and for trial testimony in really being able to lay out a narrative, being able to understand not just what documents are associated with what person, but what key factual issues are associated with what person or people, and that’s really exciting. I think as these tools get better, you’re going to see a lot more efficiency come into the document review process, which I think our clients will be very happy about.
Andrew Radsch: Absolutely—that sounds great. I definitely look forward to those advancements and being able to take advantage of them. You’ve worked across so many different technology areas in such a wide variety of cases—that’s pretty unique. What did you do before coming to Ropes & Gray?
Rachael Bacha: Before coming to Ropes & Gray, I was a researcher in a genetics lab at NYU. I was doing basic science research, and I loved it. I loved learning, as I had mentioned before. It was a small and tight-knit group of people, and we were really just trying to understand the way that certain genes worked together. The biggest reason I think that I went into IP was how much I loved discovery, learning about new technologies, and understanding the way that these technologies worked. It’s what keeps me here and keeps me interested and fascinated in the work that we do. Every single client that I work with, I love learning the technology, and I love learning really just the ins and outs of everything. And because it permeates every aspect of our cases, it’s really important to learn everything.
Andrew Radsch: That’s great—thank you. Really very interesting to hear about your practice. We typically like to close these sessions with a bit of a lightning round just to learn a little bit more about you, so a few questions for you. Where are you from?
Rachael Bacha: I’m from a little town called Hurley, about two hours north of New York City in the Hudson Valley.
Andrew Radsch: Where do you currently live?
Rachael Bacha: I live not far from there in a town called Blooming Grove, New York, also in the Hudson Valley, but a little closer to the city. I actually live on a small farm.
Andrew Radsch: Wow. What kind of animals do you have?
Rachael Bacha: We have two dogs, a couple of cats, some sheep, goats, chickens, ducks, and a horse.
Andrew Radsch: That is a lot of animals—you have your hands full.
Rachael Bacha: Yes. Add to that a four-year-old and a not quite two-year-old human and I definitely have my hands full.
Andrew Radsch: Never a dull moment in the Bacha household. Any favorite books you’ve read recently?
Rachael Bacha: I love reading fantasy. Our job keeps us so incredibly tethered to the real world, I like to escape to a not real world. I think my current favorites are The Stormlight Archive series by Brandon Sanderson—it’s classic high fantasy, world-building, political intrigue, and a lot of magic.
Andrew Radsch: That sounds great—I will have to check that out. You’re dreaming—it’s a happy dream—and you are in a situation you love. Where are you?
Rachael Bacha: I think one of the most peaceful places that I could think of in a happy, peaceful dream would be up in the Adirondacks, in the Great North Woods, up in Lake Placid in the winter. There is this section of this trail on the way up to Mount Marcy through an area called Adirondack Loj, and the pine forests are so incredibly tall and silent. In the winter, it’s snowy, and all you can hear are the trees creaking in the wind as they sway back and forth. It is the most beautiful, peaceful place where you just feel so whole. I used to go there just about every year growing up, and I go there almost every year now. It’s just one of my most favorite places in the whole world. It’s so quiet and full of peace. I think that’s probably where I’d be in a dream.
Andrew Radsch: That definitely sounds magical—that sounds lovely. Rachael, I really want to thank you for joining us today. It’s been a lot of fun, a real pleasure. And thank you to all of our listeners. This has been the R&G Tech Studio podcast—it is available on the Ropes & Gray website, on the R&G Tech Studio podcast page, and wherever you get your podcasts. Thank you, everyone, for listening.