Earlier in his career, Mr. Marino worked as a software consultant, becoming knowledgeable in computer architecture, circuit design, graphics & animation, AI, and e-commerce. While a solid technical background, Fabio has a natural appreciation of the importance that working prior art in the litigation process brings.

There are always two prongs for patent infringement defense: non-infringement and invalidity.

As part of the litigation process, the non-infringement position always develops as the case proceeds, as claim construction is sine qua non in defining scope, i.e. infringement. But claim construction often morphs in light of discovered prior art - prior art like previously uncharted reefs in a fjord, the plaintiff trying to maintain a heading of infringement while not crashing into newly jutting prior art rocks.

The prior art was always there, it just needs to be found. But finding the prior art is only the first step. And creating an invalidity claim chart, mapping claim limitations to prior art statements of anticipation, isn't the only role that prior art plays.

Working the prior art means getting a sense of history about the supposedly novel technology. That sense of history is crucial in story-telling of anticipation; and in finding the best possible expert witnesses, people who lived the history of the relevant technology prior to the patent.

In litigation, the art of prior art is not just technology, it's story-telling. That juror who teaches third grade isn't going to understand internal routing labels for ATM cells. But she could understand that a lot of people worked in networking on the very same problem the target patent claimed to solve, and a few actually solved the problem before the patent was filed. The best prior art isn't just technically on-point, it makes good copy - you can weave a story around it. Top-drawer litigators prefer better story-tellers to more technically accurate, but somewhat inscrutable, references. The best patent litigators know how to work the prior art to tell good stories, and find experts who lived the history and can do the same - tell good stories. An invalidity claim chart is more than a work of prior art - it's a tale of anticipation.

Both Orrick and Bingham McCutchen are Patent Hawk clients; Bingham McCutchen becoming a client thanks to Mr. Marino.