Paul Skiermont and Paul Derby on How Friendship Forged a Versatile Firm

Paul Skiermont (L) and Paul Derby. Photo by Amy Cantrell.

On paper, Paul Skiermont and Paul Derby’s partnership began in 2016, when their firms merged to form Skiermont Derby: a boutique known for its high-profile IP and complex commercial litigation practices with a focus on taking cases to trial.

In reality, that connection began 30 years ago, when they formed a friendship as opponents on the debate stage.

Skiermont and Derby were both extensively involved in their colleges’ speech and debate teams during undergrad – Skiermont for the University of Kentucky and Derby for the University of Redlands, California. They gained familiarity in those circles and became close friends while coaching high school debaters during the summers. Spending precious vacation time mentoring new debaters with a passion for crafting persuasive arguments – it’s apt for the now-renowned trial litigators.

The pair went on to separate law schools, and then to form different practices at major law firms: Skiermont at Bartlit Beck and Derby at both O’Melveny & Myers and what is now McKool Smith’s Los Angeles office. Striking a similar chord, though, both then left to found their own firms – Skiermont in Dallas and Derby in L.A. – eventually finding themselves looking for new partners at the same time. It was a moment three decades in the making.

The firm’s Dallas and L.A. offices translate roughly into the two wings of the practice: IP and, well, everything else. Skiermont handles the IP side. He has focused on intellectual property and inter partes review for most of his career, starting his own firm with the goal of zeroing on the practice area. Skiermont has taken on entities as large as Apple in patent infringement cases; he represented a professor at Rensselaer Polytechnic Institute, an owner of a patent that applied to Apple’s Siri personal assistant. After several years of litigation and on the eve of trial, Apple settled. The result came just as Skiermont and Derby were merging in 2016.

With the tech hub of Silicon Valley nearer the firm’s L.A. office, that Dallas-based IP team has spread out toward Derby’s neck of the woods, as well. Recently, one of the L.A.-based IP litigators, partner Mieke Malmberg, partnered with two other firms on behalf of Colibri Heart Valve in an infringement case against Medtronic CoreValve. The jury returned a significant verdict of $106.5M for Colibri in February of this year. And even more recently, Skiermont and a team of Skiermont Derby lawyers obtained a jury verdict in Delaware against Microsoft for $242M, one of the largest verdicts in Delaware history.

Derby handles the “everything else.” While the IP group handles mostly patent-owner-side litigation, Derby’s team’s matters have about a 50-50 split of high-profile plaintiffs’ and defense work across a litany of complex litigation matters. Complex business disputes, employment litigation, securities work, class actions, misappropriation of likeness, professional negligence, entertainment – you name an area of complex litigation and Derby and his team have likely handled a matter in that space successfully. Throughout his career, Derby has taken on prominent matters including defending The Walt Disney Co. against royalty claims, defending Sally Beauty against a former model’s misappropriation of likeness claim and representing an auction house in a case against basketball star Kobe Bryant.

Over the last eight years, the pair have found that their practices dovetail just as well as they’d hoped, forming a firm with varied and significant strengths. “It doesn't even feel like them and us anymore,” says Derby. “It's been so long. It's almost hard now to even recall the days pre-firm.”

Lawdragon: Your friendship started as debate opponents in college. Tell me about that.

Paul Skiermont: We both debated for different universities, but we competed against each other. And actually, once he graduated, Paul was coaching teams that I was debating against for a couple of years. But importantly, one thing that college debaters do is teach at high school debate institutes in the summers. So, we actually taught together and were roommates at those summer events. That's really how we became close friends.

Paul Derby: Right. So, we’ve known each other since probably the early-to-mid-‘90s. We hit it off, and we’ve been really good friends since. I mean, I was an usher in his wedding, and he was an usher in mine in the early 2000s, which was right around the time we were starting as lawyers.

PS: And ever since we were in those summer debate institutes together and before we'd even gone to law school, we were like, "Wouldn't it be cool if someday we had our own law firm?"

LD: Tell me about the moment when you realized it was time to join up.

PS: Essentially both of our partners were thinking about doing other things, and I reached out to Paul and said, "I need a partner at the firm." So, we started talking about how this would work. We’d been talking about this for 20 years, and now here was an opportunity where it actually made a lot of sense to seriously start thinking about how it would work practically.

LD: How have you seen those early ideas of mutual benefit play out?

PD: One aspect is we’ve been able to more fully service the clients who started as patent clients. We’ve been able to help on some civil cases for them. And we just have a lot more quantity-wise – deeper bench, smart people. It's been great working with Dallas; there are a lot of really talented lawyers out there.

There's been kind of an ebb and flow between the sort of giant cases they chase and the smaller-to-medium-sized cases we chase. It creates a blend of all the pieces of the puzzle. So, there are weeks and months where LA is doing a lot in terms of floating the business, and there are other times that Dallas will have these enormous outcomes. It broadens the group and gives us more areas to practice. And then they're just generally awesome people. We like working with them a lot.

We wanted to be able to be flexible enough to offer our clients something different.

PS: I agree. In the initial rationale, not only was it geographical diversity being in Texas and California, but there was a business rationale in the sense that we do a lot of contingent-fee IP litigation. At the time, certainly, and to this day some too, Paul's practice was much more steady hourly billing. He was going to have a fairly constant income stream of mostly paying clients and a lot of hourly work, which enabled us to continue taking on more risk and more contingent-fee matters in plaintiff, patent-owner-side IP litigation.

LD: One defining feature of your firm is the way you tailor dispute-specific engagements for your clients. Tell me a bit about how the structure of your firm allows for those personal relationships with each client.

PS: Well, some of this has a genesis with me coming from Bartlit Beck, which is not an hourly firm. Essentially, Fred Bartlit, when he left Kirkland & Ellis, was pioneering alternative fees. I joked that I was damned sure not going to open my own firm and start billing by the hour, because I saw that as one of the big benefits of where I was leaving – that we didn't bill by the hour.

When I left that firm and started this one, we thought, "We can really do whatever the client wants. If the client is only used to hourly billing and that's what they want to do, we can do it that way. If they have particular budget constraints, we can do it that way." But our hallmark has always been that we were willing to share risk with the client. So, we would always be willing to take a discounted fee or even a contingent fee, but we would get paid less in exchange for the opportunity to earn more if we delivered a successful result. We wanted to be able to be flexible enough to offer our clients something different.

Even for our partners we've recruited and have been with us for a while, if they have to discount their fees or change the structure so they can bring in a client, our philosophy has always been to help people become rainmakers by allowing them to offer flexibility. So, that's the kind of thing we talk about when we say we tailor everything individually for each engagement or each client – we provide all of those potential fee arrangements. Between the two offices, we probably have had every different kind of engagement agreement you could ever imagine.

LD: Tell me about the relationship between the two offices. Which work is concentrated where?

PD: The Dallas office is predominantly IP, and then we have IP lawyers scattered about – we have some in southern California and Los Angeles County and we have one who now lives up in Washington. So, there's a significant IP presence that stems out of the Skiermont Dallas group. Then, we have a group here in L.A. that is predominantly non-IP. Between the offices, it gives us a chance to pass work back and forth and help each other out.

LD: What cases stand out in your mind as significant for the firm?

PD: One of the ones that sticks out for me is a case involving a client named Brian Roberts, who was a software engineer. The reason that case stands out is because we did something that borders on insane: We jumped into the case on a contingency right as we were losing.

We did something that borders on insane: We jumped into the case on a contingency right as we were losing.

LD: Wow.

PD: In fact, the trial court judge wasn't having anything to do with the novel new theories of the case. At the first hearing, I just said, "Fine, dump us. Let me get to the court of appeal." Over the course of four years, we proceeded to get a reversal in the court of appeal, both on the loss that we suffered on our claims and on the loss that we suffered on their claims. So, we had two separate appeals, won them both, and went from essentially a complete loss to a nearly complete win with good law of the case, and then over the litigation for another two years we did a really nice job and settled on what you might expect to be confidential but not horrible terms.

I just loved that case, because we saw it as a good case even though it was at a very bad time. We came in and were able to do enough good that we took the case from the jaws of defeat through four years on a contingency. It just sticks out to me as the degree to which we can influence a case and get a good result when it’s deserved.

LD: What a fantastic result. Your firm places a lot of emphasis on being trial lawyers. What do you enjoy about being so trial-ready and how is it beneficial?

PD: Well, you didn’t ask, but the part I hate is that we go to trial less and less as we get better and better.

LD: Oh, no!

PD: We like the performance aspect and getting lost in the details. Trial is this constant push and pull between things as nuanced as objections and as global as trial stories and themes. We always say that we're thinking about how to try the case from the get-go, and it's really true. We just had a long intake meeting last week for a new client, and we were trying to figure out how it would sell. So, literally from the first meeting, we were talking about how it would play out at trial.

If you're doing it right, it's like a play: The script is there from the first day, but how you perform it changes a little bit over time. I think it gives us an advantage, too, because a lot of people start putting that together late. But especially if you do a lot of contingency work, you have to evaluate a case before you ever even take it. So, I think that any client is benefited by having a lawyer that at least has a meaningful part of their practice on contingency, because it almost forces you to be able to assess a case at the outset.