10 Things To Know About Patent Litigation
What is life like as an IP litigator?
Ed. note: Welcome to the latest installment of Better Know A Practice Area, a new series introducing readers to different practice areas. Each post is written by an editor at Practical Law who previously practiced in that area and currently writes about it. Prior columns have covered capital markets and corporate governance practice and securities litigation and enforcement.
Today’s topic: life as a patent litigator.
- What do you do in a typical day?
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As a patent litigator, a typical day depends on the stage of the case. Early work on a case involves a lot of prior art review and product analysis – dry but interesting strategic work. There is often a great deal of back-and-forth with clients to work out an overall litigation strategy. The mid-section of the case is the grind – written discovery, lengthy infringement or invalidity contentions, preliminary work with various witnesses, and expert reports. Claim construction briefing and fact-witness depositions are a welcome breeze during that section.
The fun comes with pre-trial and trial: taking expert depositions, writing summary judgment briefs, and drafting direct- and cross-examination outlines. Practicing with a trial-heavy firm means trial practice is a routine part of the day. It is an exhausting thrill.
- Who do you work with?
Early in their career, junior associates will generally report to a central senior associate or a junior partner. Expert witnesses take up a lot of air in patent cases, so junior associates can expect to work with them early and often throughout their careers.
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Around their third or fourth year, associates should expect to have more direct contact with lead counsel on the case. Most associates will also start to routinely interact with the client – engineers, inventors, employees on the finance side, and in-house counsel. Associates will also start to work with third parties more often – prior artists, commercial partners, or former employees.
When associates reach more senior levels, they will still routinely work with experts and partners of all levels. But a more senior associate should expect to (mercifully) manage junior associates while they handle some of the less rewarding interactions. More senior associates will also directly advise in-house counsel or other executives when partners request it or when the client reaches out to them specifically.
- What does a common career path look like?
The most common career path won’t surprise anyone: STEM degree -> J.D. -> Patent litigation firm. It is also very common for former patent examiners to move into practice.
That said, the common career path isn’t the only career path. Patent litigation is a field that has an active, on-going demand for good writers and strategic thinkers. The STEM path brings in a lot of brilliant individuals who have not been forced to hone their written or oral advocacy skills or broader strategic thinking. If individuals are comfortable with and interested in tech issues or biology or chemistry, they should not be deterred from the practice. Stay curious, study a lot, and when stumped, ask an expert. As an English major, doing those three things ended with partners accusing me of “being too technical for my own good.”
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- If variety is the spice of life, how spicy is this practice area?
Those who come to patent litigation with a technical background can find themselves pigeon-holed into certain types of cases and tasks. In that situation, a lawyer’s case diet can turn bland. It is easier to develop a varied caseload for those who focus on strategic thinking and communication skills, rather than subject-matter expertise.
From a broader task-based perspective, it’s hard to imagine a more diverse practice area. A patent litigator needs to be an effective written and oral advocate, a careful technical writer, a strong leader and tactician, a good manager of egos and eccentricities (in dealing with experts, inventors, prior artists and engineers, as well as colleagues), and an effective questioner of both fact-witnesses and wily technical experts.
- How much wear and tear?
Patent litigation can be slow and grinding or can proceed at lightspeed. Because patent local rules setting out strict deadlines have proliferated so widely, however, patent litigators generally have a good sense of when the big deadlines will fall. Learning to make reasonable guesses about which schedules will stick and which will not – and treating the partners who assign work with the love and respect they deserve – can keep the pace to a quick jog rather than a sprint.
Expectations are high. Because there is a lot of freedom to strategize, there are a lot of opportunities to make both good and bad judgment calls – what claims to assert and construe, what art to focus on, etc. Patent litigators can’t be scared of those calls, or the stress will eat them up.
- Of the people in this practice group who hate it, what exactly do they hate about it?
If anyone actively hates patent litigation, it is easy to move into general litigation. That said, people are deeply annoyed with two things: (1) the general inefficiency of patent litigation, and (2) the repetitive nature of a lot of tasks. Points (1) and (2) are related. Patent litigation lends itself to using standard documents and templates as a jumping-off point for most work, but if supervising attorneys are not focused on efficiency, lawyers can end up recreating the wheel on each and every case.
- Of the people in this practice group who love it, what exactly do they love about it?
Patent litigation rewards creative, strategic thinking. Each case presents the opportunity to interpret the bounds of a unique legal document (a patent) as applied to the real world (products and processes). Because of that, each case is a blank-slate opportunity to match wits with some (often) very smart people. It’s rare to be cornered by the law right from the start.
Put more succinctly, patent litigators love outsmarting each other, rather than attacking each other, with the law as a cudgel.
- Are there common avenues out of this practice area?
Absolutely. There are two common options: Patent litigators can move in-house at an established company or start-up within their subject-matter expertise, or move into one of the related fields like tech journalism or financial analysis of IP-heavy industries. Because patent litigators are often tech-savvy and entrepreneurial, it is also common for practitioners to start their own companies in the tech, analytics, or legal services spaces.
- What are some market trends that impact this practice area?
The commonly accepted wisdom is that patent litigation is more recession-resistant than other practices because companies can often squeeze profit from their portfolios when they can’t from the market. Beyond that, the courts, as well as the state and federal legislatures, are moving to fight bad patents and nuisance suits from non-practicing entities. Some of that work has already made a dent – particularly the new inter partes review (IPR) system and the recent Alice decision. Other initiatives, like state laws discouraging nuisance suits, haven’t returned clear results yet. Overall, expect to see a noticeable decrease in cases involving non-practicing entities that actually reach a jury.
- If you had to recommend one candidate from a room crowded with recent bar exam graduates, what specific qualities would he or she have that would ensure success in this practice area?
Creativity and confidence. A number of promising junior associates struggle, despite being diligent attorneys with a fine grasp of the subject matter. In almost every case, those attorneys either didn’t graduate from checking the standard infringement and invalidity boxes by rote to making choices with bigger case themes and strategies in mind. For patent litigators, making that next-level move requires creativity and the confidence to articulate and defend their ideas.
Earlier: 10 Things To Know About Securities Litigation And Enforcement
10 Things To Know About Capital Markets And Corporate Governance Practice
Zach Summers is a senior legal editor in Practical Law’s Intellectual Property & Technology Group. He focuses on patent litigation. Prior to joining Practical Law, he worked at Quinn Emanuel Urquhart & Sullivan in New York and Irell & Manella in Los Angeles.
