Patent Litigator: Everything You Need to Know
In the last few years, intellectual property, has been one of the most rapidly developing areas of litigation and patent litigators, the attorneys responsible for these cases, never have a dull moment.8 min read updated on February 01, 2023
In the last few years, intellectual property (particularly patent cases), has been one of the most rapidly developing areas of litigation and patent litigators, the attorneys responsible for these cases, never have a dull moment.
Apple v. Samsung, for example, was a national news story and a good example of a patent litigation case. However, there are thousands of other smaller cases that patent litigators are working on as you read this. Aside from routine litigation work (including dealing with request propagation and responses, drafting court documents, and conducting legal research), patent litigators also do a lot of research on prior technology (also known as prior art) and will routinely work with experts in the tech realm.
Anyone with an interest in tech could do quite well as a patent litigator today.
The Role of a Patent Litigator
When a case of patent infringement occurs, there are two things a defendant can do to defend against a claim: state that the patent was either invalid or that the patent was never infringed upon if the patent does end up being valid.
For a patent to be invalid, there has to be proof that the invention was not actually novel (meaning new) when the patent was obtained. If you find that an earlier invention of the same thing was already created, you can claim that patent is invalid. That being said, a large portion of a patent litigator’s work consists of looking up similar inventions or technologies that could have existed before the patent. In the court, the patent litigator’s job is to present a convincing case that there is enough prior art to invalidate the patent in question.
All patent litigation cases need an expert testimony. This usually comes from someone like a professor in the field. The expert witness explains what the invention does and how any prior technology was either similar or not similar.
If it is determined that the patent is valid, the next argument to make is whether or not the defendant’s invention is protected by the patent in question. “Claim construction” occurs when both parties read the patent claims in what is essentially a metaphysical sense. There could be several hundred pages of briefs that were written on just one phrase.
What Kind of Background a Patent Litigator Should Have
Contrary to popular belief, a technical background is not needed for a person to become a patent litigator. Although having a tech background in something like biology, engineering, or computer science is inarguably beneficial, you could find quite a few alleged patent litigators who have backgrounds in English literature.
Generally, patent litigators began their careers as general litigators. As the demand for patent litigation grew, many of these general litigators became patent litigators. In recent years, young patent litigators who also have technical backgrounds are becoming increasingly more desirable job candidates. If a patent litigator is able to speak articulately with software engineers as well as read code, they have a serious advantage over their competitors.
Things to Know About Patent Litigation
A big part of a patent litigator’s workday involves product analysis and researching prior technology. In between their research, a patent litigator will also spend a sizable portion of their time staying in contact with their clients to come up with a litigation strategy. The midsection of a case is usually the most complex part of a patent litigator’s work. They review expert reports, create a written discovery, communicate with different witnesses, and address contentions regarding infringement or invalidity of a patent. The mid-section is so demanding that fact-witness depositions and claim construction briefings are often warmly welcomed by patent litigators.
If a patent litigator is just starting out in their legal career, they begin as junior associate who report to either a junior partner or a central senior associate. Junior associates should plan on working largely with expert witnesses during cases since the witnesses take up the majority of the time. Within three or four years, a junior associate will probably have more contact with lead counsel on cases.
Other people an associate will regularly be in contact with include inventors, in-house counsel, and engineers. It is often the case that associates will interact with third party individuals including commercial partners, former employees, and prior artists. Once an associate reaches the senior level, they will work with partners and experts.
Once someone become a senior associate, they will most likely manage a team of junior associates while maintaining strong relations with other individuals who are necessary components to the case. Another responsibility of the senior associate is to advise in-house counsel and other executives at the behest of a partner.
One of the most common career paths for patent litigators goes from STEM degree to J.D. to patent litigator. People with careers as patent examiners also tend to become patent litigators. Anyone with outstanding writing and strategic thinking skills also make desirable job candidates for a patent litigator position. The problem with budding patent litigators who had a STEM background is that many of them did not work on refining their written and oral skills. If someone can mix their STEM background with great communication skills, they could make for an unstoppable patent lawyer.
If someone with a technical background become a patent litigator, they may feel like they end up getting sucked into cases and tasks that are all similar. This can make the patent litigator’s career life feel less exciting and fulfilling. Someone who comes to the table with excellent communication skills has a better chance of garnering a broader variety of work. Regardless of the background you come from, you will find patent litigation to be a very diverse field.
To summarize, some important skills a patent litigator should strive to have include good management skills (especially since you will end up managing everyone from experts to inventors to engineers), impeccable written and oral skills, and a powerful questioning of both tech experts and fact-witnesses. In the world of patent litigation, one day might be dragging and monotonous and the next day goes by in the blink of an eye.
Today, patent local rules have set up some inflexible deadlines, but most patent litigators have a strong grasp on when the next big deadline will be. It’s best to have a good idea of what schedules will stay in place and which ones won’t. This is a crucial part of maintaining a flowing, productive work pace.
There are many exceptions that are due to so much room to strategize and many opportunities to make judgement calls that could end up being good or bad (regarding what claims should be asserted, what art should get the most attention, and so on). A patent litigator cannot be afraid of making a judgement call as this is a big part of their work. If a new patent litigator quickly discovers they can’t stand this type of work, it isn’t difficult to transition to general ligation.
In general, there are two things most people hate most about patent litigation: there are a lot of the same tasks that you do repeatedly, and patent litigation often tends to be inefficient.
In most patent litigation cases, there are standard templates and documents that can be used for a lot of the work. The problem is that if a supervising attorney isn’t prioritizing efficiency, lawyers often end up re-making the same templates and documents when they didn’t need to do that in the first place.
In patent litigation, creativity is a huge asset. Every case allows a patent litigator to explore the realms and bounds of the patent (the legal document) and how it pertains to the products or processes that it is designed to protect. For intellects who enjoy rigorous debating and analytics, a patent litigation case can be interpreted as a match of wits. Rather than attacking one another, patent litigators enjoy the art of outsmarting their opponent.
Patent litigators have two common career choices: they can either start their own company upon the foundation of their expertise or move up through the ranks of an already established company. Many patent litigators often have an entrepreneurial spirit or a knack for tech, so it’s not surprising to see many of them have their own legal service companies, analytics companies, and tech companies.
In recent years, courts, as well as state and federal legislatures, have been working hard to combat bad patents. Quite a few things have been accomplished including the Alice decision and a new IPR system. Other efforts including fighting nuisance suits haven’t brought forth any noticeable results yet. It is safe to say, however, that there will be a marked reduction of cases regarding non-practicing entities that will never even make it to a jury.
It’s quite common for many talented junior associates to struggle in their profession regardless of the fact that they may be a talented, committed attorney. In situations where such an attorney is struggling, they usually never move passed checking standard infringements and invalid cases. The best thing a patent litigator could do if they want to move forward is refine their ability to articulate their ideas with greater confidence.
Is it True When Someone Says That There is a Noticeable Slowdown in Patent Litigation, or Worse, Has it Died?
If you do a little research on the bigger law firms today who have experienced the most significant loss of attorneys, most of those firms and attorneys specialize in IP litigation practices. But it isn’t just the big law firms suffering from this problem; it’s the litigation departments of IP firms too. So why is there such a noticeable slowdown? The Supreme Court’s ruling in Alice Corp. v. CLA Ban International (2014) is definitely a contributing factor. In that ruling, the Court determined, “that certain business methods, previously thought to be patentable, are not.”
Walmart, a company that is rarely ever the plaintiff and almost always the defendant in patent cases, noted that Alice was a positive contributor to Walmart’s defense strategy. When the company cites Alice, Walmart is able to dismiss cases earlier on in their proceedings, particularly when dealing with non-practicing entities (or patent trolls as they are less affectionately called). Before Alice, there was the Bilski v. Kappos case for Walmart to rely on, since this particular provided positive benefits for the company. Basically, cases involving either Walmart or other companies that are controlled by Alice are often significantly less expensive and dismissed faster.
Aside from this situation, patent litigation is a growing area and far from dead. At TSMC, for example, there has been a boom in IPR proceedings, something that is considered a patent litigation. According to the United States Patent and Trademark Office, IPR is “a trial proceeding conducted at the [Patent Trial and Appeal] Board to review the patentability of one or more claims in a patent only on a ground that could be raised under [35 U.S.C.] §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.”
If someone seeks to file an IPR, they need to be aware that the grounds for them are limited and the cost to file is quite high. The upside to IPR proceedings is that expensive though they may be, they are generally less costly than other types of IP litigation, and they are definitely quicker than other proceedings. This is not great news for outside counsel who want to charge clients more.
If you want to learn more about the world of patent litigation or a career as a patent litigator, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.