How Can I Get a Clue Before Trial? Forum

[Anonymous User]

I’ve posted here before about starting biglaw this fall and getting stuck in the patent litigation group — an area about as far from my interests/experience as you can get. It’s been miserable.

Long story short I’ve been on the case several months and I have no idea what’s happening. Neither the law nor the facts of the case make sense to me. Maybe it’s a mental block because I hate this area of law so passionately. My work product is objectively awful. Up until this point I’ve been avoiding the problem by turning down projects, but we have trial coming up soon and this can’t go on forever.

I do have some pro bono cases and another general lit matter that I get a lot of positive feedback on. I have a ton of work, especially from the lit matter that could easily fill my time without the patent case.

What the heck am I supposed to do? Should I confess to someone in the group that I’m lost? Talk to my assignments coordinator? Just get through any patent work as quickly as possible and focus on doing well in other cases?

Another more senior associate at the firm mentioned I could speak to a partner that I have a good relationship with and ask him to intervene — but I feel very weird about that potential conversation. I don’t want to look stupid or lazy in front of someone who has a positive impression of me.

[1styearlateral]

I was in a similar position at my prior (and first) firm. I was litigating cases in an area of law I had no interest in and in a highly specialized area nonetheless -- my gripe was, at the time, that I thought all the work I would put into the cases (all of which went to trial) and into the subject matter would be wasted when it came time for me to try and lateral to a better practice area (and better firm).

In reality, even though I no longer am handling those types of cases, I still draw heavily from my experience litigating those cases. That includes general trial prep, rules of evidence, prepping and consulting with experts, etc. So you might be stuck in an area of law you're not thrilled with, but use it as an opportunity to build on your litigation skills. Whether you're litigating patent infringement, landlord-tenant, or employment wage disputes, the fundamentals are all there. Since you're junior, it doesn't really matter as much what type of law you're practicing.

[Anonymous User]

Patent law has a very steep learning curve, to be sure, and the facts of those cases are often quite complicated also.

However, a trial is still a trial, and it's great experience to be going to trial in biglaw as a junior associate. I wouldn't squander the opportunity even if you plan to never do a patent case again. A lot of the skills and experiences you'll have -- working on evidentiary issues, motions in limine, working with witnesses and experts, demonstratives, damages, juries ... -- will all be useful if you want to do any kind of trial work down the road.

Stick it out, and try to make the best of it. Sure, maybe you hate it and could blow it off, but you should be able to figure this out and even do good work for it. You'll learn more and get more out of the experience as a result.

Let the assigning coordinator know that you don't want another patent case once this is done, and if you're offered another one, politely decline.

[Anonymous User]

OP here. I get that the experience can be transferable. My problem is more along the lines of "oh crap, I'm supposed to help draft something based on expert report, but I completely don't understand the substance of the report...or hell, even the patent." I'm sitting in team meetings where I'm literally not tracking anything that's said. I just feel like a lost cause this close to trial. The anxiety that accompanies the next meeting/project/email is really starting to get to me, and I have no idea what to do.

[totesTheGoat]

My problem is more along the lines of "oh crap, I'm supposed to help draft something based on expert report, but I completely don't understand the substance of the report...or hell, even the patent." I'm sitting in team meetings where I'm literally not tracking anything that's said.

Start googling. Not kidding. Find some term or concept you don't understand, read the wikipedia page, and start clicking around. Go visit your law firm's library and see if they have books on that technology. If they don't, take a trip to the public library. If it's math heavy, you can usually ignore the math part and focus on the general operation of the invention.

Go to the client's website and figure out whether there's a product line this patent applies to. Read up on the product to get a sales and marketing overview of how the product works. This probably works better in the tech side rather than the life sciences side, but it's worth trying either way.

Read the patent from front to back, using the figures to guide you through the spec. Start by understanding what each figure is showing you. Then figure out what the components of the invention are. Then figure out what each component does. Then figure out how they fit together. Is there a summary section that gives you some more jargon to go look up on wikipedia?

Read the prosecution history of the patent. If you're confused after reading the patent, it's quite possible that the examiner was, too. If you don't have access to the prosecution history documents, go to the USPTO PAIR site and pull them from there. Also, the invention disclosure may be in your pile of documents. That'll include some additional material that may help you understand what's going on.

Also, ask one of the other attorneys on the case to take 5 minutes to explain the technology to you. You can probably phrase the question in a way where you don't come off like a complete idiot. Something like "Could you help me understand this technology a bit better? I'm having trouble putting all the pieces together."

If you make it your #1 work priority to become literate on this patent, you'll probably be able to at least understand the team meetings by the middle of next week.

On the prosecution side, sometimes it takes me 3 or 4 tries before I fully understand an invention, even with my technical background. I've had to call up inventors and ask them to walk me through it again because I don't understand how component X and component Y work.

If the patent is on the tech side and you feel comfortable giving the genre of the patent (without getting too detailed, of course), I can try to point you at some good resources.

[Anonymous User]

totesTheGoat has great advice.

Other ideas:
Take a look at the docket: did the judge write a MTD or MSJ opinion? If so, the judge probably took some time to explain at least the basics of the technology and the dispute.
Did the firms do a technology tutorial early in the proceeding? Read the transcript, get the slides.
Read the claim construction order and highlight the construed terms in a printed-out copy of the patent. Re-write the claims using the claim constructions, if it's helpful.
Map out the claims into an outline form. How do the pieces fit together? What are the steps in the method? Walk through it slowly, step-by-step.