Exit options from Biglaw IP Litigation or Prosecution? Forum

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Desert Fox

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Post by Desert Fox » Thu Dec 03, 2015 6:55 pm

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patentlitigatrix

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by patentlitigatrix » Thu Dec 03, 2015 9:16 pm

Desert Fox wrote:I don't really get why IPR is considered more pros than lit. It's just fucking invalidity.
Maybe I am living under a rock, but who considers IPRs more pros than lit? I view IPR/CBM and even re-exams to a certain extent as the exact opposite. At least at my firm, litigators typically handle these proceedings. We sometimes add a prosecutor, but they invariably take a backseat to the litigators, and most IPR/CBMs don't have any prosecutors on them.

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by 84651846190 » Thu Dec 03, 2015 9:20 pm

patentlitigatrix wrote:
Desert Fox wrote:I don't really get why IPR is considered more pros than lit. It's just fucking invalidity.
Maybe I am living under a rock, but who considers IPRs more pros than lit? I view IPR/CBM and even re-exams to a certain extent as the exact opposite. At least at my firm, litigators typically handle these proceedings.
Theoretically, you can amend the claims during IPR (but good luck with that, lol--PTO almost never allows it). There's a lot of procedural bullcrap that does not necessarily correlate with traditional litigation which you have to know to do IPRs, so maybe that's why prosecutors might be better at it. Also, pros bros might be better at actually doing the prior art searches, since they are closer to the technology, although big firms usually hire companies to do the searching.

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by patentlitigatrix » Thu Dec 03, 2015 9:27 pm

Biglaw_Associate_V20 wrote:
patentlitigatrix wrote:
Desert Fox wrote:I don't really get why IPR is considered more pros than lit. It's just fucking invalidity.
Maybe I am living under a rock, but who considers IPRs more pros than lit? I view IPR/CBM and even re-exams to a certain extent as the exact opposite. At least at my firm, litigators typically handle these proceedings.
Theoretically, you can amend the claims during IPR (but good luck with that, lol--PTO almost never allows it). There's a lot of procedural bullcrap that does not necessarily correlate with traditional litigation which you have to know to do IPRs, so maybe that's why prosecutors might be better at it. Also, pros bros might be better at actually doing the prior art searches, since they are closer to the technology, although big firms usually hire companies to do the searching.
Yeah, the procedural stuff is sort of terrible, but OK once you can get used to it and get how to search for precedent. I just view 37 CFR 42 and the trial practice guide as equivalents to FRCP and local rules. I have gone through in my mind and made other analogies, like a petition is like an invalidity MSJ, a preliminary responses is like an MTD, the initial conf call is like a CMC, etc. But that is probably because I am a litigator. I imagine prosecutors would view this fairly differently.

Yeah, dunno about prior art searching. We tend to hire search firms for both lit and IPR/CBM, and then have associates with tech backgrounds search on google patents, PubMed, IEEE, etc. to find stuff for more specific points. I like to think I am decent at this, but again I am not actually sure what the pros bros/broettes do differently.

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by 84651846190 » Thu Dec 03, 2015 9:32 pm

patentlitigatrix wrote:
Biglaw_Associate_V20 wrote:
patentlitigatrix wrote:
Desert Fox wrote:I don't really get why IPR is considered more pros than lit. It's just fucking invalidity.
Maybe I am living under a rock, but who considers IPRs more pros than lit? I view IPR/CBM and even re-exams to a certain extent as the exact opposite. At least at my firm, litigators typically handle these proceedings.
Theoretically, you can amend the claims during IPR (but good luck with that, lol--PTO almost never allows it). There's a lot of procedural bullcrap that does not necessarily correlate with traditional litigation which you have to know to do IPRs, so maybe that's why prosecutors might be better at it. Also, pros bros might be better at actually doing the prior art searches, since they are closer to the technology, although big firms usually hire companies to do the searching.
Yeah, the procedural stuff is sort of terrible, but OK once you can get used to it and get how to search for precedent. I just view 37 CFR 42 and the trial practice guide as equivalents to FRCP and local rules. I have gone through in my mind and made other analogies, like a petition is like an invalidity MSJ, a preliminary responses is like an MTD, the initial conf call is like a CMC, etc. But that is probably because I am a litigator. I imagine prosecutors would view this fairly differently.

Yeah, dunno about prior art searching. We tend to hire search firms for both lit and IPR/CBM, and then have associates with tech backgrounds search on google patents, PubMed, IEEE, etc. to find stuff for more specific points. I like to think I am decent at this, but again I am not actually sure what the pros bros/broettes do differently.
Also, consider that pros ppl are considering validity 100% of the time when they are trying to get patents allowed at the PTO, whereas litigators consider all kinds of other stuff (laches, willfulness, infringement, standing, motion practice, discovery, etc.).

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by Abbie Doobie » Thu Dec 03, 2015 9:33 pm

nah we don't really do prior art searches as prosecutors. if we do it is typically very brief. definitely not the type of prior art searches that are involved in ipr work. i think its easier for for a litigator to pick up post grant work than it is for prosecutors because it really isn't anything like prosecuting patents. actually, i think the people that do opinion work are probably even better suited for post grant work because there is a lot of overlap between their skill set (managing prior art searches, building detailed invalidity contentions, working with experts, etc.) and the skill set needed for post grant work. ime, the litigators and opinion associates were able to pick up iprs quicker than myself as someone with a prosecution background.

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by anonnymouse » Fri Dec 04, 2015 12:14 am

Doesn't WH do both? And Covington?

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by Abbie Doobie » Fri Dec 04, 2015 12:19 am

anonnymouse wrote:Doesn't WH do both? And Covington?
i know a few people at WH that do a mix of pros/ipr/lit. not sure about covington though.

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Abbie Doobie

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Re: Exit options from Biglaw IP Litigation or Prosecution?

Post by Abbie Doobie » Fri Dec 04, 2015 12:23 am

some gp's do a good amount of pros/ipr/lit (foley, mwe, kilpatrick, morgan lewis, etc.) but not sure if they let you cross over. i've heard from a few mofo associates that pros associates are pretty much siloed to just pros.

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