patent litigator taking questions Forum

[markman]

Before my first OCI at law school, is it really worth it to take some time during the year (if it doesn't affect my studies) to study for the patent bar and pass it?

Or are firms more interested in the idea that I'm patent bar (A) eligible?

I was thinking of maybe spending a few months before 1L actually started to buy a prep course for it and maybe take it before 1L or during. (and is it common for people to do this?)

Any advice?

Generally a good idea to let the firm pick up the tab for this.
Also, generally a good idea to get pesky certifications behind one's back.
Passing the patent bar is a good thing.

[Anonymous User]

Thoughts on a firm like Fitzpatrick, Hatch-Waxman litigation, and lateralling from there/with that kind of background? Thanks.

[markman]

Thoughts on a firm like Fitzpatrick, Hatch-Waxman litigation, and lateralling from there/with that kind of background? Thanks.

Where would you try to lateral to? That's a pretty good firm for that type of work, or for IP lit in general. If you're trying to go into high-tech (EE/CS stuff at some other firm), that should be relatively easy.

Lateraling in patent law is hot because patent litigation is "in" right now.

[Anonymous User]

I personally feel the best type of IP litigator has a prosecution background. So I don't like the idea of starting at a GP firm. But if you want to branch into litigation, then the GP groups tend to be very high quality.

For me, the ideal scenario is starting at a boutique, lateral to GP, and find good mentors along the way.

What if patent lit dies down? That's my biggest concern about going to a boutique. Don't want to end up with limited options if the business slows down a lot.

You are right patent lit is hot right now. So many troll cases ...

[markman]

I personally feel the best type of IP litigator has a prosecution background. So I don't like the idea of starting at a GP firm. But if you want to branch into litigation, then the GP groups tend to be very high quality.

For me, the ideal scenario is starting at a boutique, lateral to GP, and find good mentors along the way.

What if patent lit dies down? That's my biggest concern about going to a boutique. Don't want to end up with limited options if the business slows down a lot.

You are right patent lit is hot right now. So many troll cases ...

I'll say this. Patent litigation is extremely complex. It could die down, but that is an unlikely prospect in the next 30-40 years. Patents are key assets for hi-tech companies, at least for the subset of electrical, mechanical, and biotech companies. If you look across companies, very few have IP as a low priority. Even a company like Coca Cola could have some patented manufacturing or industrial processes. And even if manufacturing drops to zero in America, as long as manufactured goods are sold in America, they can infringe patents. So America becoming an information economy has little or nothing to do with patents so long as America consumes manufactured products like cars, soft drinks, televisions, computers, etc. See ITC. As long as America is a viable economy, IP is a viable asset. And the nature of mapping words in patent documents to property rights lends itself to litigation. You could have Chinese manufacturers suing Korean manufacturers over products sold in the U.S. market. Guess who is litigating those patents in E.D. Tx. or D. Del.? American lawyers.

You could hedge by practicing in a GP firm and doing both securities and patent litigation. But if you want to succeed in either, I think you're going to have to pick one, stick with it, and take that risk - much like an oncologist takes a risk that someone might find a cheap cure-all pill for cancer.

[Anonymous User]

I will be joining an IP boutique in August where I will primarily be doing prosecution. However, I hope to transition to patent litigation either at my current firm (has a small litigation practice) or at another firm in a year or two. Do you know if firms are willing to take on laterals who have only worked on prosecution matters but would like to transition to patent litigation? Are GP firms different than big IP shops like fish/finnegan when it comes to hiring young laterals who have done prosecution but have no real litigation experience?

[markman]

I will be joining an IP boutique in August where I will primarily be doing prosecution. However, I hope to transition to patent litigation either at my current firm (has a small litigation practice) or at another firm in a year or two. Do you know if firms are willing to take on laterals who have only worked on prosecution matters but would like to transition to patent litigation? Are GP firms different than big IP shops like fish/finnegan when it comes to hiring young laterals who have done prosecution but have no real litigation experience?

Don't worry. You'll be fine.
The only exception will be the lit-only GP pat-lit groups, where there'll be a rebuttable presumption that you can handle litigation - rebuttable of course by crappy work. But even they will be glad to have you on the team. Someone's gotta go through the file.

Bottomline, patent "litigation" is all about the patent (spec, claims), the phosita, the file history, etc. Most of this is technically heavy, legally lite. Then you apply substantive Fed. Cir. patent law to whatever's going on in an instant case, and that's about it. A lot of it is jockeying over what claims mean, what was disclaimed, etc., and to successfully do that you really need to dive deep into the technology.

[Anonymous User]

A lot of it is jockeying over what claims mean, what was disclaimed, etc., and to successfully do that you really need to dive deep into the technology.

Just curious, is this part purely technical arguments, or would you rely on case law?
Do the judges or their clerks really understand the technical aspects?

[markman]

A lot of it is jockeying over what claims mean, what was disclaimed, etc., and to successfully do that you really need to dive deep into the technology.

Just curious, is this part purely technical arguments, or would you rely on case law?
Do the judges or their clerks really understand the technical aspects?

There's zero case-law-based litigation that happens at claim construction. This might surprise you given that Markman hearings are legal determinations, not factual determinations. But the truth is that the same stock cases are cited for the general propositions laid down by the CAFC. And those principles don't change. Everyone cites the same cases, and uses practically the same stock "Legal Principles" paragraphs in Markman briefs. For claim construction itself, the claim language, specification, and file history are the three things that determine patent scope. You don't go finding "precedential" claim construction for term X in a third party's patent in a different litigation and try to apply that to an instant case. So you're looking at claim language, specification, file history - all of which are tech-heavy. The spec has diagrams showing embodiments. The claims describe the invention itself. And the file history discusses prior art, also in a technical way. So all of it is technical.

And yes. Judges and clerks are way more sophisticated than you think. Not because they're inherently smart. But because opposing counsel will do one hell of a job teaching them in their slanted way what the technology means. They'll bring in Department Chairs of top engineering schools to explain what certain technologies mean. So the other party's obligation is to hire another Department Chair of another top engineering school to push back. Judges and clerks are smart enough to get all this instruction from highly motivated parties and figure out what the technology is all about.

They do not walk alone.

[collegebum1989]

Thank you for answering our questions. I'm applying for law schools this upcoming cycle, so I just had some basic questions about the IP field.

1. How is the market for attorneys with BME degrees? I have an undergraduate and masters in BME, but I've read firms won't distinguish it as a engineering degree and associate it with bio.

2. What's the mid-career salaries for patent litigators vs. prosecutors. I understand that there are many factors involved, but just wanted a ballpark.

3. Do firms value scientific experience (publications, fellowships, etc) when evaluating your credentials for a position?

Thanks!

[jim-green]

What do you mean by 'lic' when you said 'go work at a patent boutique, do all three (lit, lic, pros)'? Also, what is ITC.

[wiseowl]

im certainly not OP but lic likely means licensing

This is oversimplifying it, but ITC is the International Trade Commission in Washington. It's an independent govt agency that essentially acts like a federal district court. A lot of litigation happens there trying to block importation into the US of goods that allegedly infringe patents. Many of the "smartphone wars" cases you hear about on the news (Apple v Samsung, Apple v HTC) are happening in ITC alone or in ITC concurrently with district court litigation.

ITC cases are notorious for being very fast. Young associates can bill a lot of hours very quickly but also lose their will to live.

[jim-green]

im certainly not OP but lic likely means licensing. This is oversimplifying it, but ITC is the Internatio ... ociates can bill a lot of hours very quickly but also lose their will to live.

Thanks, so if I work in a firm in SV, I'll have to travel to DC to litigate there? Or probably, the firm will not assign me to the case I guess.

[PinkCow]

Hey, sorry if you already answered this question. I looked but didn't see anything too similar. I majored in math (applied Ops Modeling emphasis, not theory) and minored in physics (again applied - E&M, Computational Physics, etc.). Because of my math/phys credits, I can sit for the patent bar.
Most job postings I see focus heavy on the engineering/chemistry background. Do you think my math/physics mix would put me at a disadvantage for interviews (assuming I have the LS GPA)? In actual practice?

Thanks!

[Anonymous User]

markman, thanks for taking the time to do this.

As an incoming 1L with a finance undergrad who is interested in IP litigation, what would you say are the best things I can do from this point onward to make myself competitive in the IP practice area?

[ip2012]

Markman, if you are still answering questions, I would like to know how much background technical knowledge is needed to practice IP lit?
(for example, will someone with a bio background be in over their heads trying to do infringement claim charts for a software program?)

[Anonymous User]

.

[markman]

Markman, if you are still answering questions, I would like to know how much background technical knowledge is needed to practice IP lit?
(for example, will someone with a bio background be in over their heads trying to do infringement claim charts for a software program?)

for PRG you'll need bar license. PTAB can pro hac you, but they won't if you're not reg'd. just look up these acronyms and read some literature you'll figure out what I just said.

PRG will be important. They're trying to go from district courts to PTAB and they'll succeed to some extent.

Speaking about D.Cts and ITC alone, you don't "need" tech bg, but how you're going to construe claims or prep noninfr or inval contentions without a tech bg is your call.

Employers use tech bg as proxy for competence. But it's more than that. Lots of cases I've worked on, I've had to employ my tech bg and have actually had to jog my memory back to college.

[markman]

markman, thanks for taking the time to do this.

As an incoming 1L with a finance undergrad who is interested in IP litigation, what would you say are the best things I can do from this point onward to make myself competitive in the IP practice area?

I think you could be a hot commodity in the soon-to-be-real patent commodities market.

Not sure how you could leverage finance into being a line litigator. I don't see the connection there.

[markman]

Hey, sorry if you already answered this question. I looked but didn't see anything too similar. I majored in math (applied Ops Modeling emphasis, not theory) and minored in physics (again applied - E&M, Computational Physics, etc.). Because of my math/phys credits, I can sit for the patent bar.
Most job postings I see focus heavy on the engineering/chemistry background. Do you think my math/physics mix would put me at a disadvantage for interviews (assuming I have the LS GPA)? In actual practice?

Thanks!

i dont think so in actual practice. i think so re interviews.

pound for pound (i.e. grade for grade), they'd want EE over a physicist/mathematician. that's been my experience.

[Anonymous User]

I'm currently a rising 3L at a T20 wanting to go into patent lit after graduation. I'm barred at the PTO but only have an undergraduate chem degree. I have median grades and no law review or journal. Decided to do environmental law this summer at a government agency so did not summer anywhere. Have ties to DC and NY.

Anyone have advice on which firms I should be targeting?

[markman]

I'm currently a rising 3L at a T20 wanting to go into patent lit after graduation. I'm barred at the PTO but only have an undergraduate chem degree. I have median grades and no law review or journal. Decided to do environmental law this summer at a government agency so did not summer anywhere. Have ties to DC and NY.

Anyone have advice on which firms I should be targeting?

Do you want to do prosecution?

[markman]

im certainly not OP but lic likely means licensing. This is oversimplifying it, but ITC is the Internatio ... ociates can bill a lot of hours very quickly but also lose their will to live.

Thanks, so if I work in a firm in SV, I'll have to travel to DC to litigate there? Or probably, the firm will not assign me to the case I guess.

uh no
they'll assign you to ITC work alright. Lots to bill.

you can bill from mars.

[Anonymous User]

I'm currently a rising 3L at a T20 wanting to go into patent lit after graduation. I'm barred at the PTO but only have an undergraduate chem degree. I have median grades and no law review or journal. Decided to do environmental law this summer at a government agency so did not summer anywhere. Have ties to DC and NY.

Anyone have advice on which firms I should be targeting?

Do you want to do prosecution?

No I would prefer not to do prosecution, I enjoy litigation and most of my experiences in law school have been based on litigation (1L summer doing copyright litigation, doing a clinic at school, working at the USAO's office, judicial internship...)

[jim-green]

im certainly not OP but lic likely means licensing. This is oversimplifying it, but ITC is the Internatio ... ociates can bill a lot of hours very quickly but also lose their will to live.

Thanks, so if I work in a firm in SV, I'll have to travel to DC to litigate there? Or probably, the firm will not assign me to the case I guess.

uh no
they'll assign you to ITC work alright. Lots to bill. you can bill from mars.

Thanks, this helps.