patent litigator taking questions Forum

[markman]

shoot

[Julio_El_Chavo]

How's the lateral market?

[gotmilk?]

boutique firm or general practice firm?

What year are you?

Are you in a major location for IP (like Silicon Valley, for example)

What kind of responsibilities do you typically have?

[pinkcamellia]

What classes should someone take if they are interested in patent litigation?
Have you ever done any prosecution stuff?

[markman]

How's the lateral market?

its insane, more than any other practice area. I could have my pick of jobs, and I'm not elite (non t14, but EE + t20 + top 10%) <-- I've seen enough of those to think I can retain anon

[Julio_El_Chavo]

How's the lateral market?

its insane, more than any other practice area. I could have my pick of jobs, and I'm not elite (non t14, but EE + t20 + top 10%) <-- I've seen enough of those to think I can retain anon

top 10% is elite, breh

[markman]

boutique firm or general practice firm?

What year are you?

Are you in a major location for IP (like Silicon Valley, for example)

What kind of responsibilities do you typically have?

I'm a fourth year. I've worked at both (think fish/finnegan/etc. and then think orrick/ropes/etc.)

I'll pass on the second question.

It's been a mix of everything. I got really lucky and got to do a LOT of work on a smallish patent case (solo inventor v. our client), argued the markman in that case, first year did a lot of MSJs that were destined to be denied (that's how they ease you in), took deps my second and third years, non-infringement contentions, claim construction mostly. this year, i directed our expert in a mid-size case. I'd say overall my experience is probably on the lucky side of the spectrum. very little doc review. i worked on couple itc cases last year, that was the only time i can say i've worked 70 hour weeks. so far its all been a good experience.

i've changed some of the factual details above to preserve anon, but i think the above is a roughly-equivalent experience to what i've had. you might be curious about travel, i've spent a good amount of time in delaware so far. none in texas. some in the midwest/west coast.

[markman]

What classes should someone take if they are interested in patent litigation?
Have you ever done any prosecution stuff?

Yes. I have a reg number, and I worked in a mix of prosecution/litigation (actually, strangely enough, more pros than lit) in one of the two firms I have worked at.

Classes don't matter for litigation. I would just make sure I'm a good writer. Classes don't matter. People seem to think (and I say this based on the little recruiting I've done) that it's crucial to take Civ Pro and/or Evidence and/or Patent Law. I don't think so. Just graduate with good grades.

[pinkcamellia]

What classes should someone take if they are interested in patent litigation?
Have you ever done any prosecution stuff?

Yes. I have a reg number, and I worked in a mix of prosecution/litigation (actually, strangely enough, more pros than lit) in one of the two firms I have worked at.

Classes don't matter for litigation. I would just make sure I'm a good writer. Classes don't matter. People seem to think (and I say this based on the little recruiting I've done) that it's crucial to take Civ Pro and/or Evidence and/or Patent Law. I don't think so. Just graduate with good grades.

Thanks, that's really helpful. I appreciate you taking questions and wish you the best of luck!

[markman]

Thanks, that's really helpful. I appreciate you taking questions and wish you the best of luck!

You're welcome. I tried editing the above to be cute about this.

But I think if you're top 50% at HYS, or if you're top 33% at t14 or top 20% at t20 - you should be golden for a patent litigation job at most firms. These numbers are arbitrary so please put as much stock in them as reasonable.

When I got my first job in law school as a summer, I did not want to become a patent litigator. I only transitioned because I learned I liked it more as a summer associate. So maybe I'm not the best datapoint. It seems like my grades mattered more at the GP firm. Kind of strange because the boutique definitely did qualitatively and quantitatively greater pat lit work than the GP firm. It's a cultural thing.

[pinkcamellia]

Thanks, that's really helpful. I appreciate you taking questions and wish you the best of luck!

You're welcome. I tried editing the above to be cute about this.

But I think if you're top 50% at HYS, or if you're top 33% at t14 or top 20% at t20 - you should be golden for a patent litigation job at most firms. These numbers are arbitrary so please put as much stock in them as reasonable.

That's good to know. The person I was asking for is top 10% at a T20 and has a 1L summer job at a smaller patent firm and is looking into patent litigation - testing out the job market at the Loyola patent fair this August. Seems like things might go alright, from what you're saying. It's hard to get a read on the market.

[markman]

Thanks, that's really helpful. I appreciate you taking questions and wish you the best of luck!

You're welcome. I tried editing the above to be cute about this.

But I think if you're top 50% at HYS, or if you're top 33% at t14 or top 20% at t20 - you should be golden for a patent litigation job at most firms. These numbers are arbitrary so please put as much stock in them as reasonable.

That's good to know. The person I was asking for is top 10% at a T20 and has a 1L summer job at a smaller patent firm and is looking into patent litigation - testing out the job market at the Loyola patent fair this August. Seems like things might go alright, from what you're saying. It's hard to get a read on the market.

Yeah top 10% t20 is my profile, and if he or she has any sort of technical background whatsoever, my best bet is they will do very well at getting a job in a good pat lit group.

Of course, it depends on their geographic ties. But they'll be just fine.

[Anonymous User]

I'm a 2L that will be working as a summer associate in a small firm that mostly does patent prosecution.

Is there anything that I'm expected to know before going in? (Or, to make this question more suitable, is there anything that you would expect a summer associate to know before stepping into the job, or is everything learned on the job?) I have a Physics degree, but admittedly have forgotten most of the science I knew in undergrad.

[gotmilk?]

Thanks for the responses. I'd love to hear more about GP v. boutique, as I chose a GP firm with a smaller (but apparently well-regarded?) patent lit department over several of the GP "big names" and a boutique. I'm now a little worried that the work won't be the best or most interesting or that I won't get early experience as much as with a boutique, although I know someone in my group who started with the firm, went to a boutique, and came back because he liked my firm's practice better, so who knows. Any more information about the difference between the two places, positives and negatives, and whether you think good small groups in GP firms exist would be much appreciated.

[markman]

I'm a 2L that will be working as a summer associate in a small firm that mostly does patent prosecution.

Is there anything that I'm expected to know before going in? (Or, to make this question more suitable, is there anything that you would expect a summer associate to know before stepping into the job, or is everything learned on the job?) I have a Physics degree, but admittedly have forgotten most of the science I knew in undergrad.

for prosecution? no. nothing whatsoever. And I would not worry about your tech background insofar as your level of comfort. The whole point of tech bg isn't so you can apply what you learned in college years ago, but that you are capable of picking up sci/engg topics.

i did ee, and i was prosecuting videogame software patents for the most part. nothing ee-related. for me, the beginning was difficult because i was thrown in the middle of a prosecution. but then when the same patents you've worked on come back to you for later work, that's when your value is most realized. i got to interact with clients and was emailing clients directly with barely minimal supervision in the first month of my full-time job as a prosecutor.

i'm a 4th year litigator now, and i still don't have that level of direct client access. so that's definitely a plus for prosecution.

[markman]

Thanks for the responses. I'd love to hear more about GP v. boutique, as I chose a GP firm with a smaller (but apparently well-regarded?) patent lit department over several of the GP "big names" and a boutique. I'm now a little worried that the work won't be the best or most interesting or that I won't get early experience as much as with a boutique, although I know someone in my group who started with the firm, went to a boutique, and came back because he liked my firm's practice better, so who knows. Any more information about the difference between the two places, positives and negatives, and whether you think good small groups in GP firms exist would be much appreciated.

well i did a ton of prosecution at the boutique. i didnt do much litigation. but i wasn't asleep at the wheel. i would pick a boutique over a GP firm hands down. i know several GP groups. they just dont match up in terms of familiarity or expertise in patent matters. if you had your choice, go with a boutique for the best training and frankly the best people.

but if you are in the GP world, it doesn't really matter. if you're referring to "well-regarded" groups, i'd say most of that is marketing. they regard themselves a lot more "well" than in-house counsel regard them. i wouldn't get swayed by marketing. if you're at a firm's patent group, you're good to go.

in GP firms, you'll see a lot of generalists on patent cases. in boutiques, that's not the case. what does that mean? well, you get to learn from people who look at the same case from a diff perspective.

[togepi]

How well would I fare with a Civil Engineering degree in Patent Litigation?
I've read that some patent litigators do not have engineering degrees and it will be a strong boost.

Also, what do firms place more emphasis on? Law school grades or undergraduate grades?

[markman]

How well would I fare with a Civil Engineering degree in Patent Litigation?
I've read that some patent litigators do not have engineering degrees and it will be a strong boost.

Also, what do firms place more emphasis on? Law school grades or undergraduate grades?

Civil is fine. Some people like to make certain gradations like (CE/ChemE/AE) versus (EE/bio phd). I think it's all a bit overstated. CS majors and Environmental Science majors can pick up the functioning of an op amp in like five minutes. It's no big deal. I wouldn't worry too much about it. In fact, it's GP firms where the recruiting is done by non-tech people who don't know wtf they're doing, which is why they place a false premium on EEs. If you go somewhere where they know wtf they're doing, you don't get bonus points for your major.

As far as what the firms place more emphasis on, it depends on the firm. Some people say lit = law and pros = undergrad. That has not been my experience. Very generally speaking, yes it's true. But it really depends on the firm. As a norm, most boutiques look at undergrad grades even if they're hiring for lit. And most GPs don't ask for undergrad grades BECAUSE they're hiring for lit.

as insurance, do best in law school because if you want to lateral from boutique to gp, the law grades will be important.

[togepi]

Thanks for the information, I ask because I did pretty poorly in undergrad due to the difficulty the engineering classes presented me. Do employers seem to be pretty lenient or will bad grades cause me to not get employment even with good law school grades?

[Anonymous User]

Q1:
Could you give some advice for 2L SA at a patent lit group of GP firm, CA branch office?

I have an ee background, but I'm quite worried about that because my knowledge is outdated and I'm not adept at circuit design or programing. Would I be screwed for the summer, especially when given a claim chart / infringement chart assignment to see if "I got it?"
Btw, the firm has a sizable patent prosecution group, so would they take over the technical stuff?

Q2:
How often are patent cases really won or lost on purely technical aspects, e.g. real infringement / invalidity? I interned at a federal court and got the impression that the clerks don't have the time to figure out the MSJs or dig thru hundreds pages of expert testimony, and of course most judges don't have a clue.

So do lawyers win / lose on procedural stuff, and themes like someone stole stuff, someone was the bad guy, someone was dishonest, etc.?

Q3:
How much doc review should junior associates expect? In my interviews, some attorneys implied there's little because the firms nowadays outsource doc review. But I feel it would be too good to be true?

Thanks a lot for advice. Apparently Q1 is the most important to myself. Summer program is starting in less than 2 weeks.

[englawyer]

what are the top 5 or so patent lit departments in your opinion (firms) ??

[Anonymous User]

Thank you for doing this. Too little information here on the patent field beside the PLIP and "I don't have a science degree can I do patent lit?" threads.

How long were you at the boutique and why did you leave?

What were your hours at the boutique like?

You say you did a ton of pros at the boutique, how much lit then? Were you steered one way or the other?

Where do you see yourself in 5 years?

Thanks!

[piccolittle]

What are the exit options like, particularly in-house? I know you mentioned that lateral hiring is hot, but I wasn't sure if that included non-firm stuff. What kind of in-house positions would patent lit set you up for (only litigation, or compliance/transactional as well), and what kind of qualifications do you need to bring with you? Is in-house hiring as competitive as I imagine?

[Anonymous User]

interested to hear your answers to the others' questions.

[markman]

Q1:
Could you give some advice for 2L SA at a patent lit group of GP firm, CA branch office?

I have an ee background, but I'm quite worried about that because my knowledge is outdated and I'm not adept at circuit design or programing. Would I be screwed for the summer, especially when given a claim chart / infringement chart assignment to see if "I got it?"
Btw, the firm has a sizable patent prosecution group, so would they take over the technical stuff?

No, not for summer. Afterward, you might have issues if you're not able to pick things up. A lot of times, you will do things like prepare tech tutorial for judge, prep an expert for depo, outline his statement in support of an MSJ, all sorts of EE-stuff. For example, my first EE-related patent dealt with FETs. I forgot what FET stood for and had to Wiki it. So, the EE thing will come back to bite you if you just don't know what the hell a FET is and what base means or source means or ground means. I think the first week or so of a new case will be challenging, but you have experts with 100 publications and Chairs of ECE departments who are being paid to help out. The firm I worked at (boutique) had tech advisors, but they weren't THAT much better than me at EE stuff. One guy was a programmer and he was able to help with the videogame programming case that I sometimes would get overwhelmed by. But code is the easiest part to get overwhelmed by because it can be voluminous. Although I'd say code is easier than EE circuit schematics which are almost intended to be intimidating.

Bottomline, you got the job based on your tech background, it's not a freebie - and you have to draw on your tech bg. The better you understand your client's technology, the better legal arguments you'll be able to make for non-infringement and invalidity.

Q2:
How often are patent cases really won or lost on purely technical aspects, e.g. real infringement / invalidity? I interned at a federal court and got the impression that the clerks don't have the time to figure out the MSJs or dig thru hundreds pages of expert testimony, and of course most judges don't have a clue.

So do lawyers win / lose on procedural stuff, and themes like someone stole stuff, someone was the bad guy, someone was dishonest, etc.?

Almost always technical. Everything is about the Markman and the MSJs. If you're plaintiff and you survive D-MSJs, that's a victory in and of itself. Because once you figure out the purely legal issue of patent scope, the rest is just looking to see if the product is within the scope or not.

Patent cases rarely go to trial. So there's not much bad guy/good guy stuff going on. Except for stuff like IC.

Q3:
How much doc review should junior associates expect? In my interviews, some attorneys implied there's little because the firms nowadays outsource doc review. But I feel it would be too good to be true?

It varies by firm and case. Some firms are staffed with contract attorneys who do doc review. If you have a tech background, the firm isn't going to waste your expertise by putting you on doc review. That was my experience, i.e. that my tech background put me on the fast track to do really key aspects of patent cases.