Thanksgiving is in the air, even though the weather here in New York City has been more suggestive of the approach to Memorial Day. In the spirit of the season, I think it is worthwhile to take a moment to celebrate the blessing of being able to practice in an area of law that remains interesting and energizing even after over two decades. While I have been fortunate over the years to have handled matters involving copyright, trademark, and trade secret issues, the bulk of my practice has always revolved around patent litigation, which will be the focus of the rest of this column. (I invite readers to email me to share what they continue to love about their area of IP practice, which may prove interesting fodder for a column.) As you will see, most of my comments will be applicable to both patent prosecutors and litigators, which should not be a surprise considering how intertwined these disciplines are.
To start, I can hearken back to a column that I wrote on these pages back in 2018. There, I shared some thoughts arising out of some advice I had been solicited for by a student just starting the law school application process. Considering the student’s potential interest in patent practice, my advice centered on how someone maximizes the law school experience to best position themself for success as a patent practitioner. For purposes of this column, however, I would prefer to address current law students who are perhaps deciding what area of practice to focus their elective studies on, as well as junior associates that might have the ability of joining their firm’s patent practice group. There are always those ready to tear down or discourage younger lawyers from choosing a particular practice area. My hope is that by highlighting some of the positives of patent practice, those on the fence might have reason to take a deeper look and consider joining this ever vital and important area of law.
As with most things of importance, a variety of experiences and challenges are often the calling card for long-term contentment in any endeavor. And you will have a variety of experiences, while facing varied challenges, during a patent litigation career. Driving those experiences and challenges will be situations arising out of the relationships you make along the way — with the: 1) lawyers you encounter as colleagues and opposing counsel, 2) clients and audiences (e.g., judges, juries, etc. you must interact with), and 3) with the material that forms the basis of your professional focus and responsibilities. I will discuss a bit more about each of these categories in turn.
First, your fellow patent litigators. They will be a diverse bunch, at least in terms of educational backgrounds and personalities. (Work is still being done on making patent litigation a more welcoming choice for lawyers from diverse ethnic backgrounds and economic status.) Some will embrace an identity as a “patent nerd,” digging deep into the technical aspects of a case and getting as worked up about the science as if they were an engineering or computer science student. Others will identify more with the idea that they are specialized federal court litigators, at home discussing the nuances of venue, or damages, or any other of the manifold legal issues that are present in even the most simple patent cases. You may be interacting with them as a colleague or an adversary, but either way, practicing patent litigation will challenge you to adapt to a wide range of personality types. While interacting with some will be difficult, you can also be assured that nearly everyone you encounter will be intelligent and conscientious — with at least some affinity for the work they do, as patent law is not a practice that many “fall into.” Instead, it is an area of law that is the preferred choice for many of its practitioners.
Second, working as a patent litigator will introduce you to a wide variety of audiences for your work product. You will likely encounter a range of clients, including those that are legally unsophisticated but passionate about patents, as well as in-house counsel that may be very legally sophisticated and equally passionate about the patents their company owns, or is defending against, and their value. Often, you will have to convince the nonlawyers at the client you are representing of the strength of their case, including the economic prospects of continuing with litigation or deciding to reach a settlement. Likewise, you will find yourself arguing before generalist district court and magistrate judges, as well as before patent-focused administrative law judges in the USPTO and ITC. And you will spend much of your time considering how a law jury might react to the circumstances of your case, even as the the overwhelmingly majority of cases will end up disposed of well before a jury is ever empaneled. Going forward, you will likely also encounter more investment-focused folks on your patent litigation journey, whether in the form of litigation funders, insurers, or those whose investments in the public markets are impacted by patent litigation activity.
Lastly, patent litigation promises to never be a boring enterprise, at least in terms of subject matter. Each case or matter is an opportunity to immerse yourself in an interesting area of technological or scientific development, often aided by top-notch experts in the field of inquiry. For those with a more financial bent, patent cases provide the opportunity to work with leading economists as they grapple with the twisting rope of patent damages law as they try to present a persuasive case for assigning a value to the patents in controversy. And for those who like to focus on the nuances of procedure, patent litigation provides the opportunity to practice across a wide range of fora, each with its own rules and processes, from the federal circuit to the USPTO and a nation-spanning group of district courts as well. Aiding in the challenge nowadays is a growing set of analytical and AI tools, each of which presents opportunities to engage with the vast universe of patent and litigation data in new and creative ways. In sum, the future is bright for patent litigators. I hope you consider adding your talents to the mix.
Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.