The practice

IBoth sides of the caption

Patent cases arrive from two directions. Some companies own a patent and believe somebody is using it. Others open the mail and learn that they are the ones being accused. The work has run in both directions, for companies barely past founding and for a few of the most valuable technology companies in the world.

That matters to you mainly because the two sides read a document differently. A demand letter written to open a negotiation is not the same instrument as one written to build a record for a filing three months later, and the difference is usually visible in what the letter asks you to do next rather than in what it accuses you of.

Both sides also share a fact that surprises people on the receiving end. Copying is not required. A product can infringe a claim even though it was invented independently, in a different building, by people who had never heard of the patent or its owner.

IIIt begins in the file

The first years of this career were spent writing patents rather than fighting about them. Hundreds of applications drafted or supervised, which means hundreds of arguments with examiners about what a claim was allowed to say and what had to be given up to get it granted.

That is an unusual place for a trial lawyer to begin, and it decides where a case begins. Every patent carries a public record of the argument that produced it, called the prosecution history. Applicants narrow their claims to get them allowed. Those narrowings are permanent, they are public, and they limit what the patent can be argued to mean years afterward. Reading the whole of that record before taking any position about what a patent means is not a strategy so much as a refusal to guess.

IIINine months on the other side of the desk

For nine months the work moved inside a company, on secondment as intellectual property counsel at T-Mobile. Developing the portfolio, hiring and managing outside counsel, sitting with inventors, and weighing offensive and defensive strategy against a budget that had already been set by somebody else.

Outside counsel who have never had to approve an invoice tend to answer the question of whether something is worth doing with the observation that it could be done. Nine months of receiving those answers instead of sending them changes how the question gets answered afterward.

IVThe board, and the appeal

Not every patent fight happens in a courtroom. Some of it happens at the Patent Trial and Appeal Board, in a proceeding called an inter partes review, which asks whether the patent should have been granted at all. It runs on a different clock and a different budget than a district court case, and deciding whether to use it is one of the earliest strategic choices in a dispute.

The post grant work includes multiple inter partes reviews, five of them argued in person, along with covered business method proceedings and ex parte reexaminations.

Above all of it sits the Court of Appeals for the Federal Circuit, which hears patent appeals from every district in the country. That work has included briefing and oral argument. The argument in Buckman Laboratories v. Solenis is in the court's public recordings, if you would like to hear what a patent argument actually sounds like before you are sitting in one.

VThe rooms

Which judge you draw shapes a case more than most people expect. Districts differ in how fast they move, how they handle claim construction, and how much patience they have for discovery fights. A case that would take three years in one courthouse can be tried in eighteen months in another.

Matters have been argued before Judges Lucy Koh, Rodney Gilstrap, Vince Chhabria, Leonie Brinkema, Jon McCalla, Catherine C. Blake, Mary Pat Thynge, Susan van Keulen, Jan DuBois, Philip Gutierrez and B. Lynn Winmill.