IP Litigation Partner Taking Questions Forum

[Anonymous User]

Hi there,

IP litigation partner here. I'll try to be as upfront as I can without outing myself. Hoping to help with the tough decision making a lot of you are about to go through.

[Anonymous User]

Thanks so much for doing this! I am a rising 2L and I am now considering my offers at various firms, including an IP boutique firm and several general practice firms. Given that my ultimate goal is to work in-house, in which companies seem to mostly want associates with patent prosecution work, would going into a firm that does only IP litigation hurt my exit opportunities? I've heard that associates with exclusively IP-litigation experience can still find in-house positions, but are the chances significantly lower?

[Anonymous User]

Thanks for doing this. In your view, is it better to start at an IP boutique like Fish/Finnegan, an IP lit-only boutique like Desmarais, or a GP firm for IP lit? I know there are cultural differences so I guess what I am asking is which option would provide the most flexibility down the road.

[Anonymous User]

How often is it that associates just can’t understand the tech in question, and how do firms handle that - both short and long term

I did pretty well 1L, but I was really nothing special as an engineer/engineering student.

[Anonymous User]

Thanks so much for doing this! I am a rising 2L and I am now considering my offers at various firms, including an IP boutique firm and several general practice firms. Given that my ultimate goal is to work in-house, in which companies seem to mostly want associates with patent prosecution work, would going into a firm that does only IP litigation hurt my exit opportunities? I've heard that associates with exclusively IP-litigation experience can still find in-house positions, but are the chances significantly lower?

OP here.

Congratulations on all the offers. I think the real question you need to ask yourself is what kind of work to do you want to ultimately do in-house. Litigation and prosecution are very different careers and lifestyle choices and there will be opportunities in-house for both prosecutors and litigators. I don't have a reason to think there are more patent prosecution in-house jobs than litigation jobs, but maybe you know something I don't.

I also don't think the skills transfer in the same way; I think a patent litigator who wants to prosecute patents probably can pick it up easier than the inverse. Patent litigation involves a lot of understanding what prosecutors are doing; most prosecution does not involve understanding what the litigators are doing (since most patents are never litigated). So it would seem like being a patent litigator would keep more of your options open, and make you a more well-rounded in-house IP specialist, rather than just somebody who can manage some patent prosecutors.

But that's just my two cents on that one - I haven't tried to explore inhouse patent pros jobs before, so I may not be the best source.

[Anonymous User]

Thanks for doing this. In your view, is it better to start at an IP boutique like Fish/Finnegan, an IP lit-only boutique like Desmarais, or a GP firm for IP lit? I know there are cultural differences so I guess what I am asking is which option would provide the most flexibility down the road.

OP here.

I think it depends on what you're after and what you're trying to maximize. At a high level, if we're trying to maximize skill development and marketability, my general impression is you want to go where you're going to get the best experience, and sometimes that is a little more of an office-specific, rather than firm-specific, impression. Figure out who is going to trial more, whose junior associates are excelling, etc., and go there. That's probably going to maximize your ability to go elsewhere, since I can tell you it is pretty obvious on a lateral's resume if they've been doing doc review for 4 years or if they've actually doing substantive work.

Reputational stuff plays a small role in this too. I'd try to make sure you're at least going to one of the top three ranked firms in your batch of offers. (that's ignoring lifestyle choices - you have to make different decisions if you're maximizing that.)

Does that help? Feel free to ask follow-up if I'm not quite giving you the thoughts you're looking for.

[Anonymous User]

How often is it that associates just can’t understand the tech in question, and how do firms handle that - both short and long term

I did pretty well 1L, but I was really nothing special as an engineer/engineering student.

OP here.

It happens. Usually most of us are learning the tech at roughly the same level. Some stuff will always be super hard for some people, even if they're great engineers/scientists - EECS folks struggle with bio and chemistry, and vice versa.

Very rarely will something you learned or did in school be completely applicable to the tech. It's mostly just about being willing to learn it, being open about what you don't know and trying to figure out how to fix that. That's what technical experts and textbooks are for.

To be honest, sometimes having somebody super talented in the technology is actually no good - if you understand something at an intuitive level, it's very hard to explain to people. And explaining tech to people is one of the biggest jobs of an IP litigator.

edit because I didn't completely answer your question: In terms of how we handle it if somebody is falling short on the tech, it really isn't the end of the world. There's plenty of work in IP lit that doesn't directly involve the technology - there's managing the discovery/motion practice side of things, there's damages, etc. The only time I think this would be a real problem for an associate is if they continually don't seem to understand the tech, the practice, etc. - and that's less a "not getting the technology" issue and more a "maybe not a good fit for this type of work" issue.

[Anonymous User]

OP here.

I think it depends on what you're after and what you're trying to maximize. At a high level, if we're trying to maximize skill development and marketability, my general impression is you want to go where you're going to get the best experience, and sometimes that is a little more of an office-specific, rather than firm-specific, impression. Figure out who is going to trial more, whose junior associates are excelling, etc., and go there. That's probably going to maximize your ability to go elsewhere, since I can tell you it is pretty obvious on a lateral's resume if they've been doing doc review for 4 years or if they've actually doing substantive work.

Reputational stuff plays a small role in this too. I'd try to make sure you're at least going to one of the top three ranked firms in your batch of offers. (that's ignoring lifestyle choices - you have to make different decisions if you're maximizing that.)

Does that help? Feel free to ask follow-up if I'm not quite giving you the thoughts you're looking for.

Anon above - thank you, very helpful!

[Anonymous User]

Hi there!

I am a 2018 grad, Im very curious to know if it is advisable to limit my job search to only IP jobs. I am specifically looking for jobs in IP - Trademark, Copyright, and Trade Secrets. I focused my legal curriculum around IP classes. I worked my in an entertainment firm during school, and I really enjoined it. However, now that I have graduated, I find it very hard to find many job openings that are willing to take on a post bar. Would you recommend sticking to a job search in IP or broadening my search to other areas? thanks

[Anonymous User]

If I were in-house counsel and approached you with a patent and a potential infringer, how would you analyze the chances of successful litigation? Do clients usually approach you when they already did the analysis and are already pretty sure they want to file suit, or do they ask you to do the cost/benefit analysis and risk?

[Anonymous User]

What direction do you think IP lit is headed? Do you think a hyper conservative SCOTUS will matter?

What advice would you give a junior associate who seriously wants to become a trial lawyer (and, hence, partner)? Is attrition the same in a biglaw firm vs a litigation boutique?

[Anonymous User]

Hi there!

I am a 2018 grad, Im very curious to know if it is advisable to limit my job search to only IP jobs. I am specifically looking for jobs in IP - Trademark, Copyright, and Trade Secrets. I focused my legal curriculum around IP classes. I worked my in an entertainment firm during school, and I really enjoined it. However, now that I have graduated, I find it very hard to find many job openings that are willing to take on a post bar. Would you recommend sticking to a job search in IP or broadening my search to other areas? thanks

OP here.

Soft IP - trademark and copyright - seem to be smaller, more niche job markets. Patent litigation and, to a growing extent, trade secret litigation, are definitely in upswing. If you have a demonstrated interest and strong background to pursue IP, I would keep with it; but obviously there will always be more jobs available if you cast a wider net. I can't really help more than that based on the information in your question, but best of luck - it can be a challenging market out there for many lawyers, and you're not alone.

[Anonymous User]

If I were in-house counsel and approached you with a patent and a potential infringer, how would you analyze the chances of successful litigation? Do clients usually approach you when they already did the analysis and are already pretty sure they want to file suit, or do they ask you to do the cost/benefit analysis and risk?

OP here.

This isn't really about recruiting... It is a great question, though, but one I can't really answer in a quick response here. The short answer is that analyzing the chance of success in litigation is complicated and depends on a number of factors. In terms of how we are approached, it definitely happens both ways.

[Anonymous User]

What direction do you think IP lit is headed? Do you think a hyper conservative SCOTUS will matter?

OP here.

There are a lot of things the SCT or FedCir could do to that could abridge IP rights - narrow the allowability of patents under 101, increase PTAB discretion to invalidate patent, etc - but there are always going to be IP rights and there will always be a need to defend them. I think we may see change about how a legitimate plaintiff enforces its rights (e.g., perhaps by using a blended patent/copyright/trade secret claim, rather than purely one claim), but I think IP lit will continue to grow and be an important aspect of protecting innovation.

What advice would you give a junior associate who seriously wants to become a trial lawyer (and, hence, partner)? Is attrition the same in a biglaw firm vs a litigation boutique?

You don't need to be a partner to be a trial lawyer, even at a biglaw firm. The best advice I could give is to go to an office that is actually going to trial a lot. There aren't a lot of places that do that. That'll maximize your chances for getting the experience you're looking for, or at least the training.

Once you do that, figure out who is going to trial at that office. Ideally it will be the junior partners and senior associates doing examinations and arguing motions; then that can be you in a few years. A litigation boutique might claim to go to trial all the time, but if it is only the senior partner and his lieutenants doing the speaking in court, then you're never going to get your chance.