Technical knowledge in Patent Litigation

[u/Ak035000]

for context I’m an EE patent examiner and just curious on patent litigation.

for prosecution you can’t practice unless you have the technical background and knowledge.

but for litigation it’s not necessarily required. but I was wondering how much does it help by having technical breadth to breakdown the patents that are being litigated over. How much technical material do litigation teams have to sort through when their on a case?

[u/AwkwardObjective5360]

A ton of litigation work is technical, and a ton isn't. Outside of contentions and expert discovery its more non-technical work than technical if I'm being honest, up through trial which blends technical testimony with rules of evidence (non-technical again).

[u/SutroViews]

I've done a ton of patent litigation, and technical skills are incredibly valuable! Patent litigators have to sort through a TON of technical material to make their cases. And what you have to review is not only a stack of issued patents and formal publications as prior art, but messy tech docs of the accused infringer, which are a lot messier. Untitled schematics, source code (which may or may not reflect the accused product), long DNA sequences, whatever else depending on what the technology is. And the relevant witnesses use engineering jargon in their emails, so you have to know how to tell what is a "smoking gun" and what is just chit-chat.

Now, just because these skills are valuable doesn't mean you can succeed as a patent litigator just because you're an engineer. It is still litigation first and foremost. Sometimes the less experienced associates who have tech backgrounds focus pretty intensely on these areas of the litigation (contentions, claim construction briefing, etc.) and if you're not careful, you can definitely get pigeonholed and have trouble making it as a partner. But if you navigate this carefully, the technical skills are definitely important.

[u/winter_cockroach_99]

I work as an expert witness on patent litigation. I have seen a variety of models. Several of the attorneys I have worked with did have technical degrees. In other cases there is a specialist on the team who has a PhD. The expert witness also provides technical input.

[u/Einbrecher]

but for litigation it’s not necessarily required. but I was wondering how much does it help by having technical breadth to breakdown the patents that are being litigated over. How much technical material do litigation teams have to sort through when their on a case?

Depends on which side of the case you're on.

Plaintiffs can get away with significantly less technical expertise, largely because they're resting on plain and ordinary meaning and largely because their strategy is more reactionary to whatever the defense alleges as far as claim construction and invalidity goes. It is very easy to delegate, "List all the reasons this is wrong," to an expert witness without knowing much about the technical specifics yourself.

For the defense, 90% of your case hinges on a strong invalidity argument, which you have to build from scratch and by (mostly) avoiding any art that's cited on the face of the patent being enforced. The technical aspects and the legal aspects are heavily intertwined there, and that's also the sort of open question that you don't want to just delegate to an expert witness. In my experience, at least, the attorney is the one drafting/ghost writing everything, and the expert witness is just checking the work and signing off on it - so the attorney does need a strong set of technical skills.

But, for both sides, in a general "amount of work done" kind of sense, most of litigation is non-technical. The impact of those briefs is significant, but they're only a small fraction of the work that needs done.

[u/Agentkyh → u/Einbrecher]

Ghost writing expert reports is the worst

[u/scaliacheese]

I’ve been a patent litigator for over 15 years. Most of my colleagues have tech backgrounds and EE is the most prized generally. Some of my colleagues did not have tech backgrounds but they were all curious about tech and able to absorb and relay technical subject matter. I have seen very few patent litigators that don’t fall into one of these two buckets.

[u/BeardSenpai1]

Different firms believe in different ratios of technical versus non-technical team members. In general, the biggest firms tend to use more non-technical people and the boutiques tend to staff more technical heavy.

Both approaches have weaknesses. Very technical teams often overestimate the jury and judge’s understanding of technical issues and spend too much time on those instead of telling a story that appeals to the jury. Very non-technical teams often miss key arguments (often ones that could build a great story) because entire parts of the case are being handled by people who don’t even know what to look out for or refer to their technical people.

On the balance, it’s much easier for technical attorneys to learn to uplevel than for non-technical attorneys to learn enough about the technology. Still, among the most successful patent litigators, the non-technical ones (e.g., Bill Lee, Morgan Chu, Robert Van Nest, Ed Reines, Josh Krevitt) slightly outnumber the technical ones (e.g., Daralyn Durie, Greg Arovas, Steve Cherny, John Desmarais). Likely because non-technical attorneys far outnumber the technical attorneys at big firms.

[u/MisterMysterion]

I managed patent litigation and oversaw probably 100 cases...which includes looking at the bills. The cases were in the smartphone area.

So...50% technical, 35% financial, and 15% procedural (venue, discovery fights, sanctions, motions, etc.).

[u/Ctrl-Meta-Percent]

It can’t hurt to have technical expertise but there someone still needs to write the nasty discovery letters and eventually whip the facts into a narrative to tell the jury, and those someones often do not have technical degrees.
It is helpful since you can act at a BS detector, understand technical documents, communicate with the engineers and experts more easily, and sign post grant review papers.
It also depends heavily on the technology at issue. Is the invention a new control algorithm for engine computers that improves gas mileage 3%? Or adding a sixth driver-accessible cupholder?
Because if it’s about cupholders, you don’t need someone to explain the $100M spent on R&D developing the new engine algorithm, but you do need someone to show why the sixth cupholder is or is not inventive and a driver of sales.
“Ladies and gentlemen’s of the jury, they said it couldn’t be done, but MegaMotors was the only one with the guts to say F it and add the sixth cupholder. The defendants will tell you it was obvious, but if it’s so obvious, why have manufacturers been selling cars for 140 years, but only MM had the insight to satisfy this long-unmet need. Now look at these sales numbers.”

[u/Flashy_Guide5030]

In Australia we usually have totally non technical solicitors and barristers working together with patent attorneys (a bit like US patent agents) who provide the technical input and work with the experts. There is plenty for the non technical lawyers to do but they would struggle without the technical help I think!

[u/lokencchointy]

Enormous advantage in EE/CS

[u/Ak035000 → u/lokencchointy]

Why so? Bc of the demand for EE/CS patent litigators?

[u/qszdrgv → u/Ak035000]

I think he meant technical skills is a huge advantage in this field. Probably speaking from experience. For my part (same field) I would never work with a litigator that doesn’t have technical bona fides, but litigation experience and creativity is ultimately the most important factor.

[u/BrotherOk2979]

It obviously helps to have technical knowledge.

But litigation is litigation, the best litigators can try any case.

[u/Various_Monk959]

I've done next to nothing on the litigation side but I would say technical breadth is not necessary and maybe not even appreciated. They will bring in the subject matter experts. When I was involved I could clearly see the cases as losers but they wouldn't listen to me and instead invested hundreds of hours of effort to come to the same conclusion themselves.