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Patent Litigation Is Not Just for Scientists

April 26, 2021, 8:00 AM

Many view the practice of patent law as a field for specialists, reserved for the likes of former engineers or scientists, not general lawyers. The eligibility criteria for practicing before the U.S. Patent and Trademark Office—requiring a STEM undergraduate degree or similar coursework—support this common perception.

Those eligibility requirements have (rightfully) been criticized as outdated and tending to exclude women and minorities from the practice of patent law. Now, with support from members of Congress for changing those criteria, the PTO has expressed a willingness to expand the pool of its patent practitioners.

But the PTO is not the only place to practice patent law. Patent litigation before federal courts continues to thrive, and those proceedings likewise benefit from diversity among practitioners. And while practitioners at the PTO must possess a technical background, practice before federal courts only requires admission to a state bar and the federal court itself, neither of which necessitates a technical degree.

Even the Federal Circuit—which hears appeals in patent cases from across the country, including from the PTO—imposes no technical-degree requirement.

The Importance of Generalists in Patent Litigation

Nonetheless, many law students and lawyers believe they should not take on patent cases without a technical degree. That could not be more wrong. Attorneys with generalist backgrounds are not only qualified to litigate patent cases, they can be valuable assets on those cases.

Patent cases in federal courts are tried to judges and juries—the vast majority of whom do not have a technical background or any prior familiarity with the patented technology. Just like a generalist lawyer, those decision-makers instead have to learn the technology from the ground up. And a generalist lawyer who has only recently gotten up to speed on the technology herself may have an edge in explaining that technology to judges and juries who also lack a technical background.

For that reason, it should come as no surprise that attorneys without technical degrees have taken leading roles in some of the most important patent cases. For example, the U.S. Supreme Court’s seminal case on the ability to patent human genes—Association for Molecular Pathology v. Myriad Genetics Inc.—was argued by Chris Hansen from the ACLU, Greg Castanias from Jones Day, and Donald Verrilli for the government. None have technical degrees, yet they were able to debate the science fluently with justices who were similarly new to the field.

Patent cases also raise a variety of non-technical issues. Just like other civil cases, patent cases commonly involve disputes over jurisdiction, discovery, damages, or other issues involving facts or law divorced from the technical concepts underlying the disputed patents.

These non-technical issues indeed may be some of the important disputes in a patent case. For example, given the potential for headline-grabbing damages verdicts, damages issues in patent cases can be hotly contested. And those disputes ultimately turn on the sophisticated economic analyses of dueling experts—much like damages disputes in other complex commercial matters, such as antitrust or securities cases.

Patent cases, moreover, demand the same effective lawyering skills already present in a generalist’s toolkit. Developing a coherent, credible, and captivating story for judges and juries wins patent cases just as any other.

To that end, lawyers in patent cases must carefully develop the documentary record, prepare their witnesses for deposition, and obtain critical admissions from hostile witnesses of the opposing party. Those lawyers must then marshal that evidence and the law into effective written and oral advocacy in the same way as any other advocate.

Patent Cases Allow Junior Lawyers to Hone Skills

Patent cases also can serve as useful avenues for junior lawyers, in particular, to hone their advocacy skills. Due to their high-stakes nature, patent cases can involve many disputed technical and non-technical issues alike. Moreover, many patent-heavy federal district courts have formal practices in place to encourage substantive participation by junior lawyers.

For example, in the Northern District of California (a hotbed of patent litigation), one judge’s civil standing order provides that he will consider holding oral argument even when he would not otherwise do so if a junior lawyer would conduct the argument. A judge in Delaware (another patent litigation hotspot) has a similar practice.

And even without formal practices, other judges with patent-heavy dockets are willing to hold more hearings to create opportunities for inexperienced lawyers to argue in court. Whatever their backgrounds, young lawyers seeking to fast-track their advocacy skills may consider patent litigation for this additional reason.

At bottom, patent cases are not just for former scientists and engineers. And a patent litigation team composed of attorneys with both technical and non-technical backgrounds can strike a formidable balance. Numerous studies have established that a diversity of perspectives delivers tangible benefits to team-based activities, and in our experience patent litigation is no exception.

Whether or not the PTO ultimately relaxes its practitioner eligibility requirements, lawyers should bear in mind that patent litigation has no similar barrier to entry—and that patent litigation teams can benefit greatly from the involvement of lawyers with generalist backgrounds mirroring those of the decision-makers in these cases.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

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Elise Baumgarten is a partner at Williams & Connolly LLP in Washington, D.C. She is a litigator who focuses on patent and complex commercial disputes.

Sumeet Dang is an associate at Williams & Connolly in Washington, D.C. His practice focuses on patent and appellate litigation in the pharmaceutical and tech industries.

Andrew Trask is a partner at Williams & Connolly LLP in Washington, D.C. He focuses his practice on litigation and appeals involving intellectual property and technology.

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