The practice

What it means

Patent suits belong in federal court, and they are heard all over the country rather than in one place. Where a case lands shapes how fast it moves, how much discovery it draws, and how early the judge will decide what the claims mean.

What it means for you

The work here runs on both sides, for companies from near-startups to some of the world's most valuable technology companies. A patent owner's problem and an accused company's problem are not the same problem, and they are not solved with the same moves. Having stood in both positions changes what gets noticed in the first read of a complaint.

What it means

Prosecution is the years-long written argument with the patent office that turns an application into a granted patent. It is a separate job from litigation, and most litigators have never done it. This one began there, drafting or supervising hundreds of applications.

What it means for you

It is the reason the written record of a patent is where the work starts rather than where it ends. Someone who has written those responses knows exactly what an applicant gives up to get a claim allowed, what the wording of a narrowing was meant to buy, and where in a file to go looking for it.

What it means

Nine months as IP counsel inside the company rather than outside it: portfolio development, managing outside counsel, working directly with inventors, and weighing offensive against defensive strategy with a fixed budget in the room.

What it means for you

A budget is not a suggestion, and an invoice looks different from the side that has to explain it. Nine months of approving other firms' bills is a different education from nine months of sending them.

What it means

A proceeding inside the patent office that asks a narrower question than a lawsuit does: should this patent have been granted at all, measured against earlier patents and printed publications. Three patent judges decide it. There is no jury.

What it means for you

Multiple of these, five of them argued in person before the Board. It runs on a different clock and a different budget than a district court case, and it can run alongside a lawsuit or instead of one. A company served with an infringement complaint generally has one year from service to file its petition, which puts the decision in your first few weeks rather than your first year.

What it means

Two further ways of testing a granted patent without a courtroom. Each has its own eligibility rules, its own timing, and its own consequences for what you can argue later in the district court case.

What it means for you

Handled in both. The useful question is never which route is best in general, it is which one is available to you, on your facts, before the deadline that governs it closes. That is a first-month question, and answering it wrong is expensive in a way that does not show up for a year.

What it means

Patent appeals do not go to the regional appeals court where the case was tried. They all go to a single court in Washington, which is why its decisions set the rules everywhere at once and why the argument in one company's case can change what a claim means in yours.

What it means for you

Briefing and oral argument there, including the argument in Buckman Laboratories v. Solenis, which sits in the court's public recordings. You are allowed to listen to a lawyer argue before you hire one, and very few people think to.

What it means

A patent case is assigned to one district judge who will make nearly every ruling in it, including the claim construction that usually decides the substance. Two judges applying identical law can run a case at completely different speeds.

What it means for you

Cases 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. What that is worth to you is not the names. It is knowing, before the first conference, how much argument a courtroom wants, how it handles experts, and how quickly it expects you to be ready.

What it means

Cryptography, encryption and digital security. Two-factor and multi-factor authentication. Telecommunications. Software. Imaging and encoding. Chemistry and materials. Blockchain and digital assets.

What it means for you

Two engineering degrees mean the technical conversation happens directly with the people who built the thing, rather than through an expert who explains it back a week later at an hourly rate. Ask any lawyer you interview whether they can understand your technology at the level it was built. The answer is easy to hear.

What it means

A trademark protects the name and mark a customer uses to know who made a thing. A copyright protects the expression rather than the idea. Neither is a patent, and companies routinely discover they needed a different one of the three than they thought.

What it means for you

Litigation and proceedings before the Trademark Trial and Appeal Board, on both sides. If the letter that arrived is about a name rather than a technology, it is a different fight with a different vocabulary, and it is worth being told so early.

What it means

Licenses, assignments and the intellectual property side of a deal. The paper that decides who owns what, and who is allowed to do what with it, usually written long before anyone is arguing.

What it means for you

A great many disputes are really disagreements about an old agreement nobody read closely at signing. Someone who has litigated the consequences writes the clause differently.