Patent Litigation Training: Law Schools’ Freedom to Operate

Vol. 6 No. 2

By

Michelle L. Gross is a professor of practice and director of the Lisa Foundation Patent Law Clinic at the Sandra Day O’Connor College of Law at Arizona State University. She is a registered patent attorney with Booth Udall Fuller, PLC and practices in all areas of intellectual property with a focus on transactional and prelitigation patent and trademark matters. She may be reached at michellegross@asu.edu. Eric W. Menkhus is a clinical professor of law and director of new program development at the Sandra Day O’Connor College of Law at Arizona State University. He teaches intellectual property, business law, and law for nonlawyers. His clinical practice, the Innovation Advancement Program, works in the area of technology commercialization with a focus on technology entrepreneurship. He may be reached at eric.menkhus@asu.edu.

With U.S. law schools making a push toward providing practical training to law students to decrease employer training costs, thereby making practically skilled law students more attractive in the job market, why does such a gap exist in the amount of practical training for students seeking careers in patent litigation?

Many schools have recognized that intellectual property law is a field that offers relatively good job prospects for graduates, and provide at least a modest offering of general intellectual property courses. However, our colleague at the Sandra Day O’Connor College of Law at Arizona State University, Dean Douglas Sylvester, notes in a companion article, Patent Transactions: Novelty and Best Modes in Legal Innovation, that the majority of patent law courses offered are based on transactional practice. Yet the number of patent lawsuits filed continues to rise, which indicates ongoing strength in the job market for newly graduated patent litigators.1 Of law schools that offer enforcement-oriented training, most offer a two or three credit lecture-based course on patent litigation that covers the broader concepts of the practice, such as infringement analysis, claim construction, venue and expert witness selection, and possible defenses.

Considering the high stakes and costs of a typical patent case—the average cost of a patent litigation is $1.2 million through the end of discovery and $2.1 million through final disposition for cases in which $1 million to $10 million is at stake2—it is virtually impossible to provide students with a significant portion of the practical skills they need to know in a single, lecture-based course. Wouldn’t students with an interest in patent litigation be much more marketable to prospective employers if they were able to receive similar practical training as those pursuing careers in civil or criminal litigation via externship positions and clinical experiences to enhance their practical skills and reduce employer training costs? The obvious answer, in turn, raises the question of why there is such a lack in courses specifically directed toward building potential patent litigators’ skills prior to graduation.

A shortage of experienced patent litigators who are willing to teach more advanced courses and create textbooks, sample case scenarios, and other educationally instructive materials is a key factor in the lack of breadth among advanced patent litigation curricula. Many patent litigation courses are taught by adjunct faculty who are actively practicing and are unable to dedicate the time needed to lead a hands-on simulation course and create the accompanying uniquely tailored reading materials. Financial considerations also prevent many practicing patent litigators from transitioning to a full-time academic role from private practice.3 While many law schools offer courses in trial advocacy or other simulated courtroom experiences to emulate litigation practice in other areas of law, and these courses serve to provide future patent litigators with general litigation skills such as oral and written advocacy, such courses do nothing to train students on the specifics of a patent-related proceeding. For example, how does one arrive at a proposed claim construction and conduct a Markman hearing accordingly? These are skills that cannot be gleaned from a non-patent-specific litigation course.

Externship positions and legal clinics are among other avenues used by law schools for practical skill-building, but opportunities related to patent litigation are absent here, too. The lack of externship opportunities4 is likely due, at least in part, to the regionalized nature of patent litigation, which leaves many law schools with little if any localized ongoing patent cases or firms that are actively engaged in patent litigation in the same geographic area.5 Even for law schools located in the most active patent litigation districts, few externship opportunities exist because the demands of a patent case leave little time for the training and mentorship that constitute the educational experience of such a position. Cases are handled mainly by private law firms seeking to balance their own case staffing needs to maximize profits and meet client demands rather than by nonprofit government agencies where most externs have traditionally been placed. The natural tendency of these firms, if they were to offer externship positions, would also likely be to rely on the students to cover the necessary, yet less educationally beneficial, tasks of sifting through discovery materials rather than learning specialized substantive litigation skills.

Law school clinics, which typically are structured to allow students to gain experience by assisting indigent clients who are otherwise unable to afford such legal services, are also a poor fit for providing hands-on patent litigation training. While 15 transactional patent law clinics exist among U.S. law schools,6 there are no patent litigation clinics. One reason for the lack of patent litigation-focused clinics may be finding eligible clients. Relatively straightforward guidelines may be set to determine whether a client is indigent and qualified for assistance by a legal clinic in areas such as immigration law, civil litigation, and juvenile law. For clients seeking intellectual property services, however, the line between indigency and financial adequacy is easily blurred. Many clients seeking patent-related services are corporate entities that may be in their early stages and not have received investor funding. In these situations, what constitutes an indigent client? Must the individuals involved in inventing the technology meet certain financial criteria, or is a lack of income and assets of the corporation adequate? If so, what is the threshold that defines a financially needy corporation?

Typically, clinical clients are required to pay their own government filing fees and other costs while the law school clinics provide pro bono or deeply discounted legal services. In patent litigation, however, the high expenses that must be paid are typically unaffordable for an early stage start-up venture. This means that universities would have to cover these costs initially to allow the litigation to move forward, despite there being a high degree of uncertainty as to the outcome of the case and potential reimbursement. Clearly, this is not a feasible economic gamble for most universities to take in an effort to educate their students.

Unlike transactional patent practice, which requires a science or engineering degree to become licensed to represent clients before the U.S. Patent and Trademark Office, patent litigators are not subject to this requirement. While this affords those without a technical background the opportunity to practice intellectual property law, many patent suits involve complex technology that is not easily understood by those without prior experience in that particular field of technology. Thus, many patent litigation students face the additional burden of struggling to understand the patented technology, which hampers their ability to focus on learning the practical and legal aspects of patent litigation.

With patent litigation training presenting so many unique and expensive obstacles, how can law schools improve the skill sets of their graduates seeking successful careers in patent litigation? One option is to focus more heavily on attracting a collective of adjunct faculty that has experience in patent litigation to offer simulation-based experiential courses that provide more in-depth education on procedural elements of patent-specific litigation, such as conducting a Markman hearing or moot court patent trials. The availability of such experiences without the costs of traveling to a regional or national moot court competition may allow for a higher number of interested students to benefit from such training.7 In addition, to the extent consistent with their client confidentiality obligations, adjunct faculty can make students aware of or even comment upon ongoing cases or proceedings—of two students in a patent litigation course, the one who actually sees a Markman hearing, in addition to merely reading or hearing about such proceedings, learns much more. In-house intellectual property counsel may be good candidates for these adjunct roles, as many have prior private firm patent litigation experience but currently oversee outside patent litigation counsel without actively litigating the matters themselves, and thus may have more time to dedicate to training students in a classroom setting.

Litigation-oriented training also can be provided from the transactional side of patent practice to further fill any gaps left by courses focused on more traditional litigation. For example, at the Sandra Day O’Connor College of Law at Arizona State University, students are able to build analytical skills that will assist them in litigating patents by practicing enforcement-oriented patent drafting in the Lisa Foundation Patent Law Clinic,8 which is tailored to drafting patents that will withstand invalidity challenges while simultaneously providing the broadest possible protection for the inventor. As a co-requisite to participating in the patent clinic, students must enroll in a course on patent licensing and enforcement that teaches the anatomy of a contingent fee patent litigation case, including topics such as evaluating the strength of a case, conducting infringement analysis, negotiating and drafting a license agreement, and drafting and filing a complaint. This two-pronged approach ensures that students seeking to practice patent litigation are aware of the effects that the prosecution phase may have on the merits of their case, while training those wanting to enter transactional practice on the impact their actions have on future enforcement.

Another opportunity to provide practical training for patent litigation students is presented by the push made by many universities toward finding new ways to enhance revenues from their own intellectual property through patent licensing and enforcement. Among nonpracticing entities (NPEs),9 universities and other nonprofit NPEs are among the most successful NPE litigants and receive median damage awards that are significantly higher than those of individual NPEs.10 By forging an alliance with university technology transfer offices that are seeking to capitalize on this potential source of revenue, law schools may be able to tap into a valuable resource for hands-on training in these areas by offering externship positions to students to work with technology transfer office in-house counsel involved in the licensing and litigation of university patents.

With patent protection becoming increasingly important in a knowledge-based economy, patent enforcement and litigation activities are critical to the financial health of many businesses, organizations, and institutions; however, due to the complexity of identifying proper clients, the time frames of the cases themselves, and the costs associated with patent litigation, many law schools have not been able to provide the practical skills necessary for the success of their future patent litigator graduates. An expansion of the clients deemed appropriate as clinic clients, an increase in the patent litigation skills-based simulation courses, and partnerships with nonprofit NPEs could allow law schools to take a significant step forward to meet the patent litigation market’s needs with freshly minted, yet capable, litigation associates.

Endnotes

1. Patent lawsuits filed in 2012 increased nearly 30 percent to over 5,000; however, some of this increase may be attributed to the America Invents Act’s anti-joinder provision requiring that each defendant be sued separately. Additionally, the number of patents granted by the U.S. Patent and Trademark Office has also continued to show a significant annual increase. PricewaterhouseCoopers LLP, 2013 Patent Litigation Study 3 (2013), available at www.pwc.com/en_US/us/forensic-services/publications/assets/2013- patent-litigation-study.pdf.

2. Am. Int’l Prop. Law Ass’n, Report of the Economic Survey 2013, at I-129 to I-130 (2013).

3. The median income for patent attorneys who are partners at private firms is $400,000. Am. Int’l Prop. Law Ass’n, Report of the Economic Survey 2011, at I-24 (2011).

4. Externships, unlike paid internships, award students academic credit for practical experience gained in the setting of public agencies, government offices, private firms, and corporations. More law schools are moving toward requiring a practical component such as an externship or clinical course as part of the J.D. curriculum to improve students’ practical skills prior to graduation.

5. The Eastern District of Virginia, District of Delaware, and Eastern District of Texas are among the most favorable venues for patent holders based on shorter time-to-trial, decisions in favor of the patent holder, and higher median damage awards. 2013 Patent Litigation Study, supra note 1, at 23.

6. Fifteen law schools actively participate in the USPTO Law School Clinic Certification Pilot trademark and/or patent program. Another 13 schools participate in the trademark only program. Law School Clinic Certification Pilot, USPTO, www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp (last modified Aug. 13, 2013).

7. The American Intellectual Property Law Association hosts the Giles Sutherland Rich Memorial Moot Court Competition annually. Law schools may enter teams of students to compete in four geographically regional competitions to qualify for the national final round of competition. Moot Court Competition, AIPLA, www.aipla.org/resources2/programs/Pages/Moot-Court-Competition.aspx (last visited Sept. 12, 2013).

8. The Lisa Foundation Patent Law Clinic at the Sandra Day O’Connor College of Law at Arizona State University is among the 15 schools participating in the USPTO Law School Clinic Certification Pilot trademark and patent program.

9. A nonpracticing entity (NPE) is defined as a patent owner who does not manufacture or use the patented invention.

10. From 1995–2012, the success rate of universities/nonprofit NPEs was 45 percent as opposed to 29 percent for NPE companies and 18 percent for NPE individuals. For the same time period, median damage awards for universities/nonprofit NPEs was $10 million while corporate and individual NPEs received median damages of $11.2 million, respectively. 2013 Patent Litigation Study, supra note 1, at 3.

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