Saving Money in Patent Litigation: Hiring the Best Lead Litigation Attorney

Whether you make the strategic decision to enforce your patents or your company has been sued for infringement, you will need to hire litigation attorneys.

As I discussed in my last post in this series, winning and cost effective litigation is really predicated on the personality, skill and experience of the individual attorneys and not the law firm at large.

Consequently, you want to hire the best lawyers without bankrupting your company.  Most importantly for cost containment, you want to hire the best lead litigation attorney to run the case.

But what are the characteristics of the best lead patent litigation attorney?

Some companies think that a flashy, fast-talking trail lawyer, like on TV, is the best attorney to lead a patent case.

I don’t.

I’ve done patent litigation for over a decade in federal courts across the country.  I’ve worked with and against hundreds of litigation attorneys at some of the most well-respected and prestigious law firms from New York to San Francisco.

What I know for sure is that patent cases are not like other types of general business cases where the trial skill and verbal ability of an attorney can be the key to winning.

Patent litigation is far more difficult, complicated, and convoluted than typical business litigation.  In large part this is due to the complicated nature of patent law.  When you add complex technology, patent litigation becomes a very specialized and tricky game.  It becomes insanely difficult when you add foreign parties and key documents in Chinese.

What many companies don’t understand is that the key to winning a patent case is the interpretation of the claims in the patent — the claim construction.

Very, very, very few patent cases ever go to trial.  After a judge determines the interpretation of the patent claims, most patent cases are settled or decided by a judge on summary judgment, usually on briefs that the parties write outlining their arguments about why they should win without a trial.

Both parties propose their claim construction in what is called a Markman brief.  Usually, the judge will allow both parties to explain the technology and their respective claim interpretations at a Markman hearing.  There the judge may ask tough, critical questions about both the technology and relevant patent case law.

At the Markman hearing, the lead litigation attorney needs to be able to answer anything the judge asks very quickly while projecting an air of knowledge and certainty.  The lead litigator will lose credibility if it looks like he doesn’t understand the technology or isn’t fully prepared to address any legal issue.

The interpretation of the scope of the claims of the patent determines whether a product or process infringes.  The claims may be interpreted narrowly and in a way that does not read on the accused device or process.

This is critical!

Claim construction frequently means the difference between winning and losing a patent case.

And a narrow claim construction for the plaintiff usually means they will settle cheaply.

In my experience and opinion, the key to success in a patent case is the intimate involvement of the most experienced, lead attorney  in the claim construction. If the claim construction turns out badly, it is also critical that the defendant’s head attorney be an expert in destroying patents and the testimony of expert witnesses.  They need to know patent law and understand the technology.

It is highly unlikely that the flashy, trial attorney will dig into the minute details of the claim construction or even understand the basics of the technology at the claim construction stage.  Some head trial attorneys barely know what is going on in their cases before the trial stage.  They may hand over the most important part of a patent case to an inexperienced, junior attorney who may or may not even be able to think at a high, strategic level or have any idea how to craft the critical claim interpretation in creative, supportable ways.

Even if I had a billion dollars at stake, I wouldn’t hire a flashy, superficial trial lawyer.  I would rather hire the brilliant, patent guru who had mastered the intricacies of patent law and who was intimately involved in the claim construction.  Even jurys seem to give more credibility to the trial attorney who clearly knows the technology and the law even if he isn’t the most articulate or personally engaging.

I’ve known a few patent guru trial experts but they are rare, in large part because patent cases seldom go to trial.  Registered patent lawyers with extensive trial experience have sometimes gotten their trial experience in another context like criminal law or in ITC actions.  Some of these super patent litigators are highly articulate women.  These type of litigators are in a league of their own and well worth the cost if you can find them.

The Best Head Lawyer for a Typical Patent Case

If I were going to select a lead lawyer for a typical patent case, with under $250 million at stake and one to three patents at issue, I would hire what I call a Pragmatic Litigator. (I would have a different strategy and hire a different type of lawyer if the damages at stake in the case were over $250 million and there were many patents at issue.  These types of cases are an order of magnitude more difficult.)

Case management styles vary widely.  A Pragmatic Litigator sees the big picture, runs a tight ship with a small team and actually considers the costs verses the benefits of each motion or inquiry.

A Pragmatic Litigator can save a company millions of dollars during a case.  And I’m not exaggerating.

In my experience and opinion, the best Pragmatic Patent Litigator:

• has a technical degree;
• is registered as a patent attorney with the PTO;
• spends most of his or her time doing litigation and not patent prosecution;
• runs a case with a small, carefully chosen team;
• focuses on the big picture and doesn’t waste time with pointless motion practice;
• negotiates nicely with opposing counsel and limits discovery early;
• minimizes discovery motions;
• stays within a budget;
• is intimately involved in every aspect of claim construction;
• knows what is going on in the case and understands the facts and time line; and
• thinks strategically about summary judgment and settlement.

Choosing the right lead attorney for a patent case is critical for the case’s success and cost containment.

But it is difficult to judge a lawyer’s litigation style and involvement from the outside.  This is why it’s important to talk to wide network of people regarding their experiences with particular litigators and firms.

When selecting a head attorney for a typical patent case, I would look at both general and IP specialty firms.  I would carefully look at the bios of the attorneys.  I would watch out for senior attorneys who claim to have litigated patent cases if that is not their primary specialty.  They may know little about patent law if their primary practice is other types of litigation.  Their actual patent experience may be limited to a sub-issue like damages.

After researching attorneys, I would select a few who are highly experienced in patent litigation and have done at least one case in the general technical area of the patents at issue.

Then I would ask some hard questions.  (Again, this is for a typical patent case with one to three patents and less than $250 million at stake.)

What is your personal experience with patent litigation?  How many cases have you litigated?  What was your primary role in the cases?  Where you responsible for claim construction? Infringement? Invalidity?  Expert Witnesses? Damages?

Get a sense of what the attorney really knows.  If you get the attorney talking, it may be evident that they are not really a patent expert.

How many attorneys are usually staffed on a patent litigation team?  How many partners?  How many different attorneys usually work on a case during the course of the litigation?

I wouldn’t want more than three main attorneys on a typical patent case, including partners.  The more attorneys and partners the higher the cost.  If attorneys are typically shuffled between many cases the bill will be much, much higher.  I wouldn’t want to pay to get new attorneys up to speed.

What attorneys would work on the case?

It’s important to vet all of the attorneys and see who the litigation pitch partners propose to work on the case.  You want to see bios on the associates as well as the partners.  You want to find out who is really going to do the core work. Some law firms also have in-house experts in certain technical areas that can be brought on for a limited time to review prior art.  You want to know who is available to do the work.  This is where an IP specialty firm may have an advantage.

Of the attorneys who would work on the case, how many other cases are they staffed on?

Watch out.  Some attorneys at large firms work on four more cases at once.  The reality is that your case may conflict with another case and other attorneys may be brought in to cover the work — attorneys who don’t know the case well.  This increases costs and is not efficient for the client.  The temp attorneys may also not do as good of a job because of their lack of background knowledge.  Of course, sometimes, the pitch hitter is actually a better litigator and after reviewing their work you may want them assigned to your case.

What is the billable hour rate for firm attorneys, paralegals and in-house consultants?

You want to find out the rate for attorneys and paralegals at different skill levels.  Rates vary widely among firms.  Firms headquartered in New York and California typically have the highest rates.

Firms who have a specialty in patent litigation usually practice in federal courts across the country.  Attorneys are routinely admitted to a court for a specific case in a different state location. You can hire a more reasonably priced firm in the middle of the country to litigate anywhere.  Most attorneys have to travel to the court anyway.  Few live anywhere near the patent docket hot spots.   A difference of a hundred dollars an hour can really add up over the lifetime of a case.

What has been the average amount of attorneys’ fees in similar patent cases?  How much is commonly spent during discovery?

If they haven’t litigated a patent case for under $5 or 10 million dollars, watch out.  If they typically spend millions in the early stage of discovery, beware.  It may be because they are having senior attorneys doing document review.  It may be because they love to churn out discovery motions and fight with opposing counsel.

What do you estimate is the cost range for this case? What is your estimate based upon?

Attorneys should be able to give you a ballpark number and be able to explain their estimate.

What is their philosophy about discovery motions?

Some pragmatic litigators will actually say that they don’t fight in discovery but focus on claim construction and summary judgment motions — the core of the case.  Millions can be wasted in discovery motions that don’t significantly benefit the case or move it forward.  I’m cynical but sometimes it seems that the law firm is benefiting the most in fees from extensive discovery motion practice.

What is their philosophy about negotiating with opposing counsel?

Do they believe in playing nice?  Nasty litigation is more expensive.  I would want to know if they negotiate discovery limitations reasonably.  It is possible to save costs by limiting the time frame of discovery, the people providing documents, the scope of products at issue, and whether they will seek draft reports from experts.  Both sides can save money by being reasonable and litigating the case on the merits.  Some attorneys don’t negotiate well with opposing counsel and again, from my cynical viewpoint I think some of them want to generate more attorneys’ fees.

Judges actually hate stupid fighting and it can be a negative for the actual party when its attorneys refuse to be nice or negotiate.

In their last few cases, how many hours did the head attorney personally spend working on claim construction before the Markman hearing with the judge?

Who will be drafting the claim construction in this case?

I wouldn’t want to hire a lead lawyer who isn’t intimately involved in the claim construction.  I would actually want the head lawyer to spend more time!  I wouldn’t want to hire a lawyer who has to be prepped on the proposed meaning of the claims the day before the hearing with the judge.  If you really want to win, the head lawyer at the hearing needs to be able to answer any type of question that the judge has about claim construction. They need to really know the technology, the patents, and what is going on in the case.

In interviewing potential attorneys, you should be able to get a sense of whether they are excited and energized by patent litigation and whether they really have an expertise in the area.  Don’t hire anyone who hates litigation.  A surprising number of litigation attorneys do.

Picking the right law firm and attorneys is critical for success in patent litigation. Taking the time to interview and investigate more attorneys can save a lot of money in the overall context of your case.  In my next post, I’ll discuss the characteristics of the best team attorneys.

RELATED POSTS IN THE SAVING MONEY IN PATENT LITIGATION SERIES:

• Series Overview
• Hiring the Best Law Firm