IT'S JUST ABOUT MONEY
Don't expect depth of expertise from big firms, which are stampeding to create IP groups out of thin air
By DAVID A. ANDERSON
IMAGINE that you receive a frantic call from your child's school. She has inexplicably lost consciousness and collapsed in the middle of class. They have called 911, and you are to meet the ambulance at the emergency room. Frantically, you rush to the hospital. When you arrive, you are greeted by a smooth-talking surgeon, and the following conversation takes place:
Surgeon: Well, we have done an MRI, and I am sorry to tell you that your daughter has a brain tumor. She will need surgery. Fortunately, I am a member of one of the finest and most experienced surgical groups in the country.
You: Wow, that's good to hear. Of course, you have experience in brain surgery.
Surgeon: Well, what's really important is that we are a group of highly experienced surgeons, who do surgery every day. We have performed hundreds of operations, ranging all the way from tonsillectomies to open-heart surgery.
You: What about brain surgery?
Surgeon: If you have great surgical skills, surgery is all pretty much the same. You cut the patient open, fix what's wrong, and close 'em up! What's more, we have a brain expert on staff. He'll be in the operating room to give us advice if we run into any problems.
You: Wouldn't I be better off having a brain surgeon perform the operation?
Surgeon: Not really. In fact, you're better off with someone who hasn't devoted years to the narrow study of the brain. By the way, do you have insurance? This kind of surgery is very expensive.
Any sane parent would run from that hospital as fast as possible. Yet supposedly sophisticated corporations that are faced with patent infringement litigation sometimes fall for these very arguments. Why does this happen?
GENERAL FIRMS ARE GOOD MARKETERS
Did you ever wonder why physicians who keep killing their patients are able to stay in business? "He seemed so competent" is a common refrain. While patent law firms have concentrated on honing their skills, general firms have engaged in sophisticated marketing campaigns in an effort to obtain patent litigation business. Why? Because that's where the money is. In response, many general firms have hired a few patent specialists and created an "intellectual property group" almost out of thin air.
A maxim of advertising is that you take your product's weak points and tout them as strengths. This is exactly what general-practice firms have attempted, with some success, in seeking patent litigation business. For example, these firms sometimes argue that the training required to become a skilled patent attorney is unrelated to the skills needed to try patent cases. Instead, they argue, clients are better served by lawyers who know nothing of the technology or the law, but who have tried dozens of cases.
This approach parallels our surgeon's argument that experience performing lots of appendectomies is the best preparation for brain surgery. A patent attorney's years of study in science or engineering, and his familiarity with the complex process of obtaining a patent, is actually touted as a disadvantage!
GENERAL COUNSEL MAKE THE BIG DECISIONS
As the stakes in patent litigation have risen, decisions on the selection of counsel have been pushed up the corporate ladder. A decision that previously was made by a corporation's patent counsel now is often made by the general counsel. Of course, general counsel usually have a close relationship with the firm that represents the corporation in securities matters, employment cases and the raft of other issues that confront corporations.
While a few general firms do have legitimate expertise in patent matters, a corporate counsel may be shocked to find how little patent expertise some general firms actually possess. While the presence of a few patent lawyers may make such a firm "seem competent," in many instances, even these few experts are kept in the background while the "real trial lawyers" try the cases. As a result, instead of finding security in the selection of such a firm, corporate counsel may be putting themselves, and their companies, at risk.
Of course, argument by analogy must be scrutinized. Lawyers are not surgeons, and patent litigation is not brain surgery. Is it true that participation in lots of trials, regardless of the subject matter, is the best preparation for patent litigation? Can big general firms, with armies of lawyers, really bring more "horsepower" to a case?
It has been said that the three characteristics of a successful trial lawyer are preparation, knowledge of the law, and ability to persuade. The first two can be controlled. The third is a product of one's life experiences.
PATENT LAWYERS MAKE GREAT TRIAL LAWYERS
After trying many cases, I am convinced that, as a group, patent lawyers are among the best trial lawyers. How do I know? The judges tell me so. In case after case, the court has commented on the high level of presentation. Indeed, careful preparation, together with a rigorously logical presentation, are hallmarks of successful engineers and successful trial lawyers.
In reality, the "horsepower" claimed by big general firms is often an illusion. While a firm may have 500 lawyers, how much help is a tax lawyer in a patent infringement case? True "horsepower" is the ability to call on 20 or 30 attorneys who are trained in the technology and the law -- not 500 lawyers who may never have seen a patent and know nothing of the law. While general firms try to run down the capabilities of patent firms (often describing them as "boutiques"), in fact they are the firms that are truly able to deliver "horsepower" when it is needed.
In patent cases, knowledge of the technology often must be added to the requirement for legal knowledge. Throughout the trial and discovery phases, knowledge of technology and of the patent law is obviously important. Only someone who understands the technology has any business evaluating technical documents and interrogating technically trained witnesses. Moreover, unless one understands the subtleties of patent law, she may not grasp the significance of the documents and testimony being obtained.
At trial, the lawyer's training can become critical. In the eyes of a jury, the decisive event in the trial of a patent case is often the cross-examination of the inventor or expert witness.
Consider the following scenario. The inventor has testified that a patent is not invalid because he made the invention before the publication of the Smith reference being relied upon. The following cross-examination ensues:
Q: Now, you say you described your invention at a seminar on Jan. 8, 1988, is that correct?
A: Yes, that's right.
Q: That seminar was held before the Smith reference was published?
A: Yes, that's my point.
Q: At that seminar, you disclosed the same invention covered by your patent, did you not?
Q: Now the application for that patent was filed Jan. 10, 1989, isn't that right?
A: That's right.
Q: Was the seminar open to the public?
A: Well, yes it was, but . . .
The lawyer has just opened a line of inquiry that will lead to a victory for his client. Would a lawyer untrained in patent law have known to ask the critical question?
Such stories could be told over and over. A witness thinks he's cleverly describing the meaning of a patent claim, while he's walking straight into an admission of infringement under the "doctrine of equivalents." An expert testifies to a position that is contradicted by one of his own, highly technical publications. The untrained lawyer doesn't have a clue.
A general lawyer might argue, like our general surgeon, that she has a skilled patent attorney sitting at counsel table. But the patent attorney isn't the one conducting the examination. There usually isn't time to explain the intricacies of the witness's predicament during the heat of battle to a lawyer without adequate technical or legal training.
Contrary to the misperception that they are narrow techno-nerds, patent attorneys are often exceptionally well adapted to relate to juries. As trained scientists and engineers, they emanate almost exclusively from middle-class backgrounds, and have worked hard to acquire their special knowledge and skills. Such people often have high credibility with jurors, along with an innate ability to teach and persuade them. Because they are comfortable with the law and the technology, they can explain it in ways the jurors will understand, without feeling patronized.
IT'S ABOUT MONEY
All of this brings me back to where I started. The great debate over general vs. specialized patent firms is really about money. Large general firms seem to consider the handling of big-money litigation to be an entitlement. In the words of a June 1997 article in the National Law Journal, they are outraged to see such work go to "some crappy little patent boutique." But it is a well-qualified patent firm that enjoys the best chance of success in patent litigation.
DAVID A. ANDERSON is a partner in the Chicago firm of Brinks, Hofer, Gilson & Lione and is president of the Association
of Patent Law Firms.
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