There is a common misconception that you need to have an undergraduate degree in engineering or science to be successful in IP litigation. While many attorneys who practice in this area do have these backgrounds, it is not a requirement. In fact, I have often told people that having attorneys on an IP litigation team without a technical background benefits the team as they provide different perspectives that help bolster the overall case strategy. At the same time, there are benefits to having a technical background for IP litigation. For me, it has really shaped how I practice law.
Before I became an attorney, I was a mechanical engineer. I earned a mechanical engineering degree from MIT and then spent two years working as a mechanical design engineer, spending my days building CAD models, developing and testing prototypes, and working on assembly procedures and supply chain logistics. During that time, I learned how to pivot when plans changed, strategically assess failures, and develop and implement testing plans to assess the reliability of the parts for which I was responsible.
When I went to law school, I didn't forget the skills that I had learned as an engineer. Instead, I learned how to leverage them and, when I graduated, how to implement them in my work as an attorney. In IP litigation the stakes are high and the subject matter at issue is often deeply technical and nuanced. Thinking like an engineer has been a game-changer. It has not only provided me with a solid backbone to understand the technology at issue but has also given me the tools to know where to get more information about the given technology. It has helped me develop a rapport with clients and witnesses—both fact and expert—who often have strong engineering backgrounds. And it has allowed me to craft litigation theories and implement strategies that are targeted and persuasive. While I may no longer be an engineer, having an engineering mindset has provided the tools I need to bridge the gap between technology and advocacy. These tools include a strong foundation in problem solving, an understanding of how to approach complicated technology and how to work with individuals who are experts in that technology, and an understanding of how to adapt when difficult and unexpected situations arise.
- Engineering Provides a Foundation for Problem Solving
- Engineering Provides a Foundation in Understanding Complicated Technologies
- Engineering Teaches Adaptability
- Engineering Better Outcomes
Engineering Provides a Foundation for Problem Solving
Engineers are trained to solve problems. In fact, that's what drew me to engineering in the first place—I loved problem solving. Engineers break down complex systems into manageable components. They understand how these components work together. They then work to identify failure points and develop solutions. In other words, engineers identify goals and then work to achieve them, developing and implementing strategies to handle problems that come up along the way.
This training directly translates to IP litigation. A patent case, for example, is really just a complex system involving patent claims, prior art references, accused products, technical documentation and disclosures, and legal standards. But to be successful in a patent case, you need to understand how these components fit together. More importantly, you need to understand the failure points, the weaknesses in your case. That's where the problem-solving skills that I learned as an engineer have been invaluable. These skills help me to identify any issues, to plan around any weaknesses, and to develop the strongest case possible.
One example of this is when I was involved in a complex litigation patent infringement case pending before the International Trade Commission that related to complex solar module manufacturing technology. Not only was the technology complex, but the defendants in the case raised numerous invalidity challenges based on printed prior art and prior art products, and also raised other defenses like inequitable conduct and unclean hands. My engineering background allowed me not only to learn the technology, but to also assess which of the defendants' arguments posed the largest threat and distill strong and targeted responses to them.
Engineering Provides a Foundation in Understanding Complicated Technologies
My background is in mechanical engineering, and while I learned some programming languages and took courses that taught me electrical engineering during my undergraduate experience, the main focus of my work was mechanical in nature. But the skills I learned as an engineer allow me to not only handle mechanical IP cases, but IP cases spanning large swaths of complex technologies. For example, I've handled cases related to the Internet of Things, wireless networking, solar module manufacturing, marine seismic surveying, medical devices, fiber optic networks, and semiconductors. That is because my engineering background didn't just teach me about engineering principles themselves, it taught me how to learn about technology. It taught me how to approach complicated technology and how to gain familiarity with it. You don't learn thermodynamics in a day; it takes time, and you must learn the building blocks first. You need to learn the variables that are considered and the equations that show how the variables relate to each other. For example, the first law of thermodynamics is that energy cannot be created or destroyed. This is often expressed as an equation that takes into consideration Q, the quantity of heat supplied to the system, and W, the work done on or by the system. You need to understand each of these variables and what they encompass to fully understand their relationship, or that the change in internal energy, ΔU, equals Q – W. In other words, you need to understand the underlying variables and concepts to know how to apply them.
This has helped me time and time again as each IP case is different, and most cases, even if they are similar to a technology that I have familiarity with, have some nuanced differences that I need to learn. But instead of running from or fearing new technologies, the engineering mindset kicks in and I develop a way to approach them, to learn the technology in bite-size chunks by reviewing articles, videos, and talking to experts in the area. For example, I have learned that reading textbooks, watching college lectures online, and reading course materials are great ways to learn new technology. Engineering isn't just learning about a specific area; it's learning how to approach complicated technology and how to develop a mastery of an area that previously may have been unfamiliar to you. This directly applies to IP litigation where you are constantly being handed new technologies to learn.
Not only does using an engineering mindset help when learning the technology, it also helps me to develop a strong rapport with the true experts in the technology—the clients and the technical experts supporting the case. Because I was an engineer, I understand how the engineering process works, and I can leverage that to help gather the facts needed to develop the strongest case for the client.
Engineering Teaches Adaptability
Engineering is a constant lesson in adaptability. Rarely do ideas work on the first try. Product development often takes years and includes several iterations. Each of those iterations requires you to adapt, to revisit the goal, and to figure out the best path forward. I still remember being called into a Highly Accelerated Life Testing (HALT) chamber, which is used to stress test components, and being told a component I was working on had failed. I couldn't just say "oh, I guess we won't make the product." Instead, I assessed the failure, identified the root cause, and came up with a plan to resolve it.
The same adaptability is needed in IP litigation. As with engineering, cases are rarely smooth sailing from day one—issues come up, new facts come out, a claim construction ruling goes against you. All of these require adapting your case. When this happens, you can't just throw your hands up and say, "we lose." Instead, you need to revisit the facts, revisit the goal, and develop a new path forward. Doing that, I will admit, can be hard. But having the experience from engineering behind me, I understand how to assess the difficulties and adapt and develop new strategies to move the case forward.
Engineering Better Outcomes
Bringing an engineering mindset to IP litigation isn't just about understanding the technology. Sure, that's a part of it, but it's about more than that. It's about applying a way of thinking—a focused, analytical, and iterative approach to developing and adapting case strategies. It's about taking the complex issues and dividing them into their components and really understanding each component and how it functions with the others in the case. It's about problem solving.
For me, engineering wasn't just a detour on the way to my legal career. It was a building block. It provided the foundation that I need to effectively and efficiently develop successful IP litigation case strategies.
Originally published by PLI.
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