Rules of Engagement: Patent Litigation Attorneys

Let us assume, for the purposes of this discussion, that you are an attorney performing due diligence prior to engaging my services as part of the team defending your client against some (presumably bogus) patent infringement lawsuit.

What you’ve discovered so far:

• I’ve designed, built, and documented a gadget / program / process that matches at least some of the patent’s claims
• I published an article describing my work, so I have produced some absolutely authentic and readily demonstrable prior art

Finding that stuff is not as difficult as one might imagine. These days, searching on the obvious keywords and “Ed Nisley” should do the trick.

What you’re hoping to find:

• A genuine paper trail, perhaps in a spiral-bound notebook, with contemporaneous dated notes, that document the project’s development. As I say in the About page, I’ve got plenty of notebooks.
• More information about the project’s background
• An explanation of the relevant tech and how it relates to the patent claims

Let us further assume that you want me to assist your team, rather than having me dragged into the dogfight as, perhaps, a hostile witness.

In general, I’m amenable to that sort of thing. If I think you have a case and that I can be of assistance, we can probably work something out.

Here’s what I can bring to your team:

• Broad tech knowledge: I’ve written software, built hardware, and designed widgetry. Basically, I know what’s going on and how all the parts relate.
• Deep historical background: I’ve been doing this stuff for decades and know where the skeletons are buried
• Excellent presentation skills: I can explain this stuff so that you understand what’s going on and how the parts relate. I give great chalk talk…
• Absolute honesty: I’m not going to tell you only what you want to hear
• Cheerful energy: I enjoy the tech and I enjoy talking about it

In the two patent litigation suits I’ve been involved with thus far, all the plaintiffs have settled on what appeared to be excellent terms. It’s never been explained to me what part my projects played in the proceedings, because I don’t participate at that level (nor, frankly, do I want to), but everybody seemed pretty pleased with the outcomes.

However, your predecessors have rather poisoned the well of my innocent enthusiasm for dealing with what may euphemistically be called your kind, so a few ground rules are in order.

Procedures:

• Regardless of the number of parties mentioned in the suit, I will deal with you. I do not have a staff to take care of petty details: you must be absolutely certain that when your staff or anybody else wants me to do something, you understand what’s going on.
• If you or your staff or your partners or anybody says they’ll do something, you must ensure that it happens as and when promised. I don’t enjoy chasing down and fixing your organizational problems, although charging you for doing so relieves some of the annoyance.
• I am a homebody: I do not travel well. An hour in the car makes me way cranky and flying was an abomination even back in the Good Old Days. Poughkeepsie is roughly two hours from civilization (a.k.a. NYC) and I hate every mile of that trip. If you think traveling is no big hairy deal, you get in the damn plane; heck, we’ll put you up in the guest room and serve you breakfast.
• With that in mind, if you want the original hardware or documentation in a different location, either I come along as part of the package and stay with the gear until you’re done or you post a substantial bond. I have sufficient reason to not trust your minions to properly care for what looks like obsolete electronic crap.

Finances:

• I bill by the day, so organize your requests and don’t jerk me around. The first time I touch the telephone or keyboard or notebooks, it’s another day’s expense to you. To emphasize: I do not bill by the hour, no matter how much you want me to.
• I work on a retainer basis. We’ll figure out what’s involved, at least for the initial stages of the project, and get a nontrivial fraction of that amount sent my way. You will replenish the stash as needed to stay well ahead of my projected expenses. Run out of money and my enthusiasm will taper off just about as quickly as yours would under similar circumstances.
• I bill you, not some consortium. Whatever you need to do to get funding is not my problem: just make it happen and send me a check. That’s one check, not a bunch of checks from whoever you’re representing.
• If you want any fancy billing or invoicing, it’s another day’s pay every time some stupid administrative screwup happens. Yes, I am going to bill you for billing you, because filling out Yet Another W-9 is not my idea of a good time.

In general, treat me as you’d like to be treated (not as you expect to be treated) and you’ll find me helpful, cooperative, and extremely valuable.

Let’s talk…