Interviewed by Bert Schiettecatte, Expert Computer Scientist.
I understand that you first studied Electrical Engineering and then Law at Stanford University. How did you decide to study law, rather than joining a tech company in an engineering role? How did you choose to focus on intellectual property law and in particular litigation?
The email listserv for electrical engineering students at Stanford used to get pinged almost every day by startups looking for talent, and I’ll admit I was tempted by the Sand Hill Road magic. But I actually went into studying engineering with patent law in mind, and that seed was planted pretty early for me. My mother was an immigration lawyer and she introduced me to the concept of patent law at a very young age because she saw that I was interested in math and science. Not sure why but the idea stuck with me, so I’ve been thinking about patent law as a career for as long as I can remember. The engineering education isn’t technically required for a patent litigator, but I wanted the technical background to make sure I was comfortable handling anything thrown at me.
I understand that you are based in the Los Angeles office. Do you feel that the type of inquiries you get are different from those received by your colleagues in the San Francisco bay area? Please explain.
There is naturally some impact of geography on the connections you personally form, so growing up and now living in LA, it’s not totally surprising that I’ve ended up working on some entertainment-related technology like virtual reality and special effects. But we really are a national group, so in application I don’t think my LA roots have affected my practice too much. I’ll also add that, while LA and southern California may not have the same mind share as Silicon Valley when it comes to innovation, we are very much still a national powerhouse in tech and life sciences; there are a lot of fantastic companies down here working on the future, just like there are up north.
What are your thoughts on the current patent legislation? Do you think there is room for improvement, and if you could, what would you change, and why?
Kathi Vidal, the current Director of the USPTO, recently said that we might need to “rethink everything” in the patent world, and I applaud her ground-up, fresh-eyes approach to the law, because I doubt anyone feels like everything is perfect as is. But as we go about rethinking things, I believe the key is an evidence-based approach that objectively analyzes whether the current rules are optimal and also whether any proposed changes would actually make things better. (I wrote about this issue recently in Law360.) So my response to your question is a little meta, but if I could change anything about the patent system, I would change the way that we change the system, in a manner that requires more and better evidence to support any modifications and relies less on speculation.
With the The America Invents Act (AIA) signed into law in 2011, the first inventor to file a patent application receives priority. Do you feel this act has helped small inventors or not, and why?
I first registered as a patent agent back in 2011, so I vividly remember all the talk in the years leading up to the AIA about the major changes that were coming. One of the major concerns in those early days was that garage inventors might be beaten to the punch by better-resourced companies that could move faster because those companies might have patent attorneys on hand ready to file provisional applications at a moment’s notice. But I don’t think I’ve actually seen any evidence of that happening much, so it seems like the downside concerns that were voiced at the time may not have really borne out, at least not on a large enough scale to raise red flags.
On the flip side, the first-to-file regime aligned the U.S. with the rest of the world, which makes things a little easier when inventors are seeking worldwide protection for their inventions. The new regime also meant we would be phasing out complex interference proceedings (where parties would argue over who was the first to invent something). In that sense, the bright line provided by a first-to-file rule makes the system easier—and thus less costly—to navigate, which is helpful for garage inventors.
I do believe we should continue to support small business and the country’s solo inventors by making the patent system simpler and less costly, but I don’t think that going back to the old first-to-invent system is the best way to do that.
Do you think that AI-powered chatbots such as ChatGPT could assist attorneys with their patent litigation cases? If yes, how so?
I’ve been writing about the potentially massive impact that AI could have on patent law since 2015. Back then though, my discussions were just predictive in nature because we didn’t really have access to the kind of AI that could actually make a dent in what we were doing. OpenAI’s most recent ChatGPT release shows that we are now getting very close to AI fundamentally changing the way that all lawyers practice, but we still have some ways to go before AI puts us out of business; patent litigation is just too complex to be able to simply hand ChatGPT a patent and say, “Handle this lawsuit, please.”
But your question is aptly worded, because we are arguably at the point already where good AI language models can assist patent lawyers with discrete tasks. For example, you might be trying to understand the technical nuances of some densely worded prior art (since the best engineers are not always the best writers), and ChatGPT might help explain what the prior art is trying to say in a more understandable way. We’re certainly not at the point where you could blindly rely on what comes out of the AI black box in that scenario, but it might help accelerate your learning and follow-on research.
There are a number of other discrete parts of patent litigation where AI (whether in chatbot form or otherwise) is likely to have a big impact sooner rather than later, like in legal research, where there have been a number of companies over the years relying on AI. But AI will probably be a supporting tool, rather than a replacement, in patent litigation for years to come. Just like VisiCalc (the original spreadsheet software) and now Excel haven’t put accountants or economists out of business but instead made them much more productive at their jobs, I believe the same is true for AI and patent litigators (and many other fields).
Do you think that AI-powered tools could reduce the time it takes to write a patent? Do you think that it could increase the quality of the resulting patent? Do you see any potential dangers or pitfalls in using these tools to write patents?
Patent prosecution is definitely one of those discrete areas in patent law where I think we will see AI have a big impact sooner rather than later. Even back in 2015 when I started writing about AI’s impact on patent law, there were startups that used AI to propose alternative claim formulations, and that kind of brainstorming support could prove quite useful in increasing patent quality.
But as I previously mentioned, AI will only be a supporting tool, not a replacement, for patent prosecutors for a long time. There are many complex facets of high-quality prosecution, like proactively addressing potential design-arounds when drafting claims, and until we have real evidence that AI can do those kinds of difficult tasks as well as a human, it would be foolish to rely solely on the AI. Again, AI might help accelerate or improve certain aspects of the prosecution process, but we are not really that close to being able to cut out the humans entirely.
For law students who want to enter your area of specialty down the line in their careers, which skills do you think are the most important to focus on?
There is far more to being a good lawyer than simply knowing the law. Soft skills are critical, and I’m not just talking about the obvious ones like public speaking. A large part of a litigator’s practice is project management and people management. Learning how to keep large teams of people organized and motivated so they produce the highest-quality work is not easy. An industrial engineering class about project management and an MBA-type class about people management could be very useful for those thinking about careers in any type of complex litigation, including patent litigation. I don’t think Stanford is alone in giving credit for classes taken outside of the law school, and I’d strongly encourage law students to consider the benefits of such cross-pollination opportunities.
What do you think makes a good expert witness?
A good expert witness is able to comfortably straddle both the technical world and the legal world, just like a good patent lawyer. You don’t want to work with a patent lawyer that lacks any technical understanding of the patent at issue, and you don’t want to work with a technical expert that lacks any understanding of the legal framework to which the expert’s opinion is applied. Obviously the patent lawyer is going to have deeper legal expertise and the expert is going to have deeper technical expertise, but both of them should really be able to speak both languages if you’re going to be the most effective.
Where can our readers learn more about your work and how can they contact you?
My web bio has a little more detail on my background and links to all my published pieces, including my most recent article in Law360 that I referenced. And if you’re looking for an excuse to be in Vegas this year, I’ll be speaking this summer at the Ai4 conference about AI’s impact on the legal profession. Hope to see you there!