Feb. 9, 2021

#009: Andrew Trask - Scientist Turned Patent Litigator


In this episode I speak with Andrew Trask, a Partner at Williams & Connolly LLP in Washington D.C. where he practices patent litigation. Andrew has played practically every professional role in the patent process. He started his career as a scientist/chemist where he was the co-inventor on a number of patents. He then went on to work as a non-lawyer Patent Agent at a large law firm in New York City while he completed law school at night. After graduation he clerked on the Federal Circuit (the federal court of appeals responsible for hearing patent appeals) and then after a few years at Williams & Connolly as a patent litigator he moved in-house to work at Google. He returned to the firm several years ago where he was just elected to the partnership this year.

In our conversation, we discuss his path from scientist to lawyer, what it was like to simultaneously work as a big law patent agent and complete law school at night, the unique nature of practicing before the federal circuit, the differences of working in-house and at a private law firm, and some tips and tricks to succeed as a patent litigator. 

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Transcript

HIL Episode #009: Andrew Trask

[Andrew]: 

The patent lawyers are the ones, they just pop by when the exciting stuff happens and they get to kind of skip over all of the boring parts. So to me, it kind of, a light bulb went off in my head at the time thinking, well, this seems like kind of a fun job, because you have to know the science in order to describe the inventions and the patent applications. But you also get to focus really on the fun parts of the science, as opposed to the many experiments that didn't work along the way.

[Jonah]:

Welcome to How I Lawyer, a podcast where I talk to attorneys from throughout the profession about what they do, why they do it and how they do it well. I'm your host, Jonah Perlin, a law professor in Washington, DC. Now let's get started.

Hello and welcome back to episode nine of the How I Lawyer podcast. Today my guest is Andrew Trask, who was recently elected to the partnership at my old law firm, Williams & Connolly, LLP in Washington, DC, where he's a patent litigator. I invited Andrew on the podcast because he's perhaps the ideal person to speak to about a career in patent litigation, given that he's played almost every role one can in the field.  He started out as a scientist, earning his undergraduate degree in chemistry from the University of William and Mary, go Griffins and then began his professional career as a pharmaceutical scientist at Pfizer, where he was the co-inventor on a number of patents.

He then went on to earn his PhD in physical chemistry from the University of Cambridge, where he co-authored a number of peer reviewed scientific papers, and then later, transitioned into the legal field by working as a patent agent at a large law firm in New York city while attending Fordham Law School at night, go Rams.

After graduation, Andrew worked for two years as a law clerk on the federal circuit, and then practiced at Williams and Connolly before spending three years as an in-house patent litigation counsel at Google, before returning to the firm. He currently serves as an adjunct professor at the George Mason School of Law, where he teaches a course on federal circuit practice.

In our conversation, we discussed the path from scientist to lawyer, what it was like to simultaneously work as a big law patent agent and complete law school at night, the unique nature of practicing before specialized courts like the federal circuit, the differences of working in-house and at a private law firm, and the ways in which practicing patent law is unique, but also the ways it overlaps with other forms of litigation. I learned so much from our conversation and I hope you enjoy it as well. Here's Andrew. 

[Andrew]: 

So the story here really begins, if I'm permitted to turn the clock back this far to my childhood, I was a science nerd from the very beginning, I think as far back as I can remember, I was telling everyone I knew that I wanted to be a paleontologist when I grew up. And that kind of passion for science continued all through my childhood and into college. And I ended up majoring in chemistry. I have no lawyers in my family and it had certainly never crossed my mind at that point in my life that law was a kind of viable career or even an option for me. And graduating college with a major in chemistry, kind of a natural career transition at that point is to go work in a laboratory. And that's what I did. I went off to work at Pfizer, which was my first job out of college.

[Jonah]:

And for those of us who are not scientists, what does a job like that look like?

[Andrew]: 

I was at their largest R&D site at the time was in a town called Groton, Connecticut. So I lived there, and they had all types of scientists, biologists, chemists, engineers, and I was in a laboratory called the Salt Selection and Crystallization lab,  and our job basically was we would take the molecules that the discovery chemists thought up and then made for the first time. Oftentimes those molecules were kind of like a goopy soup or really kind of, not a form that you would be able to make into a nice powder that you would form into a tablet. So our job was to take the oil or the goo or the gum or whatever it was that contained the new drug and make it into nice fluffy white powder so that you could kind of compress it down with some other ingredients into a tablet.

[Jonah]:

Sort of like building a summer associate’s memo and turning it into a Supreme Court brief right?

[Andrew]:

I can see the similarities perhaps, but yeah, it was—I loved it.  It was a fun job. I learned a bunch. In addition to taking the news drugs that were coming out of the discovery labs at Pfizer, we also started looking at drugs that were already on the market, but hadn't been fully studied from the standpoint of their crystallization. So I ended up doing a lot of work on existing drugs. One of which is an antibiotic called azithromycin, or Zithromax. Together with my supervisor came up with a whole bunch of improved crystal forms of that drug. And that was actually my first exposure to patent attorneys. It was that around that time that the patent attorneys started coming into the lab and drafting patents based upon our findings in the lab.

[Jonah]:

Got it. So that's another job that lawyers can have where they come in and translate the science into legal language that can then be protected through a patent. 

[Andrew]: 

Yeah. So I think most pharmaceutical companies have a team of in-house patent lawyers, whose job it is to understand the research that's happening at the company and to identify what may be patentable subject matter, and then draft up patent applications based upon those findings.

And from my perspective as a scientist, it seemed like a pretty fun job. I mean, obviously the scientific method is trial and error and there's like the occasional exciting finding and success, but a lot of it is kind of drudgery and that's just the nature of the business. But to me, it was kind of cool the patent lawyers are the ones, they just pop by when the exciting stuff happens and they get to kind of skip over all of the boring parts. So to me, it kind of, a light bulb went off in my head at the time thinking, well, this seems like kind of a fun job, because you have to know the science in order to describe the inventions and the patent applications. But you also get to focus really on the fun parts of the science, as opposed to the many experiments that didn't work along the way.

[Jonah]:

So now you're in the lab and the light bulb goes off, and you say huh, maybe I want to go to law school?

[Andrew]:

Not exactly. I mean, I think I had the idea that this would be a fun career, but I still didn't think of it as a career for me. And it was at that point that I went off and got my PhD. So I moved over to Cambridge, England. And my PhD was focused on caffeine actually, which is a, it turns out, is a good model pharmaceutical compound. So I had, throughout my time there, I had kilos of caffeine on the shelf in my laboratory, which is in its pure form is just a white powder.

[Jonah]:

Lawyers also have kilos of caffeine, but in sort of a different context.

[Andrew]: 

In a different form.That's right. Yeah. Caffeine has been a big part of my career all along, in one form or another. But I discovered together with my research advisor, a number of different new crystal forms of caffeine and published a bunch of peer reviewed papers on that. And you can get patents on different crystal forms of pharmaceutical compounds. So that was again, kind of furthered my thinking. And I think I had been looking at the patent literature at the time on what was being done on pharmaceutical crystal forms. So all of that put together, I think kind of pushed me over the edge and made me think, you know what? Maybe I could be a patent lawyer and focus on this type of science.

[Jonah]: 

Okay. So what happens next?

[Andrew]: 

I got married while I was a PhD student, and my wife, the deal was my wife got to pick our next geographic destination and she wanted to move to New York City to be a chef. She's a scientist turned chef actually. So she went to culinary school in New York and there aren't that many kind of commercial industrial laboratories in New York City proper. So it seemed like a perfect chance for me to make the transition, or at least kind of dip my toes into the world of patent law to see if it was something I might like. ’Cause there's certainly no shortage of law firms in New York City.

[Jonah]: Right. Absolutely.

[Andrew]:

So there were a number of law firms there in New York where they will hire individuals with advanced kind of technical degrees and employ them as patent agents during the day and send them to law school at night and cover the cost of their legal education.

So that's what I did at the law firm of Jones Day and I did that for approximately five years.

[Jonah]: 

Can you tell me a little bit more about what a patent agent does.  

[Andrew]: 

Sure. So a patent agent is something you can do without a law degree. You first have to pass a bar called the patent bar exam, which is an exam administered by the patent office. And you need a technical degree to sit for the patent bar, which is another separate story, but the bottom line is you can write patent applications and file the patent applications with the patent office, and then prosecute those patent applications. So it's essentially the back and forth between you as the advocate representing the inventors and the patent examiner, who’s trying to make the determination as to whether the invention that you're trying to patent is worthy of patent protection.

[Jonah]: 

Got it. Okay. So you're a patent agent during the day and you go to Fordham Law School at night, right?

[Andrew]: 

Exactly. Yeah. So Fordham is one of the few schools in New York that has a full fledged evening program. So that's where I enrolled. And yeah, by day I worked, I think I billed on average about 2000 hours a year. Working on patent prosecution work, but some patent litigation support as well. I did get pulled into a few litigations that were the technical subject matter at issue in the litigation was kind of right up my alley from a scientific standpoint. So I would help with the experts’ reports or getting them ready for their depositions.

I attended law school almost full time at night. I think that the evening program normally is four years. I did it in a compressed timeframe and finished in three and a half. So, it was a very busy time in my life. But fun. And I learned a lot.

[Jonah]: 

That's amazing. And you were married. Did you have kids at this point or?

[Andrew]: 

No, I honestly don't know if I could have done it with kids. We had our first kid right after I graduated law school, but it was all consuming. I did much of my studying and law school on the 7 train crosstown between my office on the B side and Fordham Law School at Columbus Circle.

It was probably not the ideal way to go through law school, in some ways. I didn't have the benefit of kind of immersing myself in the subject matter or reading every last line of the assigned reading. But there were a lot of upsides from my standpoint as well.

I mean, I was getting work experience in the precise field that I intended to be practicing in. I was able to start building a professional network even before I graduated from law school among others in my chosen field. And importantly, for me, I graduated right after the kind of the 2008 financial collapse where legal jobs were kind of hard to come by.

And I had a job lined up for me. I didn't have to apply, I didn't go through any summer associate program. I just immediately rolled into a role as an associate at the firm. I occasionally get asked by folks who are current scientists are kind of in a similar situation about whether they should go down the same track. And in my view it's a balance.

[Jonah]: 

Say more about that. If you were a scientist listening to the podcast and thinking, this guy's path sounds really cool. What's on either side of that scale that you're balancing?

[Andrew]:

For me, the idea of getting my law school paid in full and graduating debt free was a really big deal. I didn't really have the means or the family support to otherwise pay for law school. And obviously living in New York City is not cheap either. So that was kind of a driving concern for me. And then on the downsides, one of them is that I don't think you can devote all of your attention to your studies, which would have been nice, obviously. And I think one other potential downside to consider is you aren't also able to really socialize with your fellow students in a way that you could, if you are a full-time student and that was kind of your full-time job, as being a student.

And I always tell law students when I have the chance that you really shouldn't miss out on getting to know your fellow students, building those lifetime friendships, because they're people you will know and rely upon for various things in the course of your career. It's a lot of fun. It's a great opportunity. And I was just so busy traveling back and forth between work and school and even traveling around the country. For example, the second semester of my 1L year when I had contracts law, and I was, we were co-counsel down in Washington, DC, and I would several times a week, I would wake up at the crack of dawn, get a cab up to LaGuardia, take the shuttle down to national, spend the day with experts in a firm in DC, and then catch the shuttle back up to LaGuardia and a cab straight across to Columbus Circle in time to make it to contracts class in the evening.

It was kind of exciting and fun and I was learning a lot, but it was exhausting. So I think each individual needs to weigh all those considerations and come to their own conclusion. I think I don't have any regrets. I think it worked out just fine for me, but it's perhaps not for everyone.

[Jonah]: 

One of the things that I've always been interested in, increasing numbers of my students come from either science or math backgrounds before law school. You know, I was a traditional humanities type. I think there are a lot of those. Do you think there were any sort of advantages or disadvantages to have come from a hard science technical background when you started law?

[Andrew]: 

I do. I think there are probably advantages and disadvantages here. I mean, the advantages is, being a scientist, you are really kind of prone or trained to think critically and think carefully about issues and scrutinize data and information. And I think that's important for a lawyer to be able to do that. Obviously if you have a goal of practicing in an area of the law that involves technology, whether it's patent law or products liability or something else, I think it can be helpful to have that background. 

I think there can be downsides as well. One of which I remember and I know you teach legal writing and to me, you know, legal writing was a struggle for me at the very beginning of law school, because I wrote a lot, you know, I wrote a thesis, I wrote a lot of peer reviewed publications and you're taught as a scientist to write in the passive voice.

So the solution was added to the beaker. The beaker was heated to 200 degrees and obviously that's completely off limits as for legal writing purposes. So I really did just have to completely rewire my brain from the standpoint of active voice, concise writing and eventually I was able to get my head around it, thanks to an excellent legal writing professor that I had. But it was kind of a struggle at the very beginning.

[Jonah]:

Yeah. I mean, I think that's been my experience as well. The students who come to my class from technical backgrounds, they do struggle with some of the writing conventions or just the fact that they've written less in their college career. But the skill they tend to grasp more quickly is the ability to apply new facts to previously settled law, which can be a really big challenge for people with humanities backgrounds

[Andrew]: 

I would absolutely agree with that. That's a big part of, I think being a successful scientist is building upon what existed before and kind of breaking new ground in some way. And that's, that's also a part of like taking existing precedent and maybe pushing the law in a certain area.

[Jonah]:

Absolutely. I want to shift gears a little bit. Can you talk a little bit about your current practice?

[Andrew]: 

Sure. So I'm in private practice now. My practice is focused predominantly on patent litigation and I do work at the district courts. I do work on appeal and I also now do some work at the Patent Trial and Appeal Board, which is a specialized board at the patent office that hears disputes between parties, with respect to issued patents.

So I represent a variety of different types of companies, whether it's pharmaceutical or biotech or computer related cases. I'm open to working in any type of field, which is part of the fun for me, is having the variety of subject matter that I work with. 

[Jonah]:

And when you say you're working on patent litigation between two parties, that's two private companies?

[Andrew]: 

Most of these cases involve a patent holder or the patentee, the person who owns the patent, and then there's the accused infringer. So in the case of a patent infringement suit, there's someone who wants to assert their patent rights. And then there's someone on the other side who wants to do what they're doing without regard perhaps to the patent owner or without taking a license, or they believe what they're doing is not in fact covered by what the patent owner says their patent covers. Oftentimes these fights boil down to the scope of the patent and is what's being accused of infringement actually covered by the language of what are called the claims of the patent, which is the part of the patent that defines the property right. The other big dispute in these cases, aside from the question of infringement, is the question of validity. And and this is a defense to infringement, which is to say that the party who's accused of infringing the patent can defend by arguing that the patent really never should issued in the first place from the patent office. And instead the patent office effectively made a mistake.

[Jonah]:

And what court are these cases being heard?

[Andrew]: 

Yeah. So I handle cases on appeal to the federal circuit. And I can talk for a minute about the federal circuit. So that's a, it's one of the federal courts of appeals that sits right below the Supreme Court. And it's kind of different from the other regional courts of appeal in that it has nationwide jurisdiction, but over limited subject matter. And one of the areas over which it has jurisdiction are patent cases. So wherever a patent case is filed, whatever district court it’s filed around the country, when that case is eventually appealed, it goes up not to the regional circuit. So if it's a case in the southern district of New York, it gets appealed not to the second circuit, but rather to the federal circuit. So it's effectively the nationwide patent court, obviously with the Supreme Court being above it for any cases it chooses to review.

[Jonah]:

And do you think it makes sense to have this specialized court of appeals?

[Andrew]: 

I do. The history of the federal circuit I think is actually useful to discuss in this context because the federal circuit came about, it was formed in 1982 by Congress in reaction to, and to be clear, I was not a practicing lawyer way back then, but this is my understanding of things.

Prior to ‘82, the patent cases were appealed, like every other type of case up to the regional circuit. But there was at least perceived to be a great disparity among the courts of appeal as to treating different patent issues and viewing patents as valid or invalid and whatnot. So there was a lot of forum shopping that happened at the time.

And as a result, Congress saw it fit to create a single, nationwide patent court, which is the federal circuit. And I think the federal circuit has been doing a phenomenal job at trying to harmonize what ultimately are very difficult issues. And you have inventions that kind of span a whole array of subject matters and legal issues.

And they really are striving to do their best to kind of harmonize the law and apply it in a number of very different contexts. Now, I think some people would disagree with that and there are issues, most notably these days, the issue of patent eligibility, where there have been kind of fractured decisions by the court.

And some have been calling for reform on that front, but on the whole, as a patent practitioner, I kind of enjoy having a single court of appeals that I've gotten to know and get to practice before for virtually all of the patent cases that I work on.

[Jonah]: 

And are the judges who sit on the federal circuit typically patent law practitioners, or what's the path to that?

[Andrew]: 

Some are and some aren't, and it's kind of interesting. I think that, so the judge that I clerked for has a PhD in chemistry as it turns out, just like me. And there is at least one other judge on the court that has a scientific doctorate. But many of the judges don't have any technical background at all or, have backgrounds in some of the other areas that the court has jurisdiction over.

So there's a variety of kind of backgrounds among the judges, but because they see so many patent cases, I think patent cases are slightly less than half of the number of cases that are pending at the court at any given time. They really do develop an expertise, not just in the patent law, but even just in the technology that kind of repeatedly comes before them. So I think they do kind of develop some degree of expertise and familiarity with the technical issues, even the judges who don't have technical degrees themselves.

[Jonah]:

And what about the expertise of the litigators who practice before the federal circuit? Do all those layers exclusively argue patents and if so do they all have scientific backgrounds like you?

[Andrew]: 

I've perceived and also heard from others that the Penn bar has opened up over time where it used to be really kind of a specialized area that either you were a patent lawyer or you weren’t, and kind of, you never kind of straddled that line.

And I think in part, because the cases have become much higher stakes, higher profile, bigger firms who are more generalist firms have become interested in them perhaps for that reason, perhaps for others. So you have seen, for example, at the federal circuit, when it used to be strictly patent lawyers arguing at that court. These days, a lot of the household names that lawyers would know from Supreme Court arguments, those same lawyers are arguing at the federal circuit doing patent cases on a regular basis. And that was actually one of the fun things  about clerking there, is I got to see some of the nation's top advocates arguing these cases. And it's because they're extremely high profile, the companies who are litigating these cases, there's a lot on the line and they want to hire not necessarily someone who's just kind of a niche patent lawyer, but someone who's an advocate recognized around the country.

So from my perspective, I think that's a good thing. I enjoy practicing with individuals who don't specialize necessarily exclusively in patent law and litigating against opposing counsel who  have other types of cases. I mean, I work  with lawyers who do patent law as well as criminal law, for example, or antitrust law.

I tend to specialize in patent litigation, but I enjoy working with others who don't. And my sense was that the federal circuit and patent bars also kind of benefit from the perspective of lawyers and clients who see the law in a broader perspective, than just a single issue like patent law.

[Jonah]:

Which I guess brings me to my follow-up question, which is do you think people without scientific backgrounds can make good patent lawyers or at least a work on patent cases and provide a value add?

[Andrew]: 

I absolutely think people who are not scientists can be phenomenal patent litigators, and I work with a lot of those people. And I think there are a lot of advantages that you can bring to the table as someone without a technical background. I think for patent litigation, it’s really important, notwithstanding what I said before about judges kind of developing some familiarity with the technology or the the law in this area, but it's really important to be able to break down complex subject matters into something that's digestible and interesting and memorable, and just simply not so dry, as a lot of these patents are written.

So whether you're doing that for a judge or you're doing it for a jury, I think it's important to be able to take a complex piece of technology or complex patent and distill it down to something that still captures the essence of the invention from the standpoint of the issues in the case, but also is more memorable and then makes the case in the way that makes your client's position seem like the right one.

So that's something that I do on a regular basis, but I think having people on my teams who don't have technical backgrounds or serve a really important role because they don't necessarily speak the language and the way that an expert might or even someone like me, who's kind of thought about these issues as a scientist for years, but ultimately they're a great sounding board and a great resource for telling the story of our case in a way that's gonna resonate with a generalist judge or a member of the jury.

To me, the ideal is having some people on the team who do have a technical background, as well as having some people who don't. And that mix to me is really oftentimes the right balances

[Jonah]: 

And it's probably the same kind of mix you want for a successful individual also, right? You need those general litigation skills, the ability to talk to multiple audiences, the ability to do those discovery fights and depositions and expert witnesses, all those litigation pieces, but also be able to deep dive onto the technical pieces that are necessary to do your job.

[Andrew]: 

Right. There's a lot of skills that are important for patent litigation that are absolutely not unique to patent litigation. Right? So being able to communicate effectively orally and in writing is just as important in the world of patent litigation as it is in every other field of litigation and law, perhaps.

That's why I think that the class that you teach, legal writing, I think is super important for lawyers, whatever field they're going to practice and including patent litigation. And you know, to me also my clerkship really was kind of the, one of the most like formative aspects of my career.

I learned a ton in those two years clerking on the federal circuit, seeing just all types of advocates before the court, some good, some not so good. I think I watched over 200 oral arguments during the two years I clerked at the court and you come to learn what works, what doesn't work, techniques to mimic, techniques to avoid at all costs. A lot of that stuff is not specific to patent litigation. It's simply the skills you need to be an effective advocate.

[Jonah]: 

Yeah. Can you talk a little bit about some of the things that you might remember that you've tried to build into your current practice or things that you want to stay away from?

[Andrew]: 

Sure. So, I mean, certainly. I  learned a lot, just reading really well written briefs and advocacy. And that's something that I think is a great part of clerking. On the side of things to avoid, which is probably a little bit more amusing. I guess one is, the federal circuit has this unique practice. They don't always sit in their courthouse in Washington, DC. Usually about once a year, they travel to a different city, most of the judges will kind of pick up and move and the court staff, and it's really kind of an impressive undertaking, but they'll go to a different city and they will sit in other courthouses and law schools.

And the goal is because it's a court of nationwide jurisdiction to expose different regional bars to the practice and bring the court to the advocate. So I traveled with the court both years that I was clerking and attended. One session of arguments was held in an auditorium in a law school.

And I remember distinctly one of the advocates was just kind of gesticulating excessively as he was talking, waving his hands up in the air. And I found that, you know, just as a clerk watching, I found it somewhat distracting. And one of the judges kind of spoke up in the middle of this person's argument and said, you know, excuse me, would you please stop gesticulating? I find it very distracting. You look like a conductor directing an orchestra. And the auditorium was full of law students, and you could just hear them gasp. I mean, it was just this moment. And you could see from the judge's perspective, like the judge really wanted to focus on what this person was saying and they found the hand movements distracting, and they just wanted to cut through that, and really understand what the person was arguing, was ultimately was trying to help that person. But that was a takeaway for me,  be careful you can move your hands when you talk, but don't distract in a way

[Jonah]:

I remember once a partner that I worked with told me that you wanted to draw a box that extended just beyond the lecture, and you basically could do anything you wanted, as long as you stayed in the box. If you left the box something was terribly, terribly wrong.

[Andrew]:

Yes, that that sounds like a good rule of thumb actually. Another one I think that was a lot of fun to observe, although it certainly wasn't fun for the court at the time, was that the federal circuit has a rule that you can seek permission from the clerk's office to bring demonstratives or physical items into the courtroom as part of your presentation.

And I think it's kind of conventional wisdom that that's more or less frowned upon. There really isn't the time during a short oral argument to kind of be referring to a poster board or whatnot, but someone at one point in a case involving a patented shoe for walking on ice, brought in with him the boot with the spikes at the bottom to hold during his argument. And the advocate in emphasizing a point during arguments started taking that boot and kind of slamming it down onto this nice, beautiful wooden counsel table. And this was a boot with sharp spikes on the bottom and the judge's eyes just like opened up, and the courtroom deputy ran over and grabbed it out of his hand. The conventional wisdom is true. Like don't you don't need the props at oral argument. Your advocacy is enough.

[Jonah]: 

I do have a question about that, especially when you're at trial and you're dealing with these very complex things, whether that's a chemical compound or an item. Do you find that at trial you're using demonstratives, either physical items or PowerPoint slides or other sort of demonstratives in your practice?

[Andrew]: 

Yes. I think the practice is very different at district court, when you have a lot more time to make your case and you're trying to convey it to a generalist judge or jury, but graphics are a big part  of conveying your side of the story at trial. So having a good graphics team that you can rely on to draft up slides and make your point effectively. And you know, aren't too wordy and you have pictures that can tell the story is a big part of getting the message across to make your case at trial.

Absolutely. I mean, that makes sense to me. I'm currently working on a project about the use of presentation slides and demonstratives by lawyers and some of the best examples I've seen, especially in briefs, are from patent cases

[Andrew]: 

I think that's right. And you certainly see demonstratives and annotated patent figures in briefs that are filed at the federal circuit. I think those can be very helpful. It's just that at oral argument, it's partly a kind of a physical limitation, but there isn't much space up there. You have the counsel table on either side of the lectern.

And I've seen one or two lawyers try to bring in a big kind of poster board that you might see a trial, but you're inevitably kind of blocking people in the courtroom. And I've seen it fall over one time and hit opposing counsel on the head. Like it just kind of doesn't work for whatever reason, but you know, the judges have copies of the briefs in front of them. And you often see advocates point to figures during oral arguments. If you refer to the figure on page 25, you'll see XYZ. And that works just fine.

[Jonah]:

Next, I wanted to ask you a little bit about your path out of the law firm and then back to it. So,  after you clerked for those two years where you clearly learned a lot, you headed to Williams & Connolly, where you practice patent litigation, but then in 2015, you left to go work in-house at Google. Can you tell me a little bit about that experience?

[Andrew]: 

Yes, that's right. I left private practice and went to serve as in-house counsel for about three years at Google. It kind of came about almost by happenstance. I was at the time doing a fair amount of Google work as outside counsel. And they came to know me, they had an opening, they invited me to apply to the in-house patent litigation counsel role. And I applied and ended up, to my surprise, getting the job. And although I hadn't really considered going in-house, it kind of seemed like too good of an opportunity to pass up. I mean, my career already to that point had been quite winding and why not try something else?

So yeah, so we moved out to California and I worked in Google's Silicon Valley and San Francisco office as in-house patent litigation counsel. 

[Jonah]:

And since you were working for the same company, just in an in-house role as opposed to outside council, was the experience particularly different?

[Andrew]:

It was actually kind of surprising to me how the job was more different from my role as outside counsel than I would have expected, given that I was working on virtually the same cases. And in some instances, the very same cases that I had handled as outside counsel, but the perspective you have from outside versus in-house litigation counsel is actually quite different.

[Jonah]: 

Tell me more about that. What's the difference there?

[Andrew]: 

So I've struggled to come up with an analogy to accurately describe this. And the best I have is kind of involves airplanes. And I think kind of being outside litigation counsel is a bit like being the pilot in the cockpit of an airplane. You're the one responsible for every last detail of flying that plane.

You're making every little adjustment, you're pushing every button. You're the one kind of in control of flying that plane. But then being in-house litigation counsel is more like being up in the air traffic control tower. I mean, you're still responsible for that airplane and if something goes wrong, you're going to feel the heat for it.

But you're also responsible for every other airplane in the air and on the air field. And you're more focused, I think, on getting the different planes to kind of move according to plan and make sure they're all operating in concert. So you're still worried about and care about the same cases, but you're viewing them from a different perspective and it is more high-level and strategic in a way, if that makes sense.

[Jonah]:

And did you enjoy that role?

[Andrew]: 

I really did enjoy my time working in-house, I thought it was a very strategic role. I learned a lot. And one of the highlights for me working in-house is I also got a chance to do a rotation within Google. So I got to move with my family out to Munich, Germany for six months and work out of Google's Munich office, where I oversaw part of their patent litigation activities in Germany. So that's something that I certainly wouldn't have been able to do , as a US trained lawyer at a, because I don't know German law, I'm not qualified to practice German law and I don't even speak German.

But as in-house counsel,  you can hire lawyers who have those qualifications to handle those cases and they can teach you what you need to know in order to make the decisions in the case. And that's what I did. And it was a phenomenal learning experience. And also gave me a chance to kind of see a part of the world that I didn't know that well. 

[Jonah]:

But ultimately you did decide to return to the firm. Can you tell me a little bit more about that transition?

[Andrew]: 

Sure. So I've been back at the firm for a little over two years. And part of my motivation to return to private practice was I did miss as in-house counsel, of standing up and arguing in court, taking in defending depositions and of getting those opportunities that as in-house counsel, you tend to hire others to do. So my goal in returning to private practice was to dive back into that world and so I, again, returned to doing federal circuit arguments and district court arguments and whatnot. So that, that's basically what I've been up to since I returned. And then just a couple of weeks ago, I was elected to the partnership. 

[Jonah]:

Congratulations. That's absolutely fantastic. As we get closer to the end I want to ask you what advice you would give to someone who's hearing this interview and thinking, that sounds pretty interesting, maybe I want to be a patent litigator.

[Andrew]: 

I would say, talk to other patent litigators. I mean, as I mentioned, I don't have any patent lawyers or any lawyers at all in my family. And the way I kind of got comfortable with viewing this as a potential profession for me was just kind of bending the ear of others around me, who you know, I think I looked for my networks through my schools and found people who had gone from science into law and just talk with them about what the job is like. Whether you can strike a balance between work and family, whether I'd be more interested in patent litigation or patent prosecution, which has kind of a big divide within the patent field. So I just would say, don't be shy about reaching out to those who are working, because I think most of us in the field are very open to speaking with potential future lawyers.

And I've done that a number of times with scientists who see my history and want to talk with me about the path that I've taken. I've done that with paralegals who worked at the firm, who were thinking about going to law school, and I'm not the only one, there's a lot of lawyers who are interested in sharing their stories.

[Jonah]:

And you mentioned that challenge of dealing with finding a work-life balance. And obviously you have kids and you're a father and have a very busy career. Can you talk a little bit about how you try to balance family life and being a big firm lawyer?

[Andrew]:

Yeah, so it's not easy. I mean, the job I think, of any lawyer involves from time to time, long hours and travel. And obviously things are different in the pandemic, but you know, it requires kind of working together with your spouse or partner to kind of juggle the responsibilities.

So I don't think there's any magic to it other than just trying to do your best and realizing that every day is a new challenge, professionalism in the field being more important than ever during this time. And  lawyers in general need to meet the needs of others and be courteous and respectful as our profession kind of dictates. But being parents of young kids is a challenge during the pandemic. Trying to juggle, I've been working from home since last March. You know, haven't seen clients face to face during that time. And have a young toddler who's been kind of running around the house and making cameos on my video conference calls.

So it's a struggle. Well, and I think it's, you know, I do believe that now more than ever, it's helpful to be accommodating of our fellow lawyers in the profession.

[Jonah]:

Thank you, Andrew. This has been absolutely fantastic. Any parting advice for law students or new lawyers who might be listening?

[Andrew]: 

I would say to do your best and network when you have the opportunity. I think a big part of being a successful lawyer is getting to know individuals in your profession, not holing yourself up and spending your time just scrolling on Westlaw. That's certainly a part of being a lawyer, but getting to know others who have shared interests, developing friendships and working relationships with your colleagues, with your opposing counsel, with staff in the courtroom, all of that is super important both for advancing collegiality within our profession. But also for future business development and potential career opportunities down the line. It's not really something they teach strictly speaking in law school, but starting in law school, get to know your classmates, spend time with them, have fun with them. Those relationships last a lifetime and can be invaluable from a variety of different perspectives.

[Jonah]:

Again, that was Andrew Trask, who you can find on Twitter @avtrask. As I mentioned at the beginning of the episode, I think Andrew's career story is so incredibly valuable, not only because of his deep knowledge of patent litigation and his ability to convey that knowledge clearly and directly to those of us who know very little about that area of law. But more than that, he's personally played pretty much every role in the life of a patent. I also found Andrew's willingness to jump at new professional opportunities and to pursue those opportunities with passion and focus inspiring.

If you enjoyed or learned something from this episode and haven't yet subscribed, please do so at howilawyer.com or wherever you get your podcasts. And if you can, it would mean the world to me if you can share the podcast with a friend, a colleague, or a current law student. Thanks once again to Andrew. Thanks for listening and have a great week.