Welcome to the latest instalment of Managing IP’s ‘Five minutes with’ series, where we learn more about IP practitioners on a personal as well as a professional level. This time we have Jonah Mitchell, partner at Reed Smith in the US.
Someone asks you at a party what you do for a living. What do you say?
I always laugh at this question because I got the same one from a precocious young kid one day at a bus stop on my way to work. After I finished answering, including what I thought were some relatable, high-profile examples of IP cases, he looked at me and said, “So not that interesting, huh?” Pretty strong signal that I needed some practice on my answer.
I do think it depends on the audience, but I will usually explain that I’m a litigator, and I specialise in trying cases stemming from business disputes about intellectual property and inventions. So, I often work with innovators on fights over cutting-edge technology.
Talk us through a typical working day.
I start the day with exercise, often running and always device-free. It’s a great way for me to disconnect and frequently leads to fresh ideas on thorny problems or a new strategic approach, even though I don’t set out with that as an objective.
Once I’m back online, I catch up on e-mail traffic, while setting aside time to digest the latest news and developments in IP cases. I’m on videoconferences with clients frequently – whether ad-hoc or regularly scheduled meetings on cases I’m handling with them. I also have strategy meetings with my team on larger matters and one-to-one meetings on smaller matters and prepare for hearings, trials, etc.
What are you working on at the moment?
I’m working on a variety of matters spanning different areas of IP. I have a multi-forum patent litigation that is in various stages.
I have another commercial/licensing matter that is on appeal for the second time.
I’m also assisting a client with an unfair competition matter alleging claims of employee raiding. And, I’m advising multiple clients on IP issues in connection with standard-setting organisations.
Does one big piece of work usually take priority or are you juggling multiple things?
Juggling is the name of the game. That is both the challenge and the allure of what I do. You must be able to compartmentalise and must be able to efficiently switch gears, and when multiple matters are running hot, that can be difficult. But it’s also what makes what I do interesting – the diversity of cases, clients, and problems.
Of course, when I’m in trial mode, that matter will absorb the bulk of my time, and that’s why I’m fortunate to work with a great team – many of whom I’ve worked with for over 20 years – that I can lean on for support.
What is the most exciting aspect of your role and what is the most stressful?
A trial is the most exciting and the most stressful. It’s the culmination of a lot of hard work and a chance to put your best foot forward in a competitive environment. That said, as much as you try to control for the unknown, there are always variables outside your control – which, again, makes it both exciting and stressful.
Again, this is why I’m lucky to work with a great team, as well as outstanding clients. When everyone is rowing in the same direction, and picking up one another, you’re well-positioned for success.
Tell us the key characteristics that make a successful IP lawyer/practitioner.
You must be able to distill complex and sometimes dense subjects into something digestible in a way that is relatable and compelling. And you must be authentic as an advocate – you want the fact finder to feel the belief that you have in your case. And you must be able to work well with others. There are many facets to IP cases and you need contributions from many people at many levels.
What is the most common misconception about IP?
That you must be an engineer or have a technical or scientific background to be an IP lawyer.
There are plenty of IP practitioners who do, and I often work with them, along with technical experts. But coming in “cold” and learning with the case can be beneficial. After all, in most forums, we must explain the concepts at-issue in ways that are accessible to people who don’t have those backgrounds either.
I want to learn from the ground-up, and sometimes that means asking the basic questions multiple times and exploring different ways or analogies to teach the technology. I figure that if it’s confusing to me, chances are it might be confusing to whoever is trying to decide the issues in the case.
What or who inspires you?
My mum. I look back at what she did with amazement. She did it all. Full-time job outside the home, a full-time job inside the home, fully engaged in the community, and always there for family and friends with a loving hand and the best home cooked meal.
If you weren’t in IP, what would you be doing?
Fighting wildfires. The camaraderie and teamwork, the grit and the hard work, all while trying to solve a constantly evolving problem.
Or a chef. Organisation, precision, and methodology combined with creativity to craft something delicious – that all appeals to me.
Any advice you would give your younger self?
I’d like to press fast-forward on perspective, but the reality is that comes with time. But there are certain things I’d try to amplify to push that along. Some stuff is out of your control. Take some risks. You learn from it all. (And prioritise travel).
What is your motto in life?
Don’t forget to laugh every day.
