IP Innovators

When Engineering Meets Law: Aaron Capron’s IP Odyssey

• DeepIP • Season 1 • Episode 3

Share episode

In this episode of IP Innovators, we sit down with Aaron Capron, partner and head of the Patent Office Practice at Finnegan, to trace his unconventional path from Lockheed’s GPS labs to leading one of the busiest patent prosecution teams in the U.S. 🛰️⚖️

Aaron shares how a cold call from a headhunter changed his career, what he learned as a USPTO examiner (think: video games and slot machines), and how he's helping clients navigate AI, quantum, semiconductors, and more in 2025. 🚴‍♂️💻🧠

👨‍💼 About the Guest:
 Aaron Capron leads Finnegan’s Patent Office Practice and is a seasoned IP attorney with experience across litigation, appeals, and high-volume portfolio management. He’s also a mentor, a finalist for California’s “Mentor of the Year,” and still hitting PRs in CrossFit at nearly 50. 🏋️‍♂️🧘

🔧 Sponsored by DeepIP – your trusted AI patent assistant: https://www.deepip.ai/
🛎️ Subscribe to the channel to hear real stories, evolving practice, and the future of IP law.

Steve Brachmann:

Hello, my name is Steve Brachmann and welcome to IP Innovators, where we profile the careers of patent attorneys and explore how technology and legal practice has advanced with time. This podcast is brought to you by Deep IP, the first trusted AI-powered patent assistant integrated into Microsoft Word. Deep IP helps patent professionals draft better patents faster and analyze office actions to craft responses that win. By handling tedious tasks, deep IP frees you to focus on delivering higher quality work and greater value to your clients. Fully customizable, it adapts to your style so it sounds like you only quicker and sharper. Trusted by top law firms and in-house teams across the US and Europe. Today, I am joined by Aaron Capron, partner and head of the patent office practice at Finnegan. Aaron, thank you for joining us today and taking the time to talk.

Aaron J. Capron:

Oh, thanks, Steve. I appreciate the opportunity.

Steve Brachmann:

Great. So if we can start with early career, can you give us a sense of when you started to get into patent law in your early days there?

Aaron J. Capron:

Yeah, I mean I think it was later on, after I started engineering. I mean I wasn't really familiar with the concept of patent law growing up Kind of grew up in a small town, iowa Parents were blue collar got into engineering because I think it was good math and science, and so it really wasn't like really wasn't on my radar for the longest time. After undergrad I went to Lockheed Martin, worked on their GPS satellite program for about a year or so and then one day a headhunter reached out to me and asked you know, called me up and asked you ever thought about law? I'm like no, why would I?

Aaron J. Capron:

I'm an engineer, you know. I was like, oh, we got this thing called patent law. I was like that kind of sounds interesting. And so I had a couple of friends that were actually already doing patent law and I reached out to them and they said it was really, really cool, they're working on different technologies day in and day out and interviewed, I think, with Pillsbury, I think back in 2001 for the position, and, you know, got an offer like a couple of days later and it was, it was, it was great, you know, as opposed to working on one technology where I was at with Lockheed, I mean, which was pretty cool technology anyway, it was GPS. You know, pillsbury, I got to work on one day Nokia, next day day Qualcomm, next day a Rolls-Royce jet engine, after that an Intel processor or a Stanley tool. So I mean you're working on all this different tech day in and day out. I think to me that seemed to click with me a bit more, you know, with my personality and stuff. So you know I'll go ahead, sorry.

Steve Brachmann:

Steve, no, I was just. I was just going to say you're right, the work is so varied that it remains interesting, you know, through the career.

Aaron J. Capron:

Yeah, and I mean, one of the great things about it is you have all these inventors that have spent two to three years in lab environments and then they're coming up with these inventions and you get to see kind of the. You get to see the outcome of all their hard work. You know as opposed to you know me. You know when I was at Lockheed I was working in the lab and you know pushing through that, but you know it was. You're working on the same thing day in and day out and at the end you're you're getting the. You know the, all the hard work and effort that all these other folks are getting, and that's what I kind of find fascinating.

Aaron J. Capron:

It hits my technology itch to some extent. Now the fascinating thing is when I tell my daughter she's 13 right now, I tell her about the GPS project that I used to work on, she goes that sounds so much more interesting than what you do now. And I'm like you have no idea. I get to work on all this cool stuff and I get to stay up to date on everything. So I like it quite a bit.

Steve Brachmann:

So if we can stick with your early days at Pillsbury really quick, as an early associate, you described the experience of sticking with an inventor, a patent application for a couple of years and seeing it come to fruition. Can you think of any specific examples of technology where you really saw that process become fruitful in a way that you really enjoyed?

Aaron J. Capron:

At Pillsbury, it was probably more. I mean, there was a lot going on with nokia and qualcomm at the time, um, and a lot of stuff that would, uh, turn out to be probably evolved, maybe in some of these standards, and so those were some really fascinating cases, at least at that time that we worked on um and I mean nokia was doing cutting edge stuff. With respect, you know, back in the day, in 2001, I think, nokia was the, the, the key phone, you know, the, the key phone provider, you know yeah, and so they were doing a lot of cool things, at least at that time.

Steve Brachmann:

Great. So you're at Pillsbury for a couple of years. Then you moved to.

Aaron J. Capron:

Actually, I was only actually at Pillsbury for about six months because it was towards the end of um. I was on a contract basis, um and uh, it was around the time of the dot-com crash and so it was. Unfortunately there was a slowdown in work at that time, so it was uh about. You know, I think I was the last one in um at that before that occurred, but I was. Unfortunately the contract wasn't extended due to business issues. Yeah, but that was fine. I mean it ended up being a blessing in disguise, because the people I worked with gave me great reviews and I got hooked up at the patent office where I was a patent examiner for about three years.

Steve Brachmann:

Yeah, let's talk about that a bit.

Aaron J. Capron:

Yeah, examiner for about three years. Yeah, let's talk about that a bit. Yeah, so ended up working at the patent office. Worked with. The lady who hired me was Valencia Martin Wallace, who I think is now like deputy director of patents.

Steve Brachmann:

Yeah.

Aaron J. Capron:

USPTO, but it was a great experience. I got formalized training, had some wonderful mentors there. The technology I got to work on was, you know, sounds terrible, but video games and slot machines, along with VR, ar and electronic sports equipment. So yeah there was. It was fascinating technology in that regard. So it was. It was a great experience and, like I said, I had a really, really tough primary that I worked with, but he taught me a lot and I told him he would definitely benefit my attorney career after I left.

Steve Brachmann:

Yeah. So what is that relationship like when you're a patent examiner and you have a supervising? I mean, it sounds like you got a lot of input from yours examiner, you have a supervising I mean it sounds like you got a lot of input from yours.

Aaron J. Capron:

What was beneficial about that to you? Well, he was very hands-on, which I found hard to deal with in the beginning, but then I started appreciating all of his feedback, all of his attention to detail, and that's what really, I think, set me up better long-term and not all primary examiners are very hands on but he was and it was invaluable and it made my work product better. And you know, what's great about being a patent examiner is you got to see what arguments worked on you, what arguments you worked on your primary. So you got to see, you know, you know, as an attorney on the other side, you can apply that accordingly.

Steve Brachmann:

Yeah, so so that was I thought invaluable.

Aaron J. Capron:

And plus, you also got to see the internal workings of the PTO and some of the things that may not you know, folks may not appreciate but you know, like how they classify patents, you know how they move cases around, you know some of the internal discussions regarding some considerations and whatnot. So you know, just having that experience I thought was invaluable.

Steve Brachmann:

Yeah, no, definitely so you're. You're how long? At the patent office?

Aaron J. Capron:

For about three years, three years, and then you move over to yeah, my, my wife convinced me to go to law school out in California because you know out in california because you know it was terrible, you know, but um so much cold weather out there. Yeah, yes, uh, and you know she lived. She lived in southern california before we met, and so she wanted to move back to california yeah um, and so she convinced me to.

Aaron J. Capron:

Let's, let's go out to uh, the bay area and look, um and um, you know, went to santa clara law school. Great, it was a great ip program. I think probably top three at the time that I went there probably still is. Yeah, uh, but yeah. No, it was a great experience. It was uh but santa. One of the reasons we went to santa clara is I had a part-time program, um, and we were looking for something that where I'd work during the day and go to law school at night, just because you know the cost of living and stuff is a little bit more expensive out here, and ended up the great thing is I ended up getting hooked up with Finnegan that second semester of my first year of law school and so if you're doing a part-time program, how long did it take you to complete law?

Aaron J. Capron:

school. Usually it takes four years, but it I was motivated so I was done in three and a half. Oh, and my wife, you know, was great support along the way and everything else you know it helped.

Steve Brachmann:

Yeah, no, it's always good. I mean I, when I went to law school, having a family there was, you know, invaluable.

Aaron J. Capron:

Yeah, yeah, and being in the part-time program, it's sound. Most of the people I was in school with worked during the day and were at went to school at night, and so they were more focused. They were more like hey, I'm, we're doing this, and it was kind of a very collegial environment. So um.

Steve Brachmann:

So let's, now that we've covered a lot of Aaron Capron's early career, let's also get into what was tech like in daily practice at Pillsbury. But then also, can you sort of talk about what your tech tools were in practice versus being a patent examiner and kind of how that impacted your daily ability to work and kind of how?

Aaron J. Capron:

that impacted your daily ability to work. So at Pillsbury I seem to recall and it's been a while, but they did have some document management tools. That was nice that you could readily access. It was, I forget the exact tool that was used, but it was available to all the users. So if you needed, you know, if you needed templates or whatnot, you could be able to pull, like to pull some of that information to help when you were creating responses to office actions.

Aaron J. Capron:

I seem to recall that you had to generate something from scratch or use something from, say, something you stored previously office. They did have a tool called Oaks that I thought was pretty invaluable, in which it set up a general. It set up a general kind of almost like a template format for you, depending upon the rejection, and you can go through and identify and click on relevant arguments or relevant template sections that you can add to your office action, which I thought was very useful. It helps save time in many ways. They also had the East and West search tools at the patent office and I thought the East tool was pretty powerful, at least for searching. West was more intuitive but East was more powerful and I think, as most people got involved with searching. They tend to navigate more towards using the East search tool.

Steve Brachmann:

For someone who wasn't necessarily in practice at that time. East versus West. Can you talk about the differences in those systems, what they were used for?

Aaron J. Capron:

I think they were both just general search tools that they had. One was easier to use. It was more intuitive that you could import search terms pretty easily. East, on the other hand, was more intuitive. You had to get more familiar with it. It took a little longer and, uh uh, it wasn't as intuitive. But as you, I think, I think I started off with the west search tool and eventually navigated using east as I became more acclimated and started comparing kind of the search results and then did you deal much with physical files.

Aaron J. Capron:

Uh, you know, at the patent office, yeah okay, a lot of physical files at the time go through the search histories and whatnot.

Steve Brachmann:

Yeah, like huge folders, thousand pages, or what would you say.

Aaron J. Capron:

Um, it wasn't huge. I mean, it was probably probably like anywhere from a hundred to 200 pages typically.

Steve Brachmann:

Okay, so not a whole tree, no, not a whole tree. Good, um, great, whole tree, good, great. So I think we got into this a little bit. But just to kind of segue back in, you're at the patent office as an examiner for how long? Three years, three years. And then, while you're there, do you start to get connected with Finnegan?

Aaron J. Capron:

Actually I was not really that familiar with Finnegan because I didn't really interface with finnegan in in my art unit. I was familiar with the art, I was familiar with the tech, uh, the law firms that I had actually worked against. And I only became, you know, aware of finnegan, you know, doing my research, when I was moving out to say, like the Bay Area, when I was looking at firms, and so Finnegan was a firm out here and I have to admit I reached out to a number of firms at the time and it was still the end of the dot-com crash. There was a lot of people were still feeling it, so they weren't hiring. But what really put a positive impression on me was the head of recruiting over at Finnegan said well, sorry, we're not currently looking, but here's some other firms you should consider, and I thought that was a very nice gesture.

Aaron J. Capron:

It really gave me a really positive impression, and so when an opportunity popped up at Finnegan later on, probably like three or four months later, I jumped on submitting my information and eventually joined Finnegan.

Steve Brachmann:

Okay, so let's talk a bit about you coming up at Finnegan and some of your litigation campaigns that you were involved in, through, you know, during your time there. Yeah, yeah.

Aaron J. Capron:

So I mean I started with Finnegan as a student associate, which was kind of like I said I've worked during the day and went to law school at night.

Aaron J. Capron:

So I started off mostly focusing on prosecution because everything was a little bit more predictable. But after I got out of law school I started doing some litigation work. And I mean being at Finnegan, you know it's great in that you can do just about any type of work here, you're not pigeonholed in anything. So I got exposed to all facets of patent law and whether it be portfolio development on the prosecution side or district court litigation, itc litigation, federal circuit appeals, licensing, ptab appeals, licensing, p-tab, um and whatnot. Um, like I think we one of the cases I worked on was a frontline versus crs and basically I I think I hit all, we hit all aspects of ip or patent law, because I was involved with the re-exam, a district court litigation, the cbm proceeding, which actually we filed on the day that you, the first day that you could, I think we're like CBM proceeding number five in subsequent appeal. So I mean that was, that was a fascinating just seeing how they all interplayed with each other.

Steve Brachmann:

Yeah. So what is that like when you have to go from an ITC proceeding to go? Okay, now I have to put my PTAB hat on. What are you know? Generally speaking, what are the differences? I?

Aaron J. Capron:

mean, I think to some extent when we were looking at it. When I look at it, you tend to get more, I don't know. It seemed like from what I've seen so far, like at least in the CBM proceedings and the PTAB proceedings, it's more of a mapping exercise where, like, the judges are more concerned with looking at the claim chart or whatnotab proceedings. It's more of a mapping exercise where, like the, the judges are more concerned with looking at the claim chart or whatnot, and it's just pointing to in the right direction. Yeah, um, I thought that the on the litigation side there was. It was dealt more with kind of more persuasive writing, um, and it wasn't as much of a mapping exercise. So it seemed to be more like try to persuasive writing. But it seemed like there was oftentimes maybe at least a little bit more what I would consider fluff in there as opposed to getting to the heart of the mapping, of the technology or the prior art to the claim language.

Steve Brachmann:

Yeah, so that case you were just describing. I'm sorry, the caption again was it was frontline versus CRS. You were also involved in representing Unilock on appeal. Can you talk a little bit about the technology at issue and the legal issues at play there?

Aaron J. Capron:

Yeah, the technology at issue was product activation and Unilock came up with some way to help with using product activation in a way that would protect the software, and it was, you know, the technology was. It got into the weeds a great deal and so I was brought in to help with respect to the technical side on that appeal. Now the legal issue that popped up in that case was there was a couple of them. One is whether the Microsoft's product read on the claims which I think the judge had on J-Mall, narrowed to some extent at least the construction in a way that it wouldn't read on the claims. And then there was also the damages issue and now the you know our case is mostly known for the damages issue right.

Aaron J. Capron:

But um, which is a whole, nother interesting story in itself. But, uh you, fortunately, we were able to convince the judges to reverse the J mall determination with respect to the technology, and so the jury's infringement verdict was withheld, or not withheld, but it was actually upheld.

Steve Brachmann:

So let's talk about some of your prosecution work. Did you have any clients when you were at Finnegan that you were able to secure patent rights for? That ended up being important for them down the line.

Aaron J. Capron:

Yeah, it's great, as I've been able to work with a few clients. I know that my first, the client, the first client ever brought in, was a small company called MetraGear, and these were set up by a gentleman who were cycling enthusiasts. What they came up with was they put a strain gauge within a spindle of a pedal to help determine how much force you were applying on the pedal, to see how efficient your your cycling stroke was. Um, we worked with them and got a patent application on file right before they went to this uh technology, the cycling conference that was in vegas, and back on the day when rss feeds were going on, my RSS feeds were going off the next day because all these cycle enthusiasts were loving this technology.

Aaron J. Capron:

Now, with a startup, sometimes, you know, implementing it on a mass scale can be an issue, and I know there were some aspects with that that they went through. But eventually they generated enough interest that Garmin bought the company out. And it was really cool because the two inventors we worked with were the founders and they were thrilled with the results of Garmin buying them out and being able to take the technology a step further. A step further, but what was even kind of. Even more interesting, at least to me, was I ran into the uh, a garmin attorney, a couple months later at this licensing executive society meeting in the bay area and I said, oh, you ever hear of metric gear is? Like, oh, yeah, absolutely.

Aaron J. Capron:

I was the one who signed off on the deal and like, oh, we're the ones who drafted a patent application for them. And he's like, oh, that's, that was a big reason why we bought their company, huh, and I thought that was you know, I thought that was totally cool. Um, and then I think there was an another early stage company that I worked with uh was bite mobile who was involved with doing a lot of web optimization with respect to technologies, especially when it came to web content, and they were trying to optimize the sending over web content back in the day, and because it was problematic because you know, like 10, 15 years ago there weren't separate web pages for mobile devices, right, and so a lot of that technology was directed to optimizing web content, and a lot of that has been incorporated today and I think some of those patents are being asserted right now.

Steve Brachmann:

Oh, wow. And that's how long after they've been well, they're being asserted now, and this is how long into their life.

Aaron J. Capron:

Oh, I think it's about 12, 15 years. I mean, it sometimes takes a while for this technology to mature Right, and so it's kind of cool in that way, because I mean, this is stuff you work on and you want to see your work product applied to some extent, you know.

Steve Brachmann:

Right? No, you want to know that it matters and that it has real world implications. Yeah, so you've been with Finnegan to the current day, and this year you were promoted to the head of PTO. Practice over there.

Aaron J. Capron:

Yeah, the patent office practice section which is involved kind of more with the portfolio development prosecution side of things. Gotcha Finnegan.

Steve Brachmann:

So Are there any certain areas of technology that you find yourself? I'm sure the it's got a wide scope, but is there any that you find yourself working in a lot?

Aaron J. Capron:

Yeah, I mean there's a. The great thing is is I'm working with a lot of cutting edge technologies, a lot of clients who are, you know, diving into some really really complicated, really really interesting things. Much of the work I'm focused on right now is ai, quantum computing, semiconductor manufacturing, neural network processing units which implement ai, vr, ar, digital health, a lot of the hybrid technology space dealing with AI and maybe some life sciences, and so it's just fascinating to see how all this has evolved over time, because 5, 10, 15 years ago, people weren't talking about this Right, and so that's why it's like I said, the prosecution and dealing with these cutting edge technologies kind of definitely scratches my curiosity edge.

Steve Brachmann:

Right, same here. That's one of my favorite things about writing about patents is you learn about the cutting edge over and over and over again.

Aaron J. Capron:

Yeah, you have to stay up-to-date on this stuff. That's the part that's intriguing. Yeah, always trying to stay up-to-date intriguing.

Steve Brachmann:

Yeah, always trying to stay up to date. So, in the same vein, the technology that you've worked on in prosecution has advanced. What about the state of technology and legal practice? Can you talk about what Finnegan is doing today, whether they're working with vendors, or what have you to kind of improve tech in practice of prosecution?

Aaron J. Capron:

Yeah, the great thing about Finnegan is, you know and I've worked at other firms previously is that we're focused on patent law, we're focused on IP, and so we can put all of our resources into it. And so if there's a client that has, I mean and we have, like, I think, 300 attorneys or working attorneys or patent professionals so, and across a wide variety of clients, so I mean, you know, usually if a client makes a request of something, our IT department can do something pretty quickly to help in that regard. And, you know, I thankful for our IT department because they've done a great job with helping us incorporate tools, whether it's homegrown or with vendors or whatnot.

Steve Brachmann:

Yeah, so can you give a sense of the number of patent families that IT is working on, making sure that you're maintaining all these office deadlines for?

Aaron J. Capron:

Yeah, I mean, for one client, there's probably like 500 families. For another client, there's probably like 500 families. For another client, there's probably 600 families. And so they've helped me and the team develop tools that allow us to stay on top of things. We've also helped with vendors coming in with respect to like docketing vendors as well, that sends reminders and whatnot, but we've also set up tools to help me track things as well. So I've got some wonderful people in place that help me out with that to make my life easier.

Steve Brachmann:

When you're working with any technology and legal practice, are there any drawbacks to the current state that you come into contact with that you wish would be addressed by developers? You go wow, this is annoying.

Aaron J. Capron:

With respect to some of the technology. You know there's always going to be hiccups. You're always going to see some types of hiccups along the way and the key is is, you know, understanding what those hiccups are and trying to minimize those issues going forward. Yeah, it's, it's, it's always. I think to some extent you're always going to have to identify them and then have them, fix them and move on. Yeah, I know that sometimes, you know, folks think that there's a problem with one piece of software and that they want to navigate and try something else. But then I think, anytime you do that, that you're going to identify additional issues, right?

Aaron J. Capron:

yeah where and have to go through the same thing all over again, right, um, and that's kind of it's. That's. That's one of the interesting aspects when you're evaluating these tools, when you bring these tools on and whatnot. Because, yeah, sorry, software glitches do happen, right, and it might not be the software, it might be the input in from, say like the USPTO. There might be an issue there. There can be bottlenecks across a number of different areas that could cause the issue that you just didn't foresee Right.

Steve Brachmann:

So we're kind of coming to the end here. I always like to take a minute or so at the end to just talk about life outside of the law. I think you know anyone who finds themselves in the abstract, vague nature of statutes and patent law kind of needs to have something outside. So I don't know, is there anything you want to take a minute to talk about what Aaron Capron does to find his zen?

Aaron J. Capron:

Yeah, yeah, I mean, I think some of the things that help me out is I take my dog. We have a chocolate lab. She loves being outside and whatnot, so I take her for long walks to go get coffee, sometimes with neighbors, sometimes myself, usually for like four or five miles, uh, like four, probably four days a week. She appreciates that. Um, also, like I do a lot with crossfit fitness, um, um, I like that. It helps, kind of like it's I got a good community with the people I work out with they. They keep me in line cross is crossfit competitive at.

Steve Brachmann:

I'm not super familiar.

Aaron J. Capron:

Yeah, crossfit, it's somewhat competitive. I think if I was younger I would have been more competitive, but I think as I've gotten older I get competitive. But sometimes I just show up and get my participation trophy, which I'm fine with.

Steve Brachmann:

It's okay to compete against yourself participation trophy, which I'm fine.

Aaron J. Capron:

It's okay to compete against yourself, yeah, yeah, yeah, and that's, and what's fascinating is and I started crossfit later, um, but I've been doing it for almost 10 years, but I'm still doing pr, I'm still getting prs even though I'm approaching 50, so it's, it's great in that regard. Okay, um, and offset that crossfit, I also do yin yoga, I I. That helps quite a bit, um, with respect to just stretching and whatnot is that a specific form of yoga?

Aaron J. Capron:

yeah, you sit in your poses a little longer and it helps kind of like, uh, get the kinks out. I find that it's, you know, very helpful for my well-being yeah, I might have to look at that on the yeah uh and on the family side. You know, my daughter loves amusement parks, so we've been visiting more amusement parks. Um, she likes roller coasters. I can only handle a couple, you know, but yeah, he's a little crazier than I am in that regard uh, and then.

Steve Brachmann:

Uh, you were a finalist recently for a state acknowledgement.

Aaron J. Capron:

Yeah, it was. It was very cool, at least in my mind, in that I was nominated a finalist for the state of California for being a mentor of the year, I think, by law dot com. I just thought that was cool because, you know, the field of law is very demanding. Is cool because, uh, you know, the the field of law is very demanding, um, it's service oriented, um, it can be taxing, um, can be long nights, uh. So for a rewarding, um, yet tough field, I, I, I, I just, you know, I was flabbergasted that my, the people that I work with you with, had favorable things to say about me. I don't think anything I do is special by any means. It was just a nice.

Steve Brachmann:

It's the work. It's sometimes tough to acknowledge yourself. Yeah, that's fair. Well, that's great and congratulations on that. That's awesome, thank you. Thank you, it was when was that? When was that?

Aaron J. Capron:

yeah, that was last year um, I think it was in. Yeah, yeah, I think it was like august or september 2024 okay, weather is probably still beautiful in cal oh can never argue.

Steve Brachmann:

All right, well, hey, aaron, thank you so much for taking the time to talk with us today. This was a great conversation.

Aaron J. Capron:

Oh, thank you. Thank you for the opportunity and it was a pleasure speaking with you, Steve.

Steve Brachmann:

Definitely Well. Thank you everyone for joining us once again. For IP Innovators, happy patenting.

People on this episode

Head Shot

DeepIP

Host
Head Shot

Steve Brachmann

Host