Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

The following is an excerpt from Practice Perspectives: Vault’s Guide to Legal Practice Areas.

We invited the top ten firms in each practice area, as ranked by nearly 17,000 associates from across the country in Vault’s annual Associate Survey, to be featured in this guide. Finnegan ranks 2nd in Intellectual Property.

Erika Harmon Arner, Partner—Electrical and Computer Technology; Jennifer Roscetti, partner—Patent Litigation

Erika Harmon Arner is a partner in Finnegan’s Electrical and Computer Technology Practice Group and the leader of its Patent Office Practice Section. She joined the firm as a summer associate in 1998, returned as an associate in 1999, and was promoted to partner in 2010.

Jennifer Roscetti is a partner in Finnegan’s Chemical and Metallurgical Practice Group. She graduated from the University of Kentucky in 2002 with a Bachelor of Science in Chemical Engineering. Before attending law school, Ms. Roscetti worked as a process engineer for E.I. du Pont de Nemours and Company in the Teflon® division. Ms. Roscetti worked as a design engineer for ExxonMobil Chemical Company while she attended law school. In 2005, Ms. Roscetti earned her JD from the University of Houston Law Center. Ms. Roscetti joined Finnegan in 2005 as an associate and was promoted to partner in 2014.

Please provide an overview of what, substantively, your practice area entails.

Erika: My practice includes patent prosecution management and client counseling with an emphasis on electronic technology, computer software, and the Internet; contested proceedings before the Patent Trial and Appeal Board; and patent appeals before the Court of Appeals for the Federal Circuit and the Supreme Court of the United States. I am often called to advise clients on patent-eligibility jurisprudence and business method patents.

Jennifer: I practice patent litigation before U.S. district courts and the U.S. International Trade Commission. My litigation experience includes examining and cross-examining fact and expert witnesses at trial, brief writing, arguing at claim construction hearings, assisting technical experts in their preparation of expert reports, and conducting and defending depositions. My patent practice has encompassed a wide array of technology, primarily in the chemical and pharmaceutical fields.

What types of clients do you represent?

Erika: I represent a wide variety of clients, including Fortune 100 companies, innovative second generation family-owned corporations, cutting edge start-ups, scientific associations, government contractors, and non-profit research organizations. Representative clients include software leader SAP, Innovator Square, Inc., cloud computing provider Rackspace, and business consulting firm Accenture.

Jennifer: I generally represent pharmaceutical patent holders in Hatch-Waxman litigation including Eli Lily and Co., Grünenthal GmbH, and Pronova Biopharma Norge AS. I have also represented companies such as Tate & Lyle, a global provider of high-intensity sweeteners (SPLENDA®), in a dispute involving intellectual property rights at the U.S. International Trade Commission.

What types of deals and/or cases do you work on?

Erika: My recent matters include: represented SAP before the Patent Trial and Appeal Board (PTAB), achieving first victory in a covered business method post-grant review; led over a dozen inter partes review and post-grant review proceedings at the PTAB; represented petitioners before the Supreme Court of the United States in Bilski v. Kappos, co-authored the successful petition for certiorari and the petitioners’ briefs to the Court; represented Lawson as defendant-appellant in ePlus Inc. v. Lawson Software, Inc. (Fed.Cir.).

Jennifer: My recent matters include: Grünenthal GmbH et al. v. Teva Pharmaceuticals USA, Inc. (S.D.N.Y) (representing Grünenthal in Hatch-Waxman litigations relating to abuse-deterrent formulations of OxyContin® and Opana®); Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc. (D. Del.) (represented Pronova in Hatch-Waxman litigation relating to drug Lovaza®, resulting in judgment of patent infringement, validity, and enforceability in Pronova’s favor); represented Tate & Lyle in an ITC investigation involving methods of manufacturing sucralose, an artificial sweetener, including cross-examination of expert witness.

How did you decide to practice in your area?

Erika: With my computer science background, the intellectual property field gave me the chance to keep pace with developing technologies while also practicing law. Patent law seemed like an especially good fit, with the emphasis on high technology and precision.

Jennifer: I was first introduced to patents while researching anti-cancer drugs at the University of Kentucky. I was fascinated by the opportunity to work with inventors on various emerging technologies as a patent attorney. But I left my options open and accepted a job as a process design engineer for ExxonMobil. While attending law school at night, I realized that my desire to apply my growing knowledge of the law to various technologies and issues could not be ignored. I abandoned my life as a chemical engineer and entered the full-time law program to pursue my law degree.

What is a typical day or week like in your practice area?

Erika: Nearly every day I spend at least some time meeting with clients, either by phone, video, or in person. I also spend time each day working with our junior attorneys, discussing strategic decisions or providing guidance on patent application preparation and prosecution. When I am writing a brief or preparing for an argument, I often spend long days holed up in my office poring over documents and scribbling ideas on a whiteboard. Most weeks I deliver at least one speech to a bar association, conference, or other audience.

Jennifer: During pre-litigation and the early stages of litigation, there is close client coordination when developing positions and theories of the case. This includes not only interviewing the client but also key inventors and other stakeholders involved in the development of the invention. During fact discovery, both deposition preparation and marshaling the facts constitute the majority of time. Similarly, during expert discovery, most of the time is spent developing positions and working with experts to fully vet positions in preparation for trial. Evaluating the overall strategy of the case is an ongoing process and one of the most interesting aspects of litigation.

What is the best thing about your practice area?

Erika: Working with inventors to learn about their innovations is inspiring and exciting, and I enjoy helping junior attorneys learn the craft of writing excellent patent applications. Helping a company formulate a new IP strategy or refresh an outdated strategy is one of my favorite tasks because it combines my knowledge of the law, the company, and the changing competitive landscape.

Jennifer: As a chemical engineer, I didn’t have many opportunities to teach others. So, the best thing about patent law for me is that I have the opportunity to teach others about science and the law practically on a daily basis.

What is the most challenging aspect of your practice area?

Erika: With the advent of the America Invents Act, much of my time is dedicated to coordinating training and resources for our attorneys and clients. The AIA represents such a major shift in the patent law that there is much to study, analyze, and absorb. We will be living with pre-AIA and post-AIA patents for decades, so it is crucial to be experienced in both regimes.

What training, classes, experience, or skills development would you recommend to someone hoping to enter your practice area?

Erika: Taking a patent bar review course is an excellent way to learn about patent practice, and passing the Patent Bar Exam during law school is a great way to set yourself apart during recruiting season.

Jennifer: Virtually all patent attorneys need a science background because we have to understand the technology at issue. In patent law, I would suggest keeping apprised of recent changes in Patent Law implemented by the America Invents Act as well as recent Supreme Court and Federal Circuit opinions addressing patent law issues. From a patent litigation perspective, I would suggest attending NITA deposition courses that provide skills for taking and defending depositions and trial advocacy courses such as the annual University of Virginia Trial Advocacy Course.

What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?

Erika: I wish I had known how steep the learning curve is to become a really skilled patent practitioner. Even after three years of law school and the bar exam, patent drafting and prosecution were an entirely new challenge.

Jennifer: One misconception is that patent law is not exciting. For certain clients, patents are essential for sustaining success in the marketplace and could be the difference between life and death for the company. I wish I would have known how much fun business development can be. For patent law, I would encourage new attorneys to keep in touch with colleagues in your former “technical” life. They will likely be your potential clients one day.

What is unique about your practice area at your firm?

Erika: Finnegan is unique because our entire firm practices Intellectual Property law. With so many talented attorneys dedicated to this one practice area, we provide unparalleled client service and top quality work product. We have experts in every field of IP law, from litigation before the International Trade Commission to practice before the Patent and Trademark Office, from licensing to trade secrets to IP in government contracting.

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