The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Christopher Douglas, Partner, and Lindsay Church, Associate — Patent Prosecution, Counseling & Review; Intellectual Property Litigation
Christopher (“Chris”) Douglas, a partner in Alston & Bird’s Patent Prosecution, Counseling & Review practice, represents both petitioners and patent owners in post-grant proceedings. Recognized as one of the more active post-grant practitioners nationwide, Chris remains one of the few practitioners to tout confirmation of all claims in an inter partes review (IPR) in a final written decision on behalf of a patent owner. His familiarity with both pre-grant and post-grant proceedings informs his ability to counsel and secure foreign and domestic patent rights for his clients. Eager to share his knowledge, Chris co-wrote the USPTO Post-Grant Trials Handbook and speaks on the patent practice regularly.
Lindsay Church, an associate in Alston & Bird’s IP Litigation practice, works on cases involving all aspects of the IP landscape, including complex patent litigation in federal courts and before the U.S. International Trade Commission. She has also had the opportunity to work on patent policy matters and legislative strategy and draft amicus briefs on behalf of firm clients regarding significant IP issues. Lindsay joined Alston & Bird in September 2016 and worked as a summer associate in 2015.
Describe your practice area and what it entails.
Chris: I work with both petitioners and patent owners in pre- and post-grant proceedings before the USPTO. Working with Fortune 100 multinational clients, I provide strategic portfolio advice during patent development and bring an approach resembling a cross between patent prosecution and litigation to successfully acquire and defend patent rights for my clients.
Lindsay: My practice is in IP litigation, with a focus on patent infringement cases in federal courts and before the USITC. I also track and analyze case developments, industry updates, and policy changes affecting IP rights for firm clients domestically and overseas.
What types of clients do you represent?
Chris: I represent large, multinational clients that span several industries, including data capture, sensors and IoT, warehouse automation, machine learning systems and data analytics platforms, imaging, medical device and equipment manufacturers, glass and ceramic materials, and even a business that designs specialty fire trucks and equipment. My practice covers a broad range of complex technologies.
Lindsay: I’ve had great opportunities to work with clients across a variety of industries, including payment systems, footwear, and even fire trucks. The largest portion of my work has focused on the cellular communications space, including patents declared essential to various technical standards. By focusing on the cellular communications area, I’ve been able to build and hone my skills within one industry. But I’ve been able to put that skill set to use for other businesses, which creates a balance in my practice.
What types of cases/deals do you work on?
Chris: My casework varies, which is why I enjoy it so much. From the patent prosecution side, I’ve counseled a global developer of machine learning systems and data analytics platforms. I was patent counsel in acquisitions, transactions, and patent preparation/prosecution for the world leader in natural language generation. On the post-grant side, I have served as counsel for a Fortune 100 company in multiple IPR proceedings relating to in-home automation, location awareness, energy management systems, and data capture. I have also served as counsel for a leader in marine electronics in multiple IPR proceedings concerning sonar technology; a provider of technology for reservoir characterization, drilling, production, and processing to the petroleum industry in multiple IPR proceedings; and multiple inter partes and ex parte reexamination proceedings related to global positioning systems, motion control systems, middleware, and medical devices.
Lindsay: I work primarily on litigation matters, representing both plaintiffs and defendants during all phases of litigation—from the filing of the complaint through appeal. One of the most significant cases I have worked on was a victory for a cellular communications client before the USITC. I also work on patent policy matters and legislative strategy.
How did you choose this practice area?
Chris: Personally, I have always been interested in the latest technologies. When I decided to pursue a legal career, IP provided me with an intersection of my personal interests and professional goals. Now I meet with inventors at the forefront of technology. I hear about the latest innovations when they are just ideas and see them brought to life firsthand. I vividly recall the first time I sat down with an inventor. I relished hearing about his software development, but I also saw the gratification on his face because he valued our insight and work to protect his invention and bring it to the marketplace.
Lindsay: While I am an IP attorney, my background is in journalism. When I was a summer associate, I had the opportunity to work in various practices, including general litigation, IP transactions, and trademark/copyright. I was exposed to a variety of IP projects and was excited to realize that not only did I find the subject matters very interesting, but my interest in writing and my journalism skills lent themselves to IP litigation.
What is a typical day like and/or what are some common tasks you perform?
Chris: While there is no typical day, there is one constant for me: an early alarm clock! Because I work with multinational companies with engineers in Europe and Asia, my day begins at 5 a.m. when I immediately catch up on client communications. When my overseas clients head home, my day then turns to strategic thinking, analysis, patent applications, proceedings, and big filings.
While literally living in a world of evolving technology, which gives me great flexibility in client communications, I do carve out time for travel to meet my clients around the globe. There is no substitute for face-to-face meetings.
Lindsay: I have no typical day, which is one of the exciting parts of my practice. I could find myself spending time on case management and drafting briefs and motions. On most days, I’m communicating with clients and our internal teams about case strategy. I also assist with fact and expert discovery, including taking and defending depositions and meeting with inventors and technical and damages experts.
One current project on my plate is preparing to mock a case for an upcoming jury trial regarding fire truck patents. My days vary, which keeps me engaged and constantly learning.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Chris: I would advise young legal professionals interested in patent practice to focus on their tech degrees to ensure they are qualified to sit for the patent bar exam. But in college, engineers may not have as many writing opportunities as their peers. Seek out opportunities to develop and practice legal writing and advocacy skills. These are important skill sets that will help you when you begin your legal career—with or without courtroom aspirations.
Lindsay: I would recommend taking IP-focused law school classes. Understanding the substantive law before practicing allows you to identify and think more critically about the issues that arise during litigation.
It is also helpful to stay up to date on the industry news specific to your practice, as well as major legal decisions and policy changes that may affect that industry. By staying current and keeping my eye on the news, it helps me to better serve my clients.
What do you like best about your practice area?
Chris: The best part of my practice is figuring out a way to protect some of the world’s greatest technological innovations. It’s incredible what can be created today to help businesses and people alike. I consider myself lucky enough to get an inside first look at these developments and help them enter the marketplace.
Lindsay: In addition to the legal issues that arise over the course of complex litigation, each case is an opportunity to learn about a new area of technology, such as 5G. In today’s global marketplace, technology and innovation are everywhere. I get to have a special lens into seeing what new technologies and innovations may be in the works, watching them come to life, and knowing what’s needed to protect them.
What kinds of experience can summer associates gain in this practice area at your firm?
Chris: All Alston & Bird summer associates get to handle real billable work, both in patent prosecution and patent litigation. Summer associate work mirrors the job of a first-year associate, sitting in on every part of a project.
We also assign both an associate and partner mentor who help integrate our summer associates and plug them into the right diverse mix of projects. Our goal is that at the end of the summer, when they walk out the door, they want to come back because they know and understand the practice and work and are excited to be part of our team at the firm, where we hope they will have a long, successful career.
The firm invests in people. That culture creates a dynamic and collegial place to work. It’s no surprise that Alston & Bird has been ranked by Fortune as one of the “100 Best Companies to Work For” for 20 consecutive years. This year, we were also honored again by Fortune as one of the top employers for millennials. We’re very proud of that record.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
Chris: When you practice in front of the patent office, a technical background is a requirement. But that shouldn’t discourage lawyers who want to pursue a career in IP. As the hiring partner in the Charlotte office, I’m talking to students and young lawyers all the time. I always tell them that there are plenty of areas that allow good lawyers with a strong interest in tech to work in IP.
Lindsay: Don’t be discouraged from practicing IP because you don’t have a technical background. In the litigation context, most often a specific background is not mandatory. And not having a technical background can even bring a valuable perspective to the team to distill complex information in a manner that translates well with judges and juries.