The following is an excerpt from Practice Perspectives: Vault’s Guide to Legal Practice Areas.
Paul Bondor, Partner, and Kerri-Ann Limbeek, Associate—Intellectual Property
Paul Bondor is a partner at Desmarais LLP. After studying mechanical and aerospace engineering at Princeton University, he attended the University of Michigan Law School, where he served on the Michigan Law Review. He clerked for the Hon. Louis L. Stanton in the U.S. District Court for the Southern District of New York from 1993–1995 and then began private practice at Kenyon & Kenyon, where he became a partner in 2001. He was also a partner in Kirkland & Ellis’ New York office from 2004–2011.
Kerri-Ann Limbeek graduated from the University of Pennsylvania in 2010 with a degree in chemical and biomolecular engineering and from the University of Chicago Law School in 2013. After spending two years in the Litigation group at Sullivan & Cromwell LLP, Ms. Limbeek joined Desmarais LLP in 2015.
Describe your practice area and what it entails.
Paul: My practice focuses on patent infringement jury trials in federal courts. Since a trial doesn’t happen overnight, my daily work spans courtroom hearings and motion arguments, fact depositions, expert reports, and depositions, all the way through the jury trial, post-trial arguments, and appeal. Basically, I’m always working with my colleagues to develop our client’s case on the merits, including the technical details required to prove (or fight) infringement and validity of the patents at issue, as well as damages-related evidence.
Kerri-Ann: Complex technology-driven disputes are the core of our practice. My practice focuses on patent infringement litigation in federal courts, as well as inter partes reviews (IPRs) before the Patent Trial and Appeal Board. The technologies involved in our cases span many industries, including medical devices, biotechnology, pharmaceuticals, semiconductors, smartphones, and computer hardware and software.
What types of clients do you represent?
Paul: At Desmarais LLP, we represent blue-chip global technology powerhouses, substantial intellectual property licensing companies, and life sciences and medical device companies, as well as individual inventors with world-changing inventions. I’ve had the opportunity personally to work with all of these types of clients.
Kerri-Ann: We represent both plaintiffs and defendants, including large corporations, small companies, research institutions, and individual inventors across a broad spectrum of technology areas. Some of our clients include Cisco, Apple, GlaxoSmithKline, Nokia, IBM, and Intellectual Ventures.
What types of cases/deals do you work on?
Paul: High-profile patent infringement cases make up the bulk of our practice, but we also take on other high-stakes technology-related cases involving unfair competition, trade secret theft, and corporate raiding.
Kerri-Ann: I have worked on a number of patent litigations in district court, as well as on inter partes review proceedings. I work on cases involving a broad range of technologies, including medical devices, biotechnology, semiconductors, smartphones, and computer hardware and software. Some of the clients that I have had the opportunity to work with include Apple, Enzo Life Sciences, LifeCell, and Intellectual Ventures.
How did you choose this practice area?
Paul: I really like analytical and problem-solving challenges, and I enjoyed studying engineering in college. But I’m also a talker who loves argument, and I thought there would be more variety in practicing law. After two years as a federal law clerk watching jury trials and learning about effective advocacy and writing, I chose to go into intellectual properly litigation—a path that gives me all the excitement and challenge associated with trying a case in court, coupled with an endless variety of new technologies to learn about.
Kerri-Ann: I began my career in a general litigation group and worked on securities and other complex commercial litigations before deciding to focus on patent litigation. As soon as I started working on patent cases, I realized that this practice area was a perfect fit for me. Patent litigation allows me to learn about new technologies while providing the challenging and exciting legal work involved in litigating cases in court. Litigation also provides the opportunity to work with a team on each of my cases.
What is a typical day like and/or what are some common tasks you perform?
Paul: Typically, any given day will find me either in my office preparing for the next event, be it trial, a hearing, a meeting, or a deposition (or working with my team on litigation-related documents of all stripes: pleadings, briefs, and written discovery requests or responses) or on the road to get to a hearing or deposition, whether that’s in Delaware, California, Texas, Japan, or Taiwan.
Kerri-Ann: My typical day or week varies depending on the nature and stage of the cases that I am working on. In the early stages of a case, I may be interviewing engineers for discoverable information or developing a case strategy with my team. During fact discovery, I’ll be traveling to prepare witnesses and to take and defend depositions. During expert discovery, I’ll be working closely with expert witnesses to develop the theories we will present at trial, including drafting expert reports, preparing my experts for their depositions and taking and defending expert depositions. Throughout a case, I’ll also be drafting pleadings, written discovery, and briefs and preparing for hearings.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Paul: An undergraduate degree in engineering or science is certainly helpful. Once you get to law school, evidence and trial advocacy are also helpful—there’s no substitute for getting on your feet and presenting evidence and arguments in whatever forum is open to you.
Kerri-Ann: Although technical experience is helpful, I would recommend focusing on classes and experiences that help you to develop written and oral advocacy skills. Hands-on experience presenting evidence and arguments will help prepare you to think (and act) like a trial lawyer early in your career.
What is the most challenging aspect of practicing in this area?
Paul: I think the single biggest challenge is the task of explaining enormously complicated technology to judges and juries who are not familiar with it, who likely have no preexisting interest in it, and who almost certainly don’t come pre-equipped with an educational background in the area. In order to win, you not only have to make the technical aspects understandable, but you also have to provide enough of the rest of your client’s story to make the facts interesting and compelling.
Kerri-Ann: The most challenging part of my practice is quickly getting up to speed on complex technologies that I am not familiar with. However, learning about new technologies that are outside of my comfort zone is also one of the most rewarding and interesting parts of my practice. In addition, it’s often helpful to have members of a case team without a background in the specific technology area at issue to give perspective
and insight on how to explain the technology to judges and jurors who may be unfamiliar with it.
What do you like best about your practice area?
Paul: Far and away, the best thing about my practice area is its astounding variety. Because you have to learn the technology at issue—understanding the details so well that you know it better than the technical experts—every matter gives a chance to learn fascinating stuff. You get to learn about it from passionate people, and each case is a story with its own cast of characters: witnesses, clients, judges, and opposing counsel. Everything is new, every time, and the endless variety makes working a lot of fun.
Kerri-Ann: My favorite part of my practice area is learning new technologies with every case. I love working with engineers and scientists employed by our clients, as well as technical expert witnesses to develop the legal and technical arguments that we will present to a jury.
What misconceptions exist about your practice area?
Paul: People are always surprised to hear that we try our cases to juries, because they assume that juries wouldn’t be able to understand the complex technology. But if the jury has trouble understanding our cases, we’re not doing our job. Likewise, people often think that you need a degree in engineering or the sciences to excel in patent litigation, but I think that it’s possible to succeed regardless of your background—if you’re not afraid of technology and if you’re smart, interested, and dedicated enough to push yourself to really learn it for each case. The only thing I wish I’d known at the outset is just how much on-your-feet experience helps you as a trial lawyer; I would have started even earlier with trial advocacy and clinic work in law school.
Kerri-Ann: One common misconception among law students (and one that I fell prey to) is that if you focus your practice on patent litigation, you may limit your career options in the future. In reality, I have found that patent cases provide far more opportunities for substantive work (like taking depositions, working with experts, and going to trial) than other types of complex commercial litigation, which involve a lot of early-stage document review and often settle before getting too far along in the discovery process. The skills that you build as a litigator are applicable to any subject area, so I think that the most important question to think about in deciding where to start your career is where you will get the best opportunities to learn and practice litigation skills.
What is unique about your practice area at your firm?
Paul: Though we concentrate on a single practice area, we differ from virtually every other law firm in our space because we do not bill by the hour. Instead, our alternative billing arrangements let us work more efficiently, focusing on the work necessary to win. By avoiding traditional incentives that encourage simply billing hours, we’re able to structure a variety of arrangements to meet a client’s needs more effectively.
Kerri-Ann: One of the unique aspects of our firm is that we do not bill by the hour, nor do we track billable hours. This causes all attorneys to focus on the issues that really matter to the case and results in associates getting real responsibility and hands-on experience from the time we are very junior. The focus at Desmarais is always on the quality of the work product rather than the hours spent in the office. Additionally, Desmarais is only seven years old, and it still has the feel of a startup. Rather than focusing on how things have been done traditionally, the firm listens to associate input and adapts. For example, associates meet with John Desmarais every quarter and discuss ideas for making the firm better. It’s exciting to work somewhere that allows associates to have a real voice!