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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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

Amanda K. Murphy, Ph.D., Partner, and Daniel C. Tucker, Associate—Intellectual Property

Amanda K. Murphy, Ph.D., focuses her practice on strategic client counseling, global portfolio management, and patent prosecution in the biotechnology and pharmaceutical areas. In addition to her patent counseling and prosecution practice, Amanda also represents both patentees and petitioners in contentious post-grant proceedings before the Patent Trial and Appeal Board (PTAB).

Dan C. Tucker focuses his practice on the interplay among district court patent litigation, post-grant proceedings at the U.S. Patent and Trademark Office, and Federal Circuit appeals. He has represented clients across a broad range of technologies, including wireless/cellular communications, semiconductor technology, consumer electronics, and internet services. Before law school, Dan worked as an engineer for General Electric in the transportation industry and for Lockheed Martin in the aerospace industry.

Describe your practice area and what it entails.

Amanda: My practice focuses on assisting our clients to protect their most valuable assets, evaluating which technologies they should take to market and clearing their pathway to market by providing patentability and freedom-to-operate opinions, preparing and prosecuting U.S. and foreign patent applications, and challenging and defending patents before PTAB.

Dan: My practice includes patent litigation in U.S. district courts, post-grant proceedings before the United States Patent & Trademark Office (PTO), and appeals to the Federal Circuit from both the district courts and the PTO.

What types of clients do you represent?

Amanda: I represent a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Dan: I represent mostly large multinational organizations that are innovating across a broad range of industries and technologies. This includes companies in the wireless, semiconductor, Internet, shipping/logistics, medical device, and consumer technology industries. While much of my work is on behalf of U.S.-based companies, a large amount is also on behalf of companies based in Europe and Asia.

What types of cases/deals do you work on?

Amanda: My practice involves an equal balance between contentious and non-contentious proceedings before the USPTO, including supplemental examinations, ex parte reexaminations, reissues, IPRs, and PGRs.

Dan: I work primarily on contentious patent disputes between our clients and another party. Often, this will include an underlying district court patent litigation where the plaintiff/patentee is alleging that the defendant infringes its patents (I have represented both plaintiffs and defendants). It also usually involves co-pending challenges to the validity of those patents in post-grant proceedings at the PTO. I also handle the appeals of district court and PTO cases.

How did you choose this practice area?

Amanda: I first became interested in patent law as an undergraduate when I learned that the HIV genome had been sequenced and patented. Realizing the key role that patents play in incentivizing pharmaceutical companies to invest in the research and development of new life-saving technologies, I knew I had to be a part of that process. As a first step toward that goal, I completed a Ph.D. in biochemistry studying retrovirology. I then joined Finnegan and have been assisting companies with their intellectual property needs ever since.

Dan: After working in engineering for several years, I decided I needed something more exciting. While I loved technology (I’m an electrical engineer by training), I also have always loved to write. Patent law seemed like a promising fit for those two passions. So I took a job as a patent agent at a boutique law firm outside of Washington, DC, for a little over a year to test the waters. That experience convinced me that patent law was a fun and exciting career, so I applied to law school and never looked back.

What is a typical day like and/or what are some common tasks you perform?

Amanda: Most days involve a mix of teleconferences with clients, inventors, and experts to develop technical and legal positions; internal strategy meetings with other members of the firm to coordinate efforts on projects; and time spent in front of the computer researching and preparing written work product.

Dan: A great thing about this job is that there isn’t a “typical day.” In any given month, I’ll have days where I’m drafting a motion, preparing for an oral argument, giving a speech on patent law to colleagues or clients, or traveling across the country (or world) for a deposition or hearing. These wildly different tasks keep life interesting and force you to continually develop and improve a wide set of skills.

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

Amanda: An advanced technical degree and strong persuasive writing skills are essential for a career in patent counseling, portfolio management, and patent prosecution. Courses that offer practical experiences in drafting legal documents and oral advocacy will be the most valuable.

Dan: Aside from one or more patent law classes, I think that evidence and administrative law classes are a must. Evidence is required for any litigator, and with the American Invents Act passed in 2012, there have been and will continue to be many interesting administrative law questions surrounding patent law. Classes, training, and student groups that improve oral and written advocacy are also important.

What is unique about this practice area at your firm?

Amanda: Finnegan is unique because it is a full-service IP-only law firm. Our professionals have experience in almost every area of technology, and we practice all aspects of IP law—from patent prosecution, licensing, and litigation to copyrights and trademarks. We are IP experts because that is all we do.

Dan: There are two related aspects that make Finnegan unique in IP. First, our depth of technical and IP-related legal knowledge is unparalleled. We have more than 300 professionals who are focused almost exclusively on IP. This means that whatever problem you encounter during a particular case, someone else at the firm has been through that same problem or a similar one. Second, we have a level of collegiality that I don’t think exists at many large firms. This means that not only does someone at the firm likely know the answer to your question, but they also want to help you. Couple these two things together—depth of knowledge and collegiality—and the end result is a place uniquely positioned to tackle the most complex IP issues while developing top-notch IP attorneys.

What are some typical tasks that a junior lawyer would perform in this practice area?

Amanda:    One of Finnegan’s unique strengths in the patent prosecution and counseling areas is its deep bench of technical specialists and student associates. These more junior members of the firm work directly with in-house counsel and inventors under the supervision of more senior attorneys at the firm on all aspects of patent prosecution, including drafting patent applications, responding to office actions, analyzing prior art, and conducting examiner interviews.

Dan: This varies based on an attorney’s specific practice area, abilities, and experience before joining the firm, but I would generally say that the sky is the limit. As an example, just this year I worked with a second-year associate who not only prepared motions before the district and papers in several post-grant proceeding before the PTO, but also argued at the oral argument before the PTO, took and defended several depositions, and took direct testimony of a witness during a district court trial. This case might be a bit of an outlier, but it demonstrates that a strong work ethic and exemplary work are rewarded with fulfilling opportunities.

What kinds of experience can summer associates gain in this practice area at your firm?

Amanda: Summer associates who are interested in gaining patent prosecution and client counseling experience typically assist with drafting responses to office actions and conducting examiner interviews. Such projects often include conducting legal research, analyzing prior art, developing legal and technical theories, and preparing persuasive legal documents and memoranda.

Dan: During our summer program, we try to expose our summer associates to all aspects of IP law. Taking patent law as an example, we try to get summer associates at least some experience in patent prosecution (obtaining patents from the PTO), patent litigation (asserting patents at U.S. district courts or the International Trade Commission), and post-grant proceedings before the PTO (such as inter partes review proceedings). We provide the summer associates with formal and informal training in all of these substantive areas of the law. We also introduce summer associates to several important “non-billable” activities, such as business development, speaking, and writing for publications.

What are some typical career paths for lawyers in this practice area?

Dan: There are countless options for lawyers in IP law. For example, in addition to working at a law firm, IP attorneys can pursue “in-house” positions as employees of companies (almost every mid-sized or larger company has in-house IP counsel). The federal government also employs IP attorneys in many capacities (e.g., as administrative patent judges at the Patent Trial and Appeal Board of the PTO or as attorneys who represent the government in federal court and/or at the ITC).