The following is an excerpt from Practice Perspectives: Vault’s Guide to Legal Practice Areas.
Laith M. Abu-Taleb, Associate; and Erin M. Sommers, Ph.D., Partner—Intellectual Property
Laith Abu-Taleb focuses his practice on litigation before U.S. district courts and the U.S. International Trade Commission (ITC), patent prosecution, and strategic client counseling. He maintains an international practice, working closely with in-house counsel at large corporations as well as inventors and founders of startup companies that are pursuing intellectual property protection, licensing deals, and valuations across various industries.
Erin focuses her practice on Abbreviated New Drug Application (ANDA) litigation, post-grant proceedings, and counseling, primarily in the chemical and pharmaceutical areas. Her litigation experience ranges from pre-litigation analyses through trial at the district court and on to appeals before the Federal Circuit. Erin also routinely represents both patentees and petitioners in post-grant proceedings before the Patent Trial and Appeal Board (PTAB).
Please provide an overview of what, substantively, your practice area entails.
Laith: My practice mainly focuses on patent litigation, strategic client counseling, licensing, and patent prosecution. I help with patent litigation across various forums, including district courts, the International Trade Commission, and the Patent Trial and Appeal Board (PTAB). My client counseling experience entails working with companies with their patent portfolios, monetizing their assets, and working with their engineers and inventors directly to decide how to protect or license their innovations.
Erin: My practice focuses on assisting our clients in obtaining patents, as well as representing their intellectual property rights before federal district courts and before the PTAB at the USPTO.
What types of clients do you represent?
Laith: I represent large multinational organizations and small fund-strapped startups. My clients come from many industries: medical device manufacturers, consumer electronics companies, software application coders, and international vehicle brands. I’ve worked with clients based all over the world, with a particular focus towards clients in the Middle East & North Africa region, where I help seek regional and international protection for their innovations and designs.
Erin: Many of my clients are large, multinational innovative pharmaceutical companies. I also work with domestic and international chemical companies.
What types of cases/deals do you work on?
Laith: I work on cases before various district courts, the International Trade Commission, and the United States Patent and Trademark Office. I also work on and negotiate licenses directly between companies, helping facilitate the spread of technology to others. I also have had the fortune of working on a number of cases pro bono, representing clients in civil suits, criminal trials, and asylum proceedings.
Erin: The majority of my practice focuses on contentious IP proceedings whether before federal courts or before the PTAB. In particular, my colleagues and I represent pharmaceutical companies in ANDA litigation.
How did you decide to practice in your area?
Laith: I received bachelors and masters degrees in Bioengineering, worked on the Hill, and spent time researching molecularly imprinted polymers. I founded two tech start-ups during those years, and researched ways we could protect our innovations. I fell in love with how the law can help an idea become a product and then a company. And so with the encouragement of family, I went to law school, and have been in the field ever since.
Erin: Not long into my graduate work in organic chemistry, I realized that life in the lab was not for me. As a result, I explored what were at the time called “non-traditional” careers in chemistry. I was intrigued by the idea of patent law, and made every effort to get a job at an IP law firm directly after graduate school. Once at Finnegan, I quickly realized that IP law was the perfect combination of science and real world application.
What is a typical day or week like in your practice area?
Laith: My projects vary daily. Within any given month, I get the opportunity to speak with inventors, draft motions or briefs to be filed with the court, interview experts, or develop case or licensing strategies. I may dive deep into the relevant law to research precedent, or analyze inventions and technologies in particular fields. Sometimes, I’m part of a team in court, arguing patent or pro bono cases before a judge or jury.
Erin: My day is largely dictated by the projects that I’m working on at the moment. One day I could be working with an expert, and the next I could be drafting a brief for a Federal Circuit appeal. I love how my day-to-day experience changes depending on our clients’ needs.
What is the best thing about your practice area?
Laith: The teamwork. All of my projects require collaboration because they are so particular and nuanced. We might have a case involving a very complex innovation, playing within the boundaries of a very complex area of the law, all within a very complex timeline of events. As such, I have the immense good fortune of being able to learn from experts within the most interesting fields.
Erin: How smart everyone is. At Finnegan, our attorneys have both phenomenal legal minds and brilliant scientific backgrounds. I am constantly humbled by the sheer intelligence of my colleagues.
What is the most challenging aspect of your practice area?
Laith: Not only are technologies always changing, but so is the law. Keeping abreast of new evolutions in tech and intellectual property is increasingly demanding, but being able to utilize something you just learned to help a client solve a problem makes the practice that much more rewarding.
Erin: Patent law is a highly technical area of law and requires being able to translate difficult concepts into easy-to-understand terms for the factfinder. I love working with experts to learn the technology but then also be able to convey that in such a way that someone without the expert’s knowledge can understand.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Laith & Erin: STEM courses, mixed with persuasive writing courses. These are often at odds with one another--science writing requires passive tense, whereas legal and persuasive writing is more active. Neither is more important than the other, and both are necessary to the field of patent law.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
Laith & Erin: Many people think patent lawyers are just mathematicians or scientists with law degrees, but some of the best litigators we’ve ever seen have been patent lawyers. The ability--and desire--to explain complex technologies to juries creates skills that go unrivaled in and out of a courtroom. The natural curiosity of a scientist really shines in a courtroom, especially when that lawyer deeply understands what they’re talking about.
What is unique about your practice area at your firm, and how has it evolved since you have been at the firm?
Laith: IP at Finnegan brings people of all backgrounds together, to work together in teams to solve complex problems. Our ever-increasing focus on collaboration has thus stood out.
Erin: What’s unique about IP law at Finnegan is that it isn’t unique—IP is all Finnegan does. As a result, we speak the language our clients need when it comes to science and IP issues.
What activities do you enjoy when you are not in the office, and how do you make time for them?
Laith: I love spending time with my family, both in and out of the country. I also volunteer at the Smithsonian Air and Space Museum, where I teach children about the planets, stars, and space travel. Prioritizing familial and personal experiences is key to a successful practice, as it keeps one rejuvenated and excited about the next task ahead.
Erin: When I’m not in the office, I soak up as much time as I can with my kiddos. I also try to maintain a running habit and to read. It’s not always easy to fit it all in, but I find that I’m deeply satisfied by my work and how it fits into my personal life.