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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.

Arpita Bhattacharyya is an all-around patent attorney. Her practice covers all aspects of patent law, including district court and ITC litigation, contested patent office proceedings, Federal Circuit appeals, and client counseling, with an emphasis on patents related to medical devices, diagnostics, and electronic and mechanical technologies. She has been recognized as a WIPR Influential Women in IP Trailblazer. She is a resident of the firm’s Palo Alto office.

John Livingstone is the managing partner of the firm’s Atlanta office and is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit. He also serves as lead counsel in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). John was a resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues.

Describe your practice area and what it entails.

Arpita: My practice involves all phases of patent litigation, including discovery efforts, claim construction, working with technical and damages experts, depositions, drafting motions and briefs throughout every phase of litigation, and trial. In my patent office practice, I represent petitioners and patent owners in post-grant proceedings, where my role involves preparing written submissions, taking and defending depositions, and arguing at the oral hearing. My counseling practice includes providing strategic advice through opinions of counsel, patent portfolio development and management, due diligence investigations, and freedom-to-operate analysis.

John: My practice involves complex, high-stakes patent litigation in the pharmaceutical, chemical, and biotechnology arenas. I am involved in all phases of litigation, including pre-suit due diligence, discovery, motion practice, trial, and appeals. My cases often include co-pending, post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, and I lead those efforts as well.

What types of clients do you represent?

Arpita: My client base is very diverse and ranges from small startups to established, publicly traded companies in the areas of medical technologies, diagnostics, and high tech. 

John: My clients run the gamut in terms of size and technology, from small startups that recognize the value added of strong IP to large, established global players in the areas of small-molecule pharmaceuticals, biologics, biotechnology, genetically modified organisms, CRISPR, and diagnostics.

What types of cases/deals do you work on?

Arpita: A major focus of my practice is district court litigation and contested PTAB proceedings in the technology areas noted above. I represent both patentees and accused infringers in litigation and at the PTAB. I also leverage my technical background and litigation experiences to help startup companies build and manage their patents portfolios.

John: I work on contentious proceedings, typically in the district courts, the International Trade Commission, or the PTAB in the technology fields noted above. For instance, I have worked on AstraZeneca’s blockbuster drugs CRESTOR®, SAXAGLIPTIN®, and FARXIGA®; Ajinomoto’s feed-grade tryptophan produced by genetically modified organisms; Kaken Pharmaceutical’s drug JUBLIA®; and Nissei ASB’s mold tooling technology for making plastic packaging materials via injection stretch blow molding machines.

How did you choose this practice area?

Arpita: I have a B.S. in Electronic Engineering, M.S. in Bioengineering, and a Ph.D. in Biomedical Engineering, so patent law was an easy choice for me to apply my technical background. Within patent law, however, I prefer to have a mixed practice because I believe that my experiences with litigation and patent office practice complement each other and better prepare me to serve my clients.

John: I have a B.S. in Biochemistry and an M.S. in Biology with a focus on neuroscience, so practicing patent law in the life sciences area was always going to be a natural fit for me. The question then became whether I wanted a counseling practice, a litigation practice, or both. Personally, I was immediately drawn to the nature of a litigation practice, which incorporates many of the skills necessary to be a first-class counselor but tends to be more intensive and team based.

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

Arpita: On any given day, I could be studying a new technology and reviewing related publications, developing case strategy, drafting a brief, taking or defending a deposition, preparing for an upcoming hearing, or working with an expert on preparing a report/declaration. These are just a few examples of what I could be doing on a typical day. Every day is very different!

John: Ha—there is no such thing as a typical day. On any given day, I could be working on case strategy, dealing with discovery requests/responses, attending a meet-and-confer with opposing counsel, drafting a brief, taking or defending a deposition, preparing for a hearing, attending settlement negotiations, pitching for new work, or strategizing with a client on how to create freedom to operate or leverage our legal strategy to effectuate a business goal. That variety is what I absolutely love about my practice.

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

Arpita: If you aspire to be a patent litigator, your Civil Procedure, Evidence, and Trial Advocacy classes can be very helpful. Also, take as many patent law classes as you can, so that you understand the basics of patent law really well when you start as a first-year associate. Mock trials and moot court can also provide valuable stand-up experience.

John: Any class that requires you to think creatively, that gives you the opportunity to engage in adversarial exercises (bonus if it is on your feet), and that strengthens your persuasive writing will be useful. You’ll learn more substantive law in your first year of practice than anyone cares to admit, but creative thinking, advocacy, and persuasive writing are the fundamentals to a strong practice in any area.

What do you like best about your practice area?

Arpita: My practice area and versatile technical background allow me to work with a diverse range of clients in many different technology areas. I love learning about my client’s technology platform(s) and applying that knowledge to help my client assert or defend its IP or to provide strategic advice to manage and grow my client’s patent portfolio.

John: I love working with clients to achieve their business goals. I love working on complex, sophisticated matters that require thoughtfulness and creativity. I love making law. And I love working with the most talented professionals in the business.

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

Arpita: The junior attorneys on my teams typically help with conducting legal research, drafting memoranda that summarize substantive areas of law, drafting motions and briefs, helping prepare for and second chairing depositions, and managing discovery.

John: I want the lawyers on my teams to be invested in the project and getting the best result for our client. To that end, I give junior lawyers as many substantive opportunities as they can handle. That includes managing discovery, drafting motions and briefs, preparing for and maybe even taking depositions, and taking the lead on discovery disputes.

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

Arpita: Finnegan provides summer associates with real, hands-on experience. For those interested in prosecution and counseling work, you could be interacting with clients to learn their technology and then drafting patent application(s) or responding to actions taken by the Patent Office. You could also be doing legal research and drafting memoranda summarizing those results and even drafting portions of legal briefs. We also let summer associates observe depositions and court hearings, which provide valuable practice tips that you can use as a junior associate.

John: We try to give our summer associates an experience that mirrors what it’s like to be a junior associate. That means doing real, substantive work for an actual project. That can include performing legal research, drafting discovery, sitting in on depositions, or participating in a client pitch. We also throw in a number of social activities so we can all get to know each other better.

In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?

Arpita: The biggest change to my practice due to the pandemic has been virtual depositions and court hearings. I had to adapt very quickly to online platforms for participating in client meetings, prepping witnesses for depositions, taking and defending depositions, and attending court hearings and settlement conferences. The upside to everything being virtual is no travel!

John: The biggest effect on my practice was creating a home office and getting used to working from there. Thankfully, our firm was already using virtual platforms for meetings among various offices, so the transition was pretty seamless. From a substantive perspective, our litigation cases slowed down early in the year, but courts got used to operating virtually, and we are up and running now. Admittedly, virtually taking/defending depositions and participating in hearings is not ideal, but we are getting used to it.