The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Martin Gomez, Partner—Technology Companies and Intellectual Property;
Naomi Birbach, Associate—Intellectual Property Litigation
Martin (“Marty”) Gomez is a partner in Goodwin’s Technology Companies and Intellectual Property groups, specializing in intellectual property matters. Mr. Gomez focuses his practice on advising technology and life sciences companies of all sizes (including startups), and their investors, in corporate and especially intellectual property matters throughout the business life cycle, including new company formation, IP protection, fundraising, strategic transactions, and exits. Mr. Gomez is also a registered patent attorney. His practice includes intellectual property rights counseling, procurement, and enforcement, with significant experience in strategic patent portfolio development, transactional IP diligence, IP licensing, and patent and trade secret litigation. Mr. Gomez also has special expertise with design patents, both in obtaining design patent protection for clients and in evaluating design patent portfolios in the transactional and litigation contexts.
Naomi Birbach is an associate in Goodwin’s IP Litigation group. She joined the firm in 2013. Ms. Birbach focuses her practice on intellectual property litigation in U.S. district courts and before the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in post-grant proceedings such as inter partes reviews (IPRs). She has worked on cases involving pharmaceuticals, electronic devices, and display systems. Ms. Birbach has particular expertise in generic drug litigation under the Hatch-Waxman Act.
Describe your practice area and what it entails.
Marty: My practice includes assisting technology and life sciences companies of all sizes—startup through public
companies—with the IP and patent matters that arise through-
out their corporate lives. This includes counseling regarding IP strategy and helping my clients think about and identify their IP and then selecting the appropriate legal tools to protect it. When appropriate, I assist with patent portfolio architecting and development and prosecution matters. Once the IP assets are identified and protected, I help my clients monetize these assets, either by explaining the value to investors/partners or through other strategic transactions, such as licensing agreements. I also help investors identify and value their investments, and I help my clients manage risk by evaluating third-party IP assets and rendering freedom-to-operate opinions. When necessary, I advise clients regarding IP enforcement strategies such as litigation.
Naomi: As part of Goodwin’s Intellectual Property Litigation group, I focus on patent litigation before federal district courts, the Patent Trial and Appeal Board, and the International Trade Commission. I also work on trade secret, employee mobility, copyright, and trademark litigation matters as well as arbitrations and breach of contract actions involving intellectual property. I handle cases in all stages of litigation, from pre-suit investigation through trial and appeal and including pre-litigation counseling and advice.
What types of clients do you represent?
Marty: My clients are technology and life sciences companies—ranging from small startups to large public corporations/universities—and their investors. I represent companies focused in a wide range of technical disciplines, from medical devices to robotics to software, and everything in between.
Naomi: I work with a mix of pharmaceutical and tech clients, ranging from smaller startup companies to large corporations.
What types of cases/deals do you work on?
Marty: I work on matters that involve protecting a client’s IP assets or explaining (company side) or determining (investor side) the value of those assets as part of a corporate transaction. Recent matters include advising (i) Ori, developer of robotic furniture to improve living spaces, in identifying and drafting patent applications; (ii) Cold Chain Technologies, developer of smart thermal packaging solutions for medical supply shipment, to understand and mitigate risk related to third-party patent assets; and (iii) Bain Capital Life Sciences in its investment in several private medical device companies.
Naomi: My practice focuses on patent litigation in a variety of district courts across the country. I represent both patent holders who are asserting their patents against accused infringers and accused infringers defending against infringement allegations. I also work on parallel inter partes review proceedings before the U.S. Patent and Trademark Office.
How did you choose this practice area?
Marty: I was drawn to IP law because it is a wonderful combination of legal and technical work. I love being a lawyer and counseling my clients on the issues they face, but I am also fortunate that I still get to engage with cutting-edge technology on a daily basis. However, when I graduated from law school, I really thought I wanted to be an IP litigator. It wasn’t until I had been practicing for a few years that I realized I prefer corporate transactions to courtroom litigations. Goodwin gave me the flexibility to explore different possible career paths until I found the practice that suited me best.
Naomi: I majored in Chemistry in undergrad but always wanted to be a lawyer. After college, I was lucky to get a job working as a Patent Examiner at the U.S. Patent and Trademark Office. I found the work very interesting but also a bit solitary and had a feeling that I would prefer the team-based approach of patent litigation more than patent prosecution. After two years at the Patent Office, I left for law school with the goal of becoming a patent litigator and haven’t looked back.
What is a typical day like and/or what are some common tasks you perform?
Marty: One of the best parts about my practice is working with a wide range of companies (both size and technology) on various matters depending on their IP needs; so, there really isn’t a typical day (which is part of what I like about my job!). To the extent there is a typical day, however, it’s changed over the years. When I was a junior associate, much of my day was spent preparing substantive work product (patent applications, diligence memos, etc.)—that work was crucial to developing my legal skills and knowledge. As a partner, I spend more of my time talking with clients about the issues they’re facing and enacting strategies to address those issues. Also, in non-COVID times, I spent at least a few evenings a week attending industry events, meeting and networking with startup companies, to build my network and better understand the industries and environments my clients operate in.
Naomi: I love that there is no typical day as a patent litigator. Tasks are largely dependent on the stage of a particular case. For example, early in a case, I might be working on developing non-infringement or invalidity strategies, interviewing potential expert candidates, and drafting motions to dismiss. As a case progresses through fact and expert discovery, I might be drafting claim construction briefing or arguing at a claim construction hearing, taking or defending fact and expert witness depositions, or drafting summary judgment briefs. As a case gets closer to trial, I might be preparing witnesses to testify or working on cross examination outlines. These are just a few examples—there is a wide variety in the type of work I do on a daily basis, which keeps things exciting. I also spend time on firm activities like mentoring and training more-junior associates and recruiting summer associate and lateral candidates.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Marty: From a legal perspective, it is important to understand the different types of IP as well as how to draft and negotiate contracts. For the non-patent parts, a technical education is not required, though it helps if technology interests you. For patent work, a technical background is generally needed, but keep in mind that very rarely do patent attorneys understand the technology as well as their clients; it’s more important to have enough technical background to ask the right questions and then describe or explain the technology to others. One skill that is often neglected, but is critical to success in any corporate legal job, is business acumen. Ultimately, my clients want me to help them solve business problems, and I need to understand their business and industry to tailor the advice appropriately. I recommend starting with reading a daily tech newsletter or listening to a tech podcast.
Naomi: Goodwin offers both formal and informal subject matter and skills training, so hardworking associates should be able to succeed in our practice group even if they did not take specific courses in law school. That said, I would recommend taking one or more patent law classes and Evidence. I would also recommend taking any experiential trial or pre-trial skills classes. Strong writing skills are also important in any litigation practice.
What misconceptions exist about your practice area?
Marty: One misconception is that patent attorneys are nerds and shy introverts. Well, maybe the nerd part is true; but the best part of my job is talking to my clients and networking with potential new clients—and that requires me to be outgoing.
Naomi: I think the biggest misconception is that you need a technical or science background to be an IP litigator. As discussed below, a science background is not necessary at Goodwin as long as you are willing to work hard.
What are some typical tasks that a junior lawyer would perform in this practice area?
Marty: It depends on the type of IP practice. For patent work, a junior associate meets with inventors to take invention disclosures, draft patent applications, and negotiate with the patent office examiners to obtain patents. Other IP-focused junior attorneys review IP-related agreements as part of deal diligence and draft and negotiate portions of (and eventually entire) licensing and other IP transactional documents.
Naomi: Junior associates are assigned to litigation teams and can expect early substantive experience. While typical junior-level tasks include things like drafting discovery requests and responses, completing legal research assignments, and preparing deposition outlines, juniors can quickly get more advanced-level work if they show that they are capable. By the end of my second year at Goodwin, I had taken my first deposition and was regularly drafting sections of briefs.
What are some typical career paths for lawyers in this practice area?
Marty: People come to IP law in many different ways. Some, like me, go straight to law school after undergrad. Others spend several years working as engineers in the industry and then return to law school and begin second careers as patent attorneys. And others spend several years working as science advisors in law firms and attend law school at night before becoming lawyers.
Naomi: Most IP litigators stay at firms or move to in-house counsel positions at pharmaceutical or technology companies.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
Marty: Depending on the type of IP law you want to practice, a technical or science degree may not be required at all; however, it helps if you demonstrate an interest in technology or science. For some practices, equally important is an understanding of business and how innovative technology or science can allow a company to achieve its business objectives.
Naomi: Don’t be afraid of the science. We have numerous associates and partners in the IP Litigation group at Goodwin who do not have technical or science backgrounds. And even those that do have science backgrounds work on cases involving complex technologies unrelated to their training. For example, I have an undergraduate Chemistry degree but have worked on cases involving technologies like LED displays and ground fault circuit interrupters. What is necessary to succeed is a willingness to dig in and become an expert on the technologies in the case regardless of your background.