The following is an excerpt from Practice Perspectives: Vault’s Guide to Legal Practice Areas.
Shannon Lam, Partner
Shannon Lam is a partner in Knobbe Martens’ Orange County office. She advises individuals, startups, and major corporations on U.S. and foreign patent portfolio management, competitive landscape analysis, and USPTO post-grant proceedings in the medical device, food/beverage, and consumer products industries. Experience in both patent prosecution and post-grant proceedings has given Shannon honed insight into why patents are issued or revoked by the USPTO. Shannon received her J.D. from University of Texas School of Law and her B.S. in Biomedical Engineering from University of Texas at Austin.
Describe your practice area and what it entails.
My practice primarily focuses on global patent portfolio management, but also includes inter partes review proceedings and litigation. Patent portfolio management includes U.S. and foreign prosecution, competitive landscape analysis, opinion letters, due diligence, and more. Understanding these different facets of patent law translates into better patent strategies for our clients.
What types of clients do you represent?
With a background in biomedical engineering, I represent both large and small clients in the medical device space. For example, our clients include medical device companies making ophthalmic, cardiovascular, respiratory, and orthopedic devices. However, one of the benefits of working at Knobbe is that I am not limited to clients in my technical field. I am a foodie at heart and love working with our clients in the food and beverage industry.
What types of cases/deals do you work on?
My caseload depends largely on the needs of our clients. For several years, I represented Claret Medical, Inc., a company developing a cerebral embolic protection system. Early in my career, I prosecuted patent applications on behalf of Claret in its early stages of development. I also helped Claret with several diligence projects, including its recent acquisition by Boston Scientific Corporation.
My practice also includes understanding and executing complex litigation strategies. For instance, I represented our client Fisher & Paykel Healthcare Limited in several IPR proceedings. Fisher & Paykel Healthcare offers a broad range of products and systems for use in respiratory and acute care.
How did you choose this practice area?
During college, I was fortunate to work for Apollo Endosurgery as an intellectual property intern. At the time, Apollo was a small medical device startup, but has grown significantly over the years. I was excited to take invention disclosures from inventors and watch the company grow with all its new ideas. Through this experience, I developed a passion for patent law and helping companies reach their full potential.
What is a typical day like and/or what are some common tasks you perform?
On a typical day, I work on several prosecution and litigation projects. I regularly interact with clients to understand their IP and business goals, so I can tailor patent strategies to their specific needs. Based on these strategies, I strive to obtain valuable patents around the world. Depending on the stage of proceedings, I also spend my days working on inter partes review and litigation cases. This might include developing noninfringement and invalidity positions and drafting
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
I recommend coursework and/or internships that help you understand how intellectual property law fits into the real world. For example, many universities offer cross-disciplinary courses among the law school, business school, and/or engineering school to give students an opportunity to understand how these fields are interrelated. University tech transfer offices and local incubators are other ways to gain a real-world understanding of intellectual property law.
What do you like best about your practice area?
Every day is different. On any given day, I work on different types of projects for different clients. I constantly get to learn about new and exciting inventions and challenge myself to come up with creative legal strategies.
What misconceptions exist about your practice area?
A common misconception is that intellectual property lawyers are stuck behind their computers. This isn’t true at all. I regularly meet with clients to understand their product development, attend conferences to learn about the industry, and visit the patent office to interact face-to-face with examiners and attend hearings.
What kinds of experience can summer associates gain in this practice area at your firm?
Our summer associates get hands-on experience drafting patent claims and office action responses, evaluating competitor patents, preparing clients for diligence, and more. When possible, summer associates can attend client meetings, depositions, and hearings.
How is practicing intellectual property in a boutique different from practicing in a large law firm?
For both prosecution and litigation, practicing law at an intellectual property boutique gives you a deeper understanding of all aspects of intellectual property law. We can better serve our clients by drawing from the experiences of hundreds of attorneys who practice intellectual property day in and day out.