The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Mark Metzke, Partner; and David Grant, Associate—Intellectual Property
Mark Metzke is a partner in the Knobbe Martens Washington DC, office. Mark’s primary focus is in patent prosecution and client practice, where he advises clients on patentability, prosecution strategies, strategic transactions and portfolio management, complex portfolio structuring, validity and infringement analyses, and pre-litigation strategy. Mark represents clients in a wide variety of technological spaces, including pharmaceuticals, medical devices, food compositions, and kitchen appliances. Prior to joining the firm, Mark earned a Ph.D. in Organic Chemistry from UC Irvine in 2006 and a J.D. from the UCLA School of Law in 2011.
David Grant is an associate at Knobbe Martens in its Washington, DC, office. David represents clients in many aspects of intellectual property, with a focus on patent prosecution and patent analysis in the medical device, software, electronics, and information technology areas. David earned his J.D. from the University of North Carolina School of Law, where he was on the board of the intellectual property association. Prior to law school, David worked as an engineering co-op for a Fortune 250 power generation and supply company. He obtained a B.S. in Electrical Engineering from North Carolina State University. David joined Knobbe in 2016.
Please provide an overview of what, substantively, your practice area entails.
Mark: I primarily focus on patent portfolio development and management. A big part of my practice involves interacting with my clients on a regular, if not daily, basis. I strive to understand every facet of their products and business goals. This knowledge translates into a deep understanding of a client’s immediate goals as well as their big picture, future strategies.
David: I help clients obtain patent protection on various technologies including those related to non-invasive patient monitoring, medical device guidance, prosthetics, healthcare information technology, consumer electronics, and virtual, augmented, and mixed reality.
What types of clients do you represent?
Mark: One of the benefits of working at Knobbe is the ability to develop a practice that fits your skill set and interests. I have always enjoyed learning about varied technologies and my practice reflects that interest. I represent a wide variety of clients in diverse technological fields. For instance, I represent small molecule pharma clients, med device clients, food product clients, and mechanical device clients. One current client is Z-Medica, LLC, which prepares, among other things, hemostatic devices used to stop blood flow from hemorrhaging wounds. Z-Medica’s technologies are used by healthcare providers and are standard issue for many law enforcement agencies and the U.S. military. Another current client is simplehuman, LLC. You may have seen simplehuman’s appliances and personal grooming products on the shelves of fine retail store across the country.
David: I represent a variety of large and small companies in technologies that integrate hardware and software. My clients develop technologies in areas such as non-invasive medical diagnostics, medical device guidance, prosthetics, and virtual, augmented, and mixed reality technology. For example, I currently represent one of Knobbe’s longstanding clients, Masimo. Masimo is a global medical technology company that develops and manufactures innovative noninvasive patient monitoring technologies, including medical devices and a wide array of sensors.
What types of cases/deals do you work on?
Mark: I primarily prosecute patent applications on behalf of my clients. Prosecution involves developing a patent strategy with the client and then executing that strategy to turn a patent application into an issued patent or a portfolio of patents. My practice involves prosecution in the US and various foreign jurisdictions. I also structure and draft agreements for complex IP arrangements and licensing related to patents and other IP.
David: My practice focuses primarily on obtaining patent protection for my clients, which involves preparing and prosecuting a wide range of often highly technical patent applications worldwide.
How did you decide to practice in your area?
Mark: Through my Ph.D. work and my work as a scientist thereafter, I learned how patent lawyers help scientists bring technologies to the public. It was through interacting with IP lawyers that I learned that I could remain active in science while also working on a broader array of projects. I knew that helping those on the forefront of science get protection for their technologies was something that I would enjoy.
David: I’ve always loved math and science. When I was a junior in college studying electrical engineering, I spoke with my aunt, who is a patent lawyer, about the prospects of a career in IP law. Our conversation got me hooked on the idea of working with innovative technology on a day-to-day basis. I applied to law school the very next year and haven’t looked back since.
What is a typical day or week like in your practice area?
Mark: On a typical day, I work on multiple projects. My day can consist of drafting patent applications, claims for new applications, office action responses, and instructions for my numerous foreign associates in non-US jurisdictions. I also regularly communicate with my clients—collaborating on optimum strategies for protecting their IP, including strategizing on claim scope, responses to various patent offices, and designing IP agreements.
David: My practice is constantly evolving so my day-to-day activities depend largely on the stage of a particular patent application. For example, my day can include any combination of meeting with inventors to obtain disclosures for patent applications, drafting patent applications, drafting claims, developing strategy for and drafting responses to office actions, or interviewing cases with patent examiners.
What is the best thing about your practice area?
Mark: There are two things that shine through as being the “best” parts of my practice – though I really enjoy all of what I do. The first thing is the breadth of technologies I work with. I get to learn about new and exciting inventions on a daily basis. The second thing is my co-workers. I am surrounded by IP and technology experts who share the common goal of getting the best result for the client. My co-workers make it a joy to come to the office every day.
David: I love technology and figuring out how things work. The makeup of our firm provides a unique culture that allows me to develop a practice area that corresponds to my talents and interests. I love what I do because I get to focus my practice area on technologies that really interest me.
What is the most challenging aspect of your practice area?
Mark: Staying current with the constantly evolving legal landscape. In today’s environment, patent law is constantly changing, sometimes in surprising ways. Those changes can result in “mid-stream” shifts to IP strategy.
David: The laws in the U.S. constantly evolve, and it can be challenging to stay up to date. As a firm, Knobbe does an incredible job of educating its attorneys, particularly emphasizing and summarizing recent decisions by the Federal Circuit Court of Appeals and the Patent Trial and Appeal Board. Although I’ve found it challenging to constantly absorb the new information, my general curiosity and interest in the law helps me overcome these challenges and stay well informed.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Mark: A technical degree in undergrad is important. If you already have a technical degree and are in law school, I recommend studying for the patent bar and taking any available patent classes. Studying for the patent bar helps you learn the foundational rules of patent prosecution. Patent law classes help you learn the policy justifications for many of the rules you work with during the prosecution of a patent application.
David: For those interested in patent law, I recommend taking classes to further develop your communication skills. Whether you are interested in preparing and prosecuting patent applications or litigating patents in adversarial settings, strong written and oral communication skills are key to a successful career as a patent attorney.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
Mark: A common misconception is that intellectual property attorneys are not as social as those in other areas of law. This isn’t true at all. I find that, because most people in patent law come from backgrounds where collaborative work is required (e.g., research in science), patent attorneys go out of their way to interact with their colleagues, bouncing ideas off of one another in a very productive way.
David: There is a tendency to think of intellectual property as operating in a vacuum. But that’s just not the case. IP is closely tied to many fields of law. For example, complex contractual issues can arise in assignment or licensing agreements, and a company’s patent portfolio is often one of the most valuable assets during merger or acquisition talks. In fact, it’s hard for me to think of any area of law that doesn’t intersect with IP law.
What is unique about your practice area at your firm, and how has it evolved since you have been at the firm?
Mark: My practice is unique in its breadth. While primarily a prosecutor, a lot of my work during my early career was in litigation and prosecution. As noted above, I have also molded my practice to overlap with a wide variety of technologies. Regarding the firm, it is unique in that attorneys are encouraged to develop their practices based on what they enjoy most. My practice reflects our firm’s philosophy that a happy attorney is a productive one.
David: Within the broad disciplines of each practice area, the variation in work can depend largely on your firm’s clients. The makeup of our firm allows me to develop my practice such that it corresponds to my talents and interests. Although many of our attorneys may have an electrical engineering background, my practice area is unique because it blends clients and subject matter based on what I enjoy.
What activities do you enjoy when you are not in the office, and how do you make time for them?
Mark: Although there are busy times, I have a lot more personal time than most of my peers at other firms. I spend most of my free time with my wife and young daughter doing outdoor activities.
David: I enjoy playing basketball and hiking with friends. I also love traveling, spending time with family, and trying out new restaurants. Although some days are busier than others, working at Knobbe gives me the opportunity to maintain a healthy work-life balance and continue to participate in the activities I enjoy.