The following is an excerpt from Practice Perspectives: Vault’s Guide to Legal Practice Areas.
We invited the top ten firms in each practice area, as ranked by over 17,000 associates from across the country in Vault’s annual Associate Survey, to be featured in this guide. MoFo ranks 3rd in Intellectual Property.
Anita Choi, Associate—Patent; Christopher Wiener, Associate—IP Litigation
Anita Choi is an associate in Morrison & Foerster’s IP Group. Her patent practice is focused on the preparation and prosecution of U.S. and foreign patent applications, patent portfolio analyses and management, patent due diligence, and freedom-to-operate analyses. Ms. Choi is co-founder of the firm’s biofuels and biochemicals practice. Ms. Choi received her J.D. from the University of Pennsylvania Law School, her M.B.A. from the Wharton School of Business, and her B.Sc. in Chemistry from the California Institute of Technology.
Christopher Wiener is an associate in Morrison & Foerster’s IP Group. His practice focuses on patent litigation. His cases have involved technologies such as optical character recognition, smartphones, email platforms, and networking equipment. Mr. Wiener has been a member of five trial teams and questioned witnesses at trial. Mr. Wiener earned his J.D. from UC Hastings College of the Law and his B.A. in International Relations from Boston University.
Please provide an overview of what, substantively, your practice area entails.
Anita: As a patent associate, I prepare and prosecute patent applications, and manage a client’s U.S. and international patent portfolio. I also perform IP due diligence, both on the investor and company side. I also provide support to our litigation team, including technology support and patent strategy advice, as well as to corporate and transactional colleagues in terms of performing patent diligence for M&A deals.
Chris: My patent litigation practice involves both offensive patent assertion, including pre-trial investigations, and more commonly serving as defense counsel in competitor and non-practicing entity suits. My practice focuses on software and hardware technology, although the firm also has an active life sciences practice. I also support our transactions group by performing diligence of any active litigation matters affecting their deals.
What types of clients do you represent?
Anita: In our patent prosecution practice, we represent large multi-national corporations, as well as start-up companies and universities. We also represent investors looking to perform due diligence on targets. We work with companies in the Bay Area and other parts of the United States, as well as around the world.
Chris: Our patent litigation clients run the gamut from the largest technology companies in the Bay Area like VMware, to innovative biotechnology companies (large and small), to startups. With our presence in Northern California, we often represent local companies in litigation across the United States and the world.
What types of deals and/or cases do you work on?
Anita: As patent associates, part of our time is spent drafting patent applications and providing advice to the firm’s clients about developing an IP strategy. As part of the process of prosecuting patent applications, we interact with the U.S. Patent and Trademark Office. At times, we are drafting responses to communications issued by the USPTO. Other times, we may be conducting interviews with the patent examiners or arguing before the patent appeals board.
Chris: Patent litigation, whether in California, Texas, or elsewhere, has increasingly focused on early determinations of patentability under the Supreme Court’s evolving jurisprudence. My particular specialization has been on patent damages. Changes to the federal rules regarding discovery proportionality and the increasing rigor placed on damages analyses have made this an area ripe for narrowing our client’s exposure.
How did you decide to practice in your area?
Anita: With a background in chemistry, I wanted a career at the nexus of science and law. I wanted to pursue a career where I could still be at the forefront of innovative technologies. On a daily basis, I get to interact with scientists and engineers to discuss new technologies in developing their companies’ patent portfolios.
Chris: I am a liberal arts major who has always loved technology—and arguing. Patent litigation offers a great combination of litigation experience, with our cases often going deeper into facts and discovery than other practices at the firm, and the chance to dig deep into a new technology or field with every case. Being able to talk with our clients’ engineers at the forefront of technological innovation was a real draw.
What is a typical day or week like in your practice area?
Every day and every week in our work as a patent prosecutor or a patent litigator is different.
Anita: Some days as a patent associate find me at my desk drafting responses to the Patent and Trademark Office, or drafting a new patent application. Other days, I may be out of the office visiting a client, gaining first-hand knowledge and exposure to new technologies and discussing patent strategy. I also take time to speak at various events about developing IP strategies, particularly for start-up companies.
Chris: Our patent litigation matters tend to spend more time in discovery—more depositions, more documents, and more disputes—than other practices at the firm. We also work closely with expert witnesses, in my case particularly damages experts, from a very early stage. Trials are the most stressful, and most rewarding, part of a case.
What is the best thing about your practice area?
Every case (whether patent prosecution or patent litigation) involves a different technology.
Anita: My favorite part about patent prosecution is the diversity of technologies and legal issues we come across on a daily basis.
Chris: In patent litigation, the technology may often be directed to a very particular piece of some software or hardware component. My favorite part of a case is when we really begin to dig in with our experts and client engineers to learn how the technology works. Our clients hire some of the best and brightest. Getting to learn just a small piece of what they know makes each case rewarding.
What is the most challenging aspect of your practice area?
Anita: In our patent practice, we interact with a large number of clients. Balancing clients’ requests can sometimes be challenging. Good time management skills are important in our practice, as we strive to provide the best service to each client.
Chris: The rise of electronic discovery has placed enormous burdens on our clients, and on our practice. The volume of data has exploded in the past several years and the number of disputes over collection, review, and production of documents has risen accordingly. While discovery may be at times tedious, I have seen firsthand how seemingly minor decisions early in a case can radically alter (or limit) a trial months or years down the line.
What training, classes, experience, or skills development would you recommend to someone hoping to enter your practice area?
Anita: There is a steep learning curve when it comes to patent prosecution. Much of the learning takes place on the job. Getting exposure to basic patent concepts can help when someone new starts in patent prosecution. I recommend taking the patent classes offered, as well as any patent- or IP-related clinics to get practical exposure to the type of work we do. Morrison & Foerster’s patent summer associate program provides practical training and experience that will be important for success as a first-year patent associate.
Chris: Jump on any opportunity you can get to practice public speaking. As litigators, we speak and write for a living. At a large law firm, writing experience tends to be easy to get, but the same is less so when it comes to speaking opportunities. Learn as much as you can about your clients’ technology (even if it means learning basic programming). You will never know as much as the engineers, but having a basic foundation in the field is critical to winning the case.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
Anita: As a patent associate, I read more scientific papers now than I ever did in school or as a chemist working in the pharmaceutical industry. Unlike litigation, our work requires a deep understanding of the science and engineering. I spend as much time diving into the details of the technology as I do drafting persuasive arguments or counseling clients on general IP strategy.
Chris: Everyone thinks you need a science degree to be a patent litigator. At Morrison & Foerster, many of our patent litigators (me included) come from a liberal arts background. The judge and jury are unlikely to deeply understand the technology at issue. If you can bring a similar outsider’s perspective to the table, with a healthy dose of analogizing, you can make a real contribution to explaining your client’s case in a way anyone can understand.
What is unique about your practice area at your firm?
Anita: Our firm’s patent prosecution group has grown significantly over the past few years, both in terms of the number of clients and also the depth of relationships with existing clients. With an increase in the number of clients, we get increased exposure to different technology areas. With deeper relationships, we also get to work on some complex and interesting issues that may arise from managing a client’s patent portfolio, and also come across issues that intersect with our clients’ business and/or litigation strategies.
Chris: Our firm’s patent litigation group works up every case from the very beginning as if it is going to trial. More often than at many other firms, we end up before a jury. Obviously most cases will still settle, but an early eye toward trial themes can dramatically change the types of discovery and motion practice you engage in. While I have been at the firm, our trial practice in patent litigation has only expanded.
What activities do you enjoy when you are not in the office, and how do you make time for them?
Finding time outside the office to recharge is important. You have to defend those pockets of downtime.
Anita: I’m an avid cook and artisan bread baker, who also enjoys running, cycling, and yoga.
Chris: I’m a homebrewer and I enjoy gardening (which comes in handy when growing my own hops). I am often busy, but I really try to savor the quieter times when caseloads are lower.