The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Tiffany Cunningham and Rajiv P. Sarathy, Partners—Intellectual Property
Tiffany Cunningham serves as trial and appellate counsel for Fortune 500 companies, small enterprises, and individuals in complex patent and trade secret disputes. Her experience includes technologies related to the chemical and pharmaceutical disciplines, biotechnology, computer science, and mechanical engineering. She is a registered patent attorney before the United States Patent and Trademark Office and a partner in the firm’s patent litigation practice. Tiffany has extensive experience in dispute resolution venues nationwide, including numerous district courts and the Federal Circuit. Tiffany has successfully represented clients through all phases of litigation, including trial and appeal. A graduate of Harvard Law School, Tiffany earned a Bachelor of Science in chemical engineering from the Massachusetts Institute of Technology. Prior to joining the firm, Tiffany was a clerk for Judge Dyk of the U.S. Court of Appeals for the Federal Circuit. She has been recognized on the 2016-2018 Illinois Super Lawyers lists, 2015-2016 Emerging Lawyers lists by Leading Lawyers, and the 2013-2015 Illinois Rising Stars lists.
Rajiv Sarathy is a patent attorney who applies his 13 years of software industry experience—including 9 years as a software development engineer and manager at Microsoft Corporation—and his MBA education to counsel companies on intellectual property (IP) matters. Although Rajiv is a software patent attorney based in Seattle, WA, he counsels clients throughout the United States and abroad. Rajiv focuses his practice on patent procurement, infringement and validity analysis, IP transfers, IP licensing, IP counseling, and IP dispute management. Rajiv has also assisted clients with inter partes reviews, reexaminations, Section 337 actions at the International Trade Commission (ITC), and other enforcement activities and has assisted companies in analyzing and transferring large portfolios of patent assets. Rajiv has prosecuted, analyzed, or litigated patents in many computer hardware and software technology areas.
Please provide an overview of what, substantively, your practice area entails.
Tiffany: I am an intellectual property litigator who primarily represents companies in complex patent or trade secret litigation. I am typically called in when there is a dispute in district court about rights to or use of an invention.
Rajiv: My practice involves helping inventors and their employers protect their intellectual property—specifically patent rights—around the world. More specifically, I help software companies protect their computer hardware and software inventions. This can involve helping them with patent strategy, filing and prosecuting patent applications, and analyzing competitors’ patents, for example, when a competitor accuses my client of infringing a patent.
What types of clients do you represent?
Tiffany: My clients span a variety of technology companies, including companies that specialize in the chemical, biotech, pharmaceutical, computer science, and mechanical engineering disciplines. Over the years, I have also represented some small companies and individuals.
Rajiv: I have helped individual inventors, startups, medium-sized companies, and Fortune 100 companies. I especially enjoy working with software companies that continue to innovate and build world class technologies that affect millions of lives daily.
What types of deals and/or cases do you work on?
Tiffany: I focus most of my practice on patent litigation work rather than patent prosecution work. In other words, I do not typically assist people in obtaining a patent. However, after a patent has issued, I will work on litigation between the parties about the patent in dispute. The subject matter of my cases ranges from high-tech software cases to pharmaceutical compositions to fuel injectors.
Rajiv: I help clients protect innovations that they consider important to their business or that of their industry. These can be very simple inventions or very complicated inventions. In both cases, they may provide a tremendous amount of value.
How did you decide to practice in your area?
Tiffany: I studied chemical engineering in college. I enjoyed the theoretical analysis of my major, but ultimately decided not to be a full-time engineer after I graduated. I looked for a career that allowed me to combine my technical skill set
with my love for reading and writing. Patent litigation was a natural fit.
Rajiv: I wanted to find a way of combining my passion for technology with my appreciation for business and my newfound legal skills. I spoke with several people at various firms and quickly concluded that the patent practice was a natural fit for me.
What is a typical day or week like in your practice area?
Tiffany: My practice is diverse and varies a lot from day to day. On any given day, I may be on client calls or meeting with clients, preparing briefs or getting ready for court.
Rajiv: I typically will draft patent applications, draft responses to communications (called “office actions”) from U.S. Patent Examiners, or work with inventors and their employers on patent strategy. Some weeks, I may also review other companies’ patents that are being asserted against my clients. Most weeks, I am also helping associates at our firm to hone their patent practice, through mentoring and supervising their work product.
What is the best thing about your practice area?
Tiffany: In light of the rapid development of technology over the years, there is always something new and exciting to learn. Additionally, each case presents unique technical and/or legal issues. In other words, it is never boring.
Rajiv: Every week I work with very smart and talented engineers who work at some of the most innovative companies we read about in news sources or whose products we use daily. Although I’m no longer writing software code that affects millions of lives, I help protect inventions that do.
What is the most challenging aspect of your practice area?
Tiffany: One of the most challenging aspects of my practice is explaining complex technology in an easy-to-understand fashion to courts or juries.
Rajiv: It can be daunting to stay on top of both legal and technological changes in the industry. Inventors expect their patent attorneys to understand their technology. When the technology evolves as rapidly as it does in the computer software and hardware industry, it is a constant challenge to ensure your knowledge has not gone stale, which could result in a loss of credibility with inventors.
What training, classes, experience, or skills development would you recommend to someone hoping to enter your practice area?
Tiffany: I recommend taking as many IP courses as you can to confirm it is the subject that you are passionate about. A course in trial advocacy will also help hone your litigation skills.
Rajiv: In addition to attending CLEs and reviewing Federal Circuit decisions, I also recommend reading technology journals or online sources. To people who have worked in the software industry, I recommend trying to work on a new project every year that challenges them to learn new platforms or techniques. For example, last year I wrote software and designed hardware so that I could keep up with changes in newer software programming languages, social networking application program interfaces, and embedded systems developer platforms.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
Tiffany: One of the biggest misconceptions is that only people with technical degrees practice in the IP field. Over the years, I have worked with attorneys with a variety of backgrounds. The common thread is that each attorney has an interest in technology and enjoys litigating these types of cases.
Rajiv: I’m not aware of any misconceptions. I think people who become patent lawyers generally know what they are getting into. It is very challenging and rewarding for lawyers who have an appreciation for engineering or the sciences.
What is unique about your practice area at your firm?
Tiffany: Perkins Coie LLP has a sophisticated client base. Its client base naturally complements my IP practice, and I have enjoyed working with our key institutional clients.
Rajiv: I work with a great group of engineers and scientists. My firm recognizes that a solid scientific or technological foundation is just as important as good lawyering skills in this area of the law, therefore all of us have strong technological backgrounds. That can be different from other practice areas where only a legal degree and good lawyering may be required.
What activities do you enjoy when you are not in the office, and how do you make time for them?
Tiffany: Like anyone with a full-time job, time management is key. When I am not working, I enjoy reading, exercising, and spending time with family and friends.
Rajiv: Outside of the office, I’m a photographer and pilot. Although I’ve let my flying skills lapse, I still take out my camera whenever I can to take photos of my kids, my travels, or any other subject that may present itself. I’ve been taking photos since my pre-teen years and enjoy it tremendously.