The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Pauline M. Pelletier, Director—Trial & Appellate Practice Group;
Chase Hammond, Associate— Mechanical & Design Practice Group
Pauline M. Pelletier is a director in Sterne Kessler’s Trial & Appellate practice group. She is experienced in patent litigation before the federal courts and the ITC; post-grant trial and reexamination practice before the USPTO; and appeals before the U.S. Court of Appeals for the Federal Circuit, where she clerked prior to re-joining the firm. Pauline’s clients include leading companies in the life sciences, electronics, and automotive industries. She also counsels clients in emerging and regulated industries, including cannabinoid therapeutics. Pauline received her J.D. from the University of Maryland Francis King Carey School of Law and her M.S. and B.A. from The Johns Hopkins University.
Chase Hammond is an associate in Sterne Kessler’s Mechanical & Design practice group. His practice focuses on the preparation and prosecution of utility and design patent applications in the fields of materials science, mechanical engineering, and electrical engineering, and he has experience in post-grant proceedings. Chase has prepared invalidity opinions, performed patent landscape and freedom to operate analyses, and worked on due diligence investigations. He is also a former patent examiner at the USPTO. Chase earned his J.D. from George Mason University School of Law, and he holds a B.S. from Virginia Polytechnic Institute and State University.
Describe your practice area and what it entails.
Pauline: My practice involves significant amounts of written and oral advocacy, with a particular focus on patent litigation before district courts and federal agencies, including the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC). My cases are in a range of technology areas, from biotechnology and pharmaceuticals to consumer electronics and automotive technology. I also handle appeals to the Federal Circuit.
Chase: My practice includes drafting and filing new utility and design patent applications for clients, as well as prosecuting utility and design patent applications at the United States Patent & Trademark Office (USPTO). I provide strategic advice to clients on how to achieve effective patent protection for their inventions. In addition, I am involved in various other areas of patent law, including patent invalidity opinions, non-infringement opinions, freedom to operate searches, and inter parte review (IPR) proceedings.
What types of clients do you represent?
Pauline: I have represented Fortune 500 companies and sole inventors. I’ve handled a significant amount of patent litigation related to therapeutics (e.g., small-molecule drugs and large-molecule biologics). Recent work includes advising clients in cannabinoid therapeutics; the groundbreaking, Nobel Prize-winning gene-editing technology CRISPR-Cas9; and electric vehicle technology, including EV charging stations and lithium-ion batteries. I have been involved in cases relating to popular consumer products, such as the iPhone, safe flameless candle technology invented at Disney, and Invisalign.
Chase: I represent a variety of clients, including Apple, adidas, Pepsi, Corning, and Taylor Made Golf Company.
What types of cases/deals do you work on?
Pauline: I have litigated in various U.S. district courts. These actions typically involve allegations of patent infringement, although some have involved trade secret misappropriation or business tort claims. I also work frequently on challenges to patent validity before the USPTO called inter partes review proceedings, which are trial-like agency adjudications with limited discovery. I have handled patent interferences, re-examinations, and appeals from patent prosecution activities—both to the Federal Circuit and in district court in Section 145 actions. I also do Section 337 investigations before the International Trade Commission, which have broad discovery and offer injunctive relief by barring importation of products that infringe valid patent claims.
Chase: I represent my clients’ interests in front of the USPTO and negotiate with the personnel to secure effective patent protection for inventions. Specifically, I begin by working directly with inventors to fully capture and effectively describe their innovations and prepare their patent applications. The goal is to secure patents with claims that are valuable and enforceable.
How did you choose this practice area?
Pauline: I love patent law and have always focused my practice on areas where patent legal expertise is critical. Over the years, that has evolved. For example, in 2012 the America Invents Act (AIA) created the PTAB and inter partes review proceedings, and this fundamentally changed the patent enforcement and defense landscape. The PTAB has taken on increasing significance in the past five years, as district court actions are increasingly stayed pending review of the asserted patents by the PTAB. Having that expertise, both procedural and substantive, has been key to delivering great results for clients, whether with respect to challenging, asserting, or defending patents.
Chase: During my senior year as an undergraduate engineering student at Virginia Tech, I took an environmental law course as an elective. At the time, I only chose that course because it was a good fit for my schedule. However, shortly after beginning the course, I realized that I really enjoyed analyzing legal issues. To me, analyzing legal issues is very similar to analyzing technical issues. Both require applying a set of unique rules and variables to a problem to achieve a desired outcome. After finishing the environmental law course, I took an intellectual property law course the next semester, and I was hooked.
What is a typical day like and/or what are some common tasks you perform?
Pauline: The average day is mostly spent reading, writing, and being in meetings and on calls. I work on developing case theories; reviewing case law; reviewing documents and transcripts; writing briefs or motions; and preparing for hearings, arguments, and depositions. At all stages of a case, I spend significant amounts of time communicating with the client, joint defendants, and opposing counsel. When a case is in discovery, I travel and participate in depositions. When a case is in the dispositive motions or trial stage, I travel and prepare to be in court. For appellate work, I spend significant time researching the law, reviewing the record, and crafting arguments for the principal brief. Once the appeal has been calendared for oral argument, I keenly focus on preparing, including participating in mooting sessions.
Chase: It is tough to describe a “typical” day for me because many times, I end up working on something I did not expect to be working on that day. This makes this job exciting. In general, I spend my days reviewing USPTO office actions and prior art, drafting office action responses or patent applications, communicating with clients, and working with my assistants and team of paralegals to file documents at the USPTO. However, every day is different and brings its own set of challenges.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Pauline: I would recommend spending the time you have in a classroom to learn the substantive and procedural law as well as you can. Once you start practicing, much of the research you do will be very practical in nature, focused on a particular venue or a specific issue or fact pattern. Having a strong foundation on the basics of civil procedure, evidence, administrative law, commercial law, contract law, as well as patent law will serve you well in the long run. School is the best (if not the only) time to build that foundation. The theoretical framework for how law is practiced is vitally important and helps ensure that the theories you pursue can withstand scrutiny, both at the trial and at the appellate level.
Chase: I encourage young lawyers to take writing classes and constantly try to improve their writing skills. Effective writing is important when drafting legal documents, such as briefs or memos, and it is critical for effectively communicating with colleagues and clients.
What do you like best about your practice area?
Pauline: I like the complex and dynamic nature of the field as well as the focus on technology and innovation. I‘ve had the privilege over the years to work with clients on cases involving society-changing technology and many life-saving innovations. And while not every case involves cutting-edge or ground-breaking technology, all the cases I have worked on have presented complex and interesting technical or legal issues. Patent law is specialized, and for an area of law that has been around since the start of the country, it changes more often than you might expect. For example, the increasing role of federal agencies in the patent landscape has raised some interesting and novel administrative legal issues. It’s safe to say I have never been bored working in this field.
What are some typical tasks that a junior lawyer would perform in this practice area?
Chase: Junior lawyers often have the opportunity to jump right in on patent drafting and prosecution projects. A junior lawyer can expect to work directly with a supervising attorney to help draft and file new patent applications, draft and file office action responses, and manage other aspects of a patent application family.
What kinds of experience can summer associates gain in this practice area at your firm?
Pauline: At any given time, we have litigations pending in various patent-related venues, including in district courts, before the PTAB, and before the ITC. Summer associates have the unique opportunity to survey each type of case. Understanding the nuances of each venue, by observing their similarities and differences, can be a great way to get familiar with the practice of patent litigation, including how patent litigation works, why rights are enforced and challenged the way they are, and what practitioners and clients view as the strategic advantages and disadvantages of each venue. Each of these venues has a distinct feel (e.g., some have more discovery than others, some are before an agency as opposed to an Article III judge, some are limited in scope, some offer special remedies), and a summer position can be a good time to assess what does or does not suit you.
Chase: Summer associates can experience all facets of patent prosecution at my firm. They will have the opportunity to review office actions and learn how to draft responses to those office actions. They will also have the opportunity to participate on client calls and calls with the USPTO personnel. These opportunities provide summer associates with a glimpse into how patent prosecution works and how to strategically achieve client goals during prosecution. In addition, there are opportunities to participate in other projects, such as legal research and technical research. And, of course, there are really great events and activities to get to know each other and the firm on another level.