The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Christina M. Licursi, Shareholder—Trademark and Copyright, and Anant Saraswat, Associate—Post-Grant Proceedings
Christina Licursi focuses her practice on trademark prosecution and litigation, including representing clients before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) and in federal courts across the country. Within her counseling practice, Christina advises clients and international associates on branding strategies and understanding the business and legal risks associated with the adoption, use, and registration of trademarks. Her clients cover a variety of industries, including biotechnology, food and beverage, clothing, medical equipment, and software and telecommunications. In addition to trademark matters, Christina handles various copyright issues, domain name portfolio management and related disputes, and social media and internet matters.
Anant Saraswat represents companies at the Patent Trial and Appeal Board, in federal court, and at the International Trade Commission in intellectual property matters involving technologies such as automotive components, light emitting diodes, medical devices, wireless communications, semiconductor fabrication, and computer architecture. Anant has represented both petitioners and patent holders in inter partes review proceedings. Anant also has experience with numerous aspects of intellectual property litigation, including taking and defending depositions, drafting and arguing motions, Markman briefing and argument, preparing witnesses for trial, and writing appeal briefs. Anant also has an active pro bono practice.
Describe your practice area and what it entails.
Christina: Within my counseling practice, I advise clients and foreign law firms on branding strategies and understanding the business and legal risks associated with the adoption, use, and registration of trademarks. In addition to counseling, I also handle a wide range of enforcement-related issues, including trademark disputes before the Trademark Trial and Appeal Board, domain name disputes, targeted cease-and-desist campaigns, and the coordinating of global enforcement efforts through Customs.
Anant: My practice concentrates primarily on post-grant proceedings such as inter partes review (IPR). These are proceedings before the Patent Trial and Appeal Board (PTAB), which is part of the U.S. Patent Office, in which the validity of a patent is challenged. I represent both petitioners who are trying to invalidate patents, as well as patent owners who are trying to defend them. I also practice IP litigation in federal courts, which involves some the same validity issues as IPRs but also requires analysis of infringement/non-infringement and damages.
What types of clients do you represent?
Christina: My clients are a diverse industry mix, including biotech, life sciences, food and beverage, clothing, medical equipment, and software and telecommunications. They are also diverse in size, technology, and business model. They range in size from startups looking to raise their first round of funding to Fortune 500 companies that have vast IP portfolios. The early-stage companies are particularly near and dear to my heart, as I have been heavily involved in the startup community in the Boston area for years now.
Anant: I’ve worked on cases for technology companies of every size, from early-stage startups to giants such as Apple and Google, and in a range of industries including consumer electronics, medical devices, auto parts, and pharmaceuticals. In my pro bono practice, I’ve represented large groups of immigrants in class-action challenges to detention policies, as well as individual immigrants in removal proceedings.
What types of cases/deals do you work on?
Christina: I advise clients on the full range of trademark and copyright issues, from clearance, selection, and use to prosecution of trademark and copyright registrations in the U.S. and internationally. Because international protection is an important consideration for many of our clients, we have the knowledge and resources to traverse the labyrinth of independent legal systems, treaties, and international agreements. Much of my work is helping clients develop cost-effective global strategies for determining where and when to protect their trademark and copyright assets.
Anant: In my post-grant practice, I represent petitioners and patent owners in IPRs and other proceedings at the PTAB. Depending on what side we are on, we are trying to convince the PTAB to either kill a patent or uphold a patent. Earlier in my career, I was on a team that successfully defended Apple in a jury trial in Texas in a case involving cellular communication standards.
How did you choose this practice area?
Christina: Though always interested in IP, I assumed that I would never be able to work in the field, because I don’t have a technical background. Prior to joining the firm, I was an associate at a business boutique where I worked on various corporate transactions, including entity formation, sale of companies, and due diligence. The economy was slow when I graduated law school, and deal work was particularly impacted. Thankfully, I had a good friend working at WGS—one thing led to another, and a door opened. The more I learned about trademark law, the more I realized it was the perfect marriage of innovation, business interests, and law.
Anant: I chose the post-grant group because it allows me to focus on the things that I enjoyed most about IP litigation—analyzing complex technologies and figuring out how to explain them persuasively in writing or in court. As my career progressed, I found that I enjoyed the technical aspects of IP litigation more than I enjoyed other aspects like damages analysis or discovery. So when the opportunity came up to focus primarily on IPRs, I jumped at it.
What is a typical day like and/or what are some common tasks you perform?
Christina: One of the things that I love about my practice is that no two days are alike for me. I can be certain to handle a number of different matters each day and to have a good mix of client meetings and/or phone calls on the one hand and dedicated time to strategize and problem solve on the other.
Anant: My day-to-day work is a mix of technical analysis of patents and prior art, legal research and writing, and preparation for oral arguments. The emphasis changes depending on the stage of the case we’re in. If we’re challenging a patent, then first, we analyze the patents and the prior art. Next, we write the petition. And later, we prepare for depositions and oral argument.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Christina: I think the most important thing is to love learning, teaching, and interacting with other people. Adaptability and willingness to learn are critical: it is not necessary to be the leading expert in a technology, but we need to be able to come up to speed quickly and make astute and relevant suggestions that align with the client’s needs.
Anant: It’s important to have a strong understanding of patent law, so taking a patent law class is very helpful. Most IPR practitioners have also taken the patent bar, although it’s possible to work on IPRs without having done so. It’s also very important to develop core litigation skills like legal research, legal writing, and oral advocacy. You can have the best technical arguments in the world, but if you can’t convey them clearly in writing or verbally to the PTAB judges, you’re going to lose.
What is the most challenging aspect of practicing in this area?
Christina: Trademark prosecution requires strong organizational skills. It is not uncommon for a practitioner to handle 50 different matters in a day. As such, a trademark lawyer cannot focus on only one project or case at a time; otherwise, much of the time would be spent waiting. Instead, trademark practitioners handle many cases at a time and need to stay organized to balance their deadlines.
Anant: The most challenging aspect of post-grant practice is figuring out the best way to explain technical arguments to your audience on paper or in person. Even though many of the judges at the PTAB have scientific or technical training, they still need to be educated about the specific details at issue in a case. However, in IPRs, there are strict limits on how many words you can put into your filings and how much time you have at oral arguments. Figuring out how to convey the necessary details while staying under your word or time limits can be tricky.
What is unique about this practice area at your firm?
Christina: Leading companies, innovative startups, and major research universities consistently turn to us to protect and enforce their intellectual property rights. We take a team-based approach, including recognized leaders in the trademark area, combined with a mix of paralegals and seasoned administrative professionals to maximize efficiencies. We maintain a comprehensive in-house educational program, which includes periodic lunches and email threads. We also share a common hallway, which ensures our entire staff is conversant in relevant case law and emerging issues in the U.S. and abroad.
Anant: We are one of the few firms that has a dedicated Post-Grant group, and those of us who are in the group have time to focus 100 percent on post-grant matters. In addition to working on our active matters, we review recent decisions by the PTAB and the Federal Circuit to make sure we’re up to speed on recent developments in the law. In addition, many of our firm’s patent prosecution lawyers have exceptionally strong technical backgrounds, and we can draw on that expertise when trying to understand a difficult technical concept.
What are some typical tasks that a junior lawyer would perform in this practice area?
Anant: We try to get junior lawyers involved in key strategic decisions at every stage of a case. Junior lawyers will often take the lead on searching for prior art and figuring out how to explain why the prior art is similar to the challenged patent. Junior lawyers will draft the petitions and then revise them based on feedback from senior lawyers. Later, when we’re preparing for oral argument, junior lawyers will prepare argument outlines and demonstratives and participate in moots for the hearing.
How is practicing intellectual property in a boutique different from practicing in a large law firm?
Christina: As a trademark attorney, I am constantly growing and learning—both about the law and about my clients. Because of the diversity of clients we attract as a boutique, I am constantly confronted with exciting ideas and innovation; feeling like I am a small part of these projects is tremendously rewarding.
Anant: To me, Wolf Greenfield provides all of the benefits of practicing law at a large firm without any of the drawbacks. Although we’re a boutique firm, we get the same interesting and sophisticated work that the larger firms get, and we have the same level of practice support as the larger firms. However, the IP practice at Wolf is not competing for resources with other practices, and there’s no pressure for the IP lawyers to bill more hours to keep up with the profitability of other practices. This helps make the work/life balance at Wolf Greenfield much better than it is at the larger firms.