The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Michael Rader, Partner—Litigation; and Jennifer Wang, Associate—Mechanical Technologies
Michael Rader heads the New York office of Wolf, Greenfield & Sacks, P.C. and previously co-chaired the firm’s litigation practice group. Mike tries patent cases to juries and judges in federal district courts around the country and before the International Trade Commission, and handles post-grant proceedings before the United States Patent and Trade Office (USPTO). Mike graduated from Brown University with a degree in mechanical engineering and received his law degree from Harvard Law School.
Jennifer Wang is a patent attorney working in the field of mechanical technologies and medical devices. She works with clients in patent drafting and prosecution, opinion work, diligence, licensing, patent litigation, and post-grant proceedings. Jen has worked with clients ranging from start-ups to Fortune 500 companies, and develops comprehensive patent portfolio strategies that fit the business goals of her clients. Jen has a degree in mechanical engineering, and she loves gadgets and learning how things work. She has been at Wolf Greenfield for over 7 years and began as a technology specialist.
Please provide an overview of what, substantively, your practice area entails.
Rader: My practice concentrates primarily on patent litigation and post-grant proceedings such as inter partes reviews (IPR). In a nutshell, that means I spend most of my time either enforcing patents or attacking them. My cases have involved many technologies such as consumer electronics, medical devices, software, and sporting goods.
Wang: As a patent attorney, I help clients obtain patent protection for their inventions. I advise clients regarding the patentability of their inventions, draft patent applications, and draft arguments to convince patent examiners at the USPTO that the invention is new and non-obvious over currently existing technology. I also counsel clients on other patent-related topics, including freedom to operate, due diligence, and licensing.
What types of clients do you represent?
Rader: I have tried patent cases for large companies like Sony (consumer electronics), EMC (data storage) and Smith & Nephew (medical devices) as well as a variety of smaller companies. I have also represented a non-profit research institution in patent litigation. In my pro bono practice, which focuses primarily on unemployment cases, I have represented many individuals who worked in a variety of industries.
Wang: My clients are diverse in size, technology and business model, which keeps the work interesting. They range in size from start-ups looking to raise their first round of funding to Fortune 500 companies that have vast patent portfolios. I represent clients in the medical devices, consumer products, manufacturing, genome sequencing, diagnostics, robotics, and microfluidics spaces, as well as in other mechanical technology areas.
What types of cases/deals do you work on?
Rader: For many years I primarily defended companies against patent suits filed by non-practicing entities (NPEs). In the past several years I’ve spent most of my time on cases between competitor companies accusing one another of patent infringement, and the NPE suits have been a smaller part of my workload. In one of my most unique cases, I defended a research mouse repository against patent infringement claims based on a transgenic mouse model.
Wang: I work with clients and inventors to prepare and prosecute patent applications through the USPTO until the patent is granted. I also provide freedom to operate assessments in which we advise clients as to whether or not the product they plan to sell is at risk of infringing someone else’s patents. I also conduct due diligence work, and have represented clients on the target side and on the acquirer side of M&A transactions. For example, if our client is the target to be acquired, I need to explain the patent portfolio and answer any questions or concerns that the acquiring company may have. At other times, our client is the acquiring company or a venture capital firm, and I need to investigate the strength of the target company’s patent portfolio and determine if there are any potential freedom to operate issues. I also help clients negotiate licensing deals.
How did you decide to practice in your area?
Rader: Before I started law school, I promised my mom that I would apply for summer jobs to get a head start on my career. Since I had an engineering background I figured that patent firms would be a good target. I sent 95 letters and only one firm responded with any interest. I’ve been with Wolf Greenfield ever since. Thanks, Mom!
Wang: I stumbled upon patent law and patent prosecution at a career fair at my school. I set up calls and meetings with various patent attorneys to find out more about the career. The more I learned about patent law, the more I realized that it was a great fit for my interests—I enjoy studying new engineering creations and designs. I love learning about how things work. As a patent attorney, I get to do just that. I speak directly to inventors, engineers, professors, and graduate students and learn about their “aha!” moments and breakthroughs.
What is a typical day or week like in your practice area?
Rader: A typical day involves one or more of the following: (1) figuring out how we’re going to win a case by formulating a strategy and talking it through with colleagues; (2) writing a legal brief or an IPR petition or response; (3) mentoring younger lawyers in the foregoing; (4) visiting clients; or (5) best of all, going to court to try or argue a case.
Wang: On a typical day, in the morning, I will work on projects that require an uninterrupted block of thinking and writing time, such as drafting or reviewing a patent application, writing an argument in response to a rejection from the patent office, or putting together a patentability or freedom to operate assessment. For lunch, I often attend firm-sponsored trainings on various topics. I enjoy these training lunches because they bring everyone together from all our different practice groups, and folks who don’t typically work with each other have the opportunity to meet one another and connect. In the early afternoon, I will typically have my meetings and calls, which might involve counseling clients on a substantive matter, taking invention disclosures from inventors, or meeting with a Shareholder or a junior practitioner to discuss strategy on a case we are working on together. Afterwards, I resume the thinking and writing tasks from the morning, or I will work on smaller issues that cropped up during the day.
What is the best thing about your practice area?
Rader: The very best thing is going to court. While it is nerve-racking, it is also the most positively exhilarating experience a lawyer can have. One of my mentors used to comment, at the end of the trial day, “I can’t believe they just paid me to do that.” I feel exactly the same way when I leave the courtroom. It is a great privilege to have a job this exciting and fun.
Wang: As a patent attorney, I am constantly learning and growing. On the technical side, the technology I work with is always different and changing, so the content stays fresh. On the legal side, there is so much to learn in patent law, and it is also constantly evolving. Every case I work on is new a puzzle that I have to unlock. It’s rewarding to get that moment of epiphany when I figure out an argument or strategy.
What is the most challenging aspect of your practice area?
Rader: Balancing it with my family life. I adore my wife and four children. As thrilling as my work is, I wouldn’t be doing this job if I couldn’t also have a full life outside the office. I’ve found that I need to be efficient at my desk and creative with my working hours, making time for intensive work early and late so that I can be available during the hours that personal things are happening.
Wang: Patent prosecution requires strong organizational skills. The process is somewhat discontinuous—there are many points in the process in which you are waiting for someone else to act on something. For example, you can wait a year or more for the patent office to pick up and examine an application you filed, and then 3-4 months for the patent office to respond to an argument you filed. You might be waiting for clients to review drafts, execute documents or answer some technical questions you had. As such, a patent prosecutor cannot focus on only one project or case at a time, otherwise much of the time would be spent waiting. Instead, patent prosecutors handle many cases at a time and need to stay organized to balance their deadlines.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Rader: Patent litigators come from all sorts of academic backgrounds. I think the most important thing is to love learning, teaching and interacting with other people. Judges, juries, and clients are all just people trying to make good decisions after learning something from you.
Wang: Patent attorneys, and patent prosecutors in particular, need a strong technical foundation, as they need to be able to understand the technology they are working with. It is not necessary to be the leading expert on a topic, but patent attorneys need to be able to come up to speed on new technology areas quickly. In school, you should take classes to gain a strong understanding in the basics, and train yourself to learn how to learn. If you are in law school, take as many classes in intellectual property as you can: patent law, trademark law, copyrights, trade secrets and licensing. Gain fluency with reading and interpreting statutes in your classes. Learn how to read and understand court opinions to quickly identify the takeaways of the case. It is also a good idea to stay on top of the current trends in patent law, as the landscape is constantly shifting.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
Rader: People think that all high-stakes litigation is aggressive and uncivil. While it sometimes is, I’ve also developed some rewarding relationships with opposing counsel who were professional and a pleasure to work against. Over the course of your career, you will encounter many more lawyers outside your firm than within it. Some of those opposing counsel are highly skilled and have a lot to teach you, if you are open to it.
Wang: There is a misconception that, because patent prosecution is not an adversarial process, it lacks the excitement and high-stakes impact of litigation. In fact, patent prosecution requires strong advocacy, negotiation and oral argument skills to persuade patent examiners to grant patents. For example, formal telephone calls with patent examiners to discuss rejections require prosecutors to think on their feet and respond to the examiner’s arguments in real time. Furthermore, patent prosecutors at Wolf Greenfield can get involved in actual adversarial processes such as IPR and litigation cases.
What is unique about your practice area at your firm, and how has it evolved since you have been at the firm?
Rader: We work really hard to give younger lawyers big opportunities. One of my mentors, who had tried dozens of cases over a long career, insisted on second-chairing all of our trials so that I could play the first chair role. Rare is the trial lawyer who behaves so unselfishly, and I try every day to emulate his example.
Wang: Wolf Greenfield is unique in that we have dedicated practice groups that each focus on a particular area of technology. We also have a dedicated IP litigation group. These practice groups are collaborative and interdisciplinary. For example, although I am a member of the mechanical group, I often collaborate with members of the biotechnology and pharmaceutical groups on cases involving medical devices and diagnostics. In addition, the litigation group often calls upon the technical knowledge and expertise of prosecutors in the practice groups. With the advent of IPRs, our prosecutors and litigators often join forces to form well-rounded teams.
What activities do you enjoy when you are not in the office, and how do you make time for them?
Rader: Three of my children play competitive ice hockey, so I spend a lot of time at ice rinks. I manage one of their teams, which is a big job; fortunately it involves a lot of email, one of my great skills from litigation. I am very involved in homework, my children’s school, and the Jewish community where I live.
Wang: I enjoy spending time with family and friends, trying new restaurants, cooking and recording music. In the past few years, I discovered audio books. I love being able to easily digest books on my commute, doing chores, on train and plane rides, and so on. I have a few time management strategies to make the best use of my time at work. I schedule my meetings and calls together in one block and schedule time for uninterrupted work for the rest of the day. I try to address the most challenging items on my to do list first thing in the morning. At home, I will outsource tasks like grocery shopping when things are especially hectic.