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Intellectual Property

Overview

Intellectual Property practice generally falls into one of three buckets: transactional IP, IP litigation, and patent prosecution. It is rare for an attorney to work in both IP transactions and litigation at a large firm but more common in smaller practices. Transactional IP attorneys work on transactions to license intellectual property assets or in support of M&A transactions to handle the IP-related issues in such deals. IP litigators work on disputes involving patents, copyrights, trademarks, and trade secrets. Patent prosecution involves assisting clients in obtaining patents from the Patent and Trademark Office. Patent prosecutors are required to have a science degree and to pass the Patent Bar examination. Patent lawyers evaluate whether their client’s request impinges on other intellectual property, defend against opposition to client’s applications in administrative trials, and oppose applications that impinge on the client’s intellectual property. Lawyers working in “hard IP”—patents and biotech assets—are often required to have a technical background even if not practicing before the patent bar and an undergraduate or graduate degree in science or engineering is helpful. IP lawyers need to fully understand the technologies, products, and businesses of their clients to represent their clients well.

Featured Q&A's
Get an insider's view on working in Intellectual Property from real lawyers in the practice area.
Forrest Flemming, Associate
Kilpatrick Townsend & Stockton LLP

Describe your practice area and what it entails.

I focus my practice primarily on trademark enforcement and litigation—I manage nationwide brand-protection programs for clients, specifically in the brick-and-mortar retail space and on the internet. I also represent both plaintiffs and defendants in high-profile trademark cases in federal trial and appellate courts.

What types of clients do you represent?

I represent a variety of major brands, including global leaders in finance, athletic wear (adidas), social media (Facebook), automobiles, lifestyle clothing, internet media services (Yahoo), and travel booking (Expedia).

What types of cases/deals do you work on?

I mainly handle federal court trademark infringement actions, representing both plaintiffs and defendants in trial and appellate courts. My clients have prevailed in temporary restraining order and preliminary injunction proceedings, as well as in summary judgment, trial, and appeal actions. My cases range from smaller two-party matters to high-stakes litigation with up to a dozen parties, dozens of witnesses, and several experts per side.

How did you choose this practice area?

I’ve always been fascinated with brands and the way organizations represent themselves to the public to distinguish themselves from other companies. A trademark is a very personal asset, and I wanted to incorporate that aspect of a business into my daily legal practice. I selected trademark litigation specifically after developing general litigation skills—which translated perfectly into trademark litigation work—in law school and during my federal clerkship. After determining my legal path, Kilpatrick Townsend became my first choice of employment based on its innovative attorneys and the Intellectual Property group’s stellar reputation among national publications and IP experts. Unlike many full-service firms, Kilpatrick Townsend features IP as a core practice area, which really appealed to me.

What is a typical day like and/or what are some common tasks you perform?

Every day, I communicate with my clients, counseling them on their brand-protection programs, providing risk assessments, and negotiating with infringers. The rest of my day, I draft briefs, run e-discovery, take depositions, and do anything else I can—as efficiently as I can—to ensure my clients hold the best position possible in their litigations.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Trademark litigation is still litigation, so any litigation skills acquired will always translate well. For trademark enforcement, efficient management skills are also a must. Large brands faced with large numbers of infringers need effective team management—especially when handling dozens of matters at a time—as well as first-rate client service.

What do you like best about your practice area?

Brands represent an integral part of our clients’ businesses. Since they embody the image and the message the client wants to convey to the world, protecting a brand is like protecting a client’s identity. My favorite part of my practice area is learning more about my clients—their history, their vision, and what they stand for—so I can best represent and protect their IP business assets and reputations.

What misconceptions exist about your practice area?

Many law students dismiss intellectual property because they don’t have a scientific background. But trademark and copyright work—and even some patent work—do not require science degrees. I, for one, have a degree in vocal performance, not physics. I highly recommend that those interested in pursuing a career in trademark and copyright law do so since there are no prerequisites standing between them and those practice areas.

How do you see this practice area evolving in the future?

The answer I would give today is the same answer I would have given back when I started my legal career: the internet and the resultant globalization of consumer markets has significantly increased the importance of online brand protection. Infringers can deceive huge numbers of consumers via the internet at little-to-no cost, and their methods of concealing their identities only get more sophisticated. These developments make online brand protection more crucial from a branding perspective—but also more difficult—every year.

What are some typical career paths for lawyers in this practice area?

Working at a traditional law firm or as an in-house attorney. At Kilpatrick Townsend, all associates have the opportunity to achieve partner status, but given the level of client engagement with companies that sometimes have entire departments of intellectual property attorneys, in-house opportunities often arise. Almost invariably, Kilpatrick Townsend trademark attorneys who subsequently go in-house continue to work with the firm on all of its trademark matters.

Forrest Flemming, Associate—Intellectual Property

New York associate Forrest Flemming works in the Intellectual Property department at Kilpatrick Townsend, where he focuses his practice on trademark law. Before joining the firm, Mr. Flemming served as a judicial law clerk for the Honorable C. Lynwood Smith, Jr. in the U.S. District Court for the Northern District of Alabama and worked as a summer associate for Kilpatrick Townsend in 2012 and 2013.

Mr. Flemming graduated from Emory University School of Law (with honors), where he served as a research assistant to Vice Dean Robert B. Ahdieh and Professor Peter Hay, as well as the notes and comments editor of the Emory Law Journal. Mr. Flemming received his Bachelor of Music degree from the University of North Carolina at Chapel Hill, where he acted as a research assistant for the Honorable Richard Y. Stevens in Raleigh, North Carolina.

Abby Litow, Partner • Kyle Calhoun, Associate
Kirkland & Ellis LLP

Describe your practice area and what it entails.

Kyle: Kirkland’s intellectual property litigation group handles a wide variety of technical litigation matters, including patent cases before federal district courts, the Patent Trial and Appeal Board, and the International Trade Commission, as well as a variety of trade secret, copyright, and trademark matters in district court. We handle cases through all facets of litigation, from filing or answering a complaint up through trial and appeal, with particular focus on taking those most difficult and complex cases to jury or bench trial.

What types of clients do you represent?

Abby: Working at Kirkland has given me a great opportunity to represent clients whose businesses involve a variety of technologies and products, including medical devices, pharmaceuticals, HVAC controls and accessories, semiconductors, consumer products, and mechanical designs. Many of my clients are Fortune 500 national or international corporations, but others are smaller innovative companies or startups that have retained Kirkland to represent them in a litigation matter where they are asserting or defending patent infringement claims with significant implications for their business.

Kyle: My work predominantly involves large companies with highly technical intellectual property, both on the plaintiff and defense sides of the bar, with particular focus on hardware and software technologies, computer networking systems, smartphones, solar panel devices, and image-processing systems. Specific clients include Cisco Systems, Motorola, Samsung, Solar City, and EagleView Technologies.

What types of cases/deals do you work on?

Abby: No matter what claims are at issue in a litigation matter for which Kirkland has been retained, my job is to manage all phases of the case, including conducting pre-filing analyses to assess potential claims on behalf of patent owners; constructing claims; performing fact and expert discovery; briefing and arguing dispositive motions; and trial and post-trial briefing. There are other parts of my practice that are not technically part of active litigation but are closely related—for example, advising clients who have received or are considering sending a cease-and-desist letter or negotiating and drafting settlement agreements to resolve litigation.

Kyle: I primarily work on high-tech, complex litigation matters that, in all likelihood, are destined for trial. This work involves both patent and trade secret litigation matters that have several patents or trade secrets at issue that span a large number of technical fields.

How did you choose this practice area?

Abby: I fell in love with biology in high school and college but never saw myself becoming a doctor or working in a research lab—I always wanted a job where I could write, think critically, and work as part of a team. Patent litigation allows me to combine my interest in science with my desire for an exciting, challenging, and team-oriented career.

Kyle: With a background in engineering, I knew I wanted to be involved in legal matters that implicated technical issues. I also knew that I wanted to challenge myself with the critical-thinking, persuasive, and competitive aspects implicit in high-stakes commercial litigation and leverage my experience in and passion for advocacy developed during law school. These considerations are what drew me to work in the intellectual property litigation space, and in particular, Kirkland’s Intellectual Property Litigation group.

What is a typical day like and/or what are some common tasks you perform?

Abby: One of my favorite things about my job is there is no such thing as a “typical day.” While some litigation deadlines are set and can be worked on weeks or months in advance, other deadlines come up at the last minute and require critical thinking and problem-solving that I find very exciting. The most common task I perform is communicating with people—with my clients, with my team members, with opposing counsel, with fact and expert witnesses, and with the court, I have to effectively communicate and think on my feet.

Kyle: On one side of my practice, I work on researching, drafting, and revising papers to be filed with the court, including briefs in support of motions to dismiss, motions for summary judgment, discovery motions, Daubert motions, and the like. This work primarily addresses complex legal and factual issues and requires keen focus on distilling complex, highly technical information down into a form that can be digested and understood—and is persuasive to the court. On the other side of my practice, I work on developing discovery during the course of litigation by reviewing documents and conducting interviews to understand highly technical technologies, preparing for and taking/defending depositions, and working with experts to better understand how all of the facts and technologies piece together.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Abby: At Kirkland, we are focused on developing patent litigators who have the skills to contribute to all phases of litigation, no matter what claims or technologies are at issue in the case. That’s why, even though I have a degree in biology, I have worked on cases involving semiconductors, thermostats, and motion-control software. The most important skills to be a successful IP litigator at Kirkland are not necessarily knowledge or understanding of a particular scientific area—though, of course, that can be helpful; they are learned skills like persuasive writing and clear oral communication. Taking courses in writing and trial advocacy or participating in mock trial or moot court are helpful to start developing the skills that Kirkland expects its litigators to have.

Kyle: I highly recommend any prospective intellectual property attorney to take as many litigation, advocacy-focused classes as possible, to get involved in groups such as mock trial and/or moot court, and to focus on developing their abilities as a legal writer. Attorneys in this field typically have the technical background that allows them to tackle the technical issues at play in a given case, but what sets those great intellectual property litigation attorneys apart from the rest is their proficiency to persuasively draft and argue their positions to the court or a jury.

What is unique about this practice area at your firm?

Abby: One thing that is unique about Kirkland’s Intellectual Property group is that we do not offer patent prosecution services to our clients. This is typically a benefit to junior lawyers who want to focus their practice on litigation instead of dividing time between litigation and prosecution. That being said, with the recent rise of post-grant proceedings at the PTO, there are ample opportunities for lawyers who want to engage in prosecution-like activities. For example, filing and responding to petitions for inter partes review is becoming an increasingly large part of our intellectual property practice.

Kyle: I think what sets Kirkland’s intellectual property litigation group apart is its focus on developing younger attorneys to take on roles and responsibilities that would typically be beyond their years. This focus includes a number of training programs keyed in on trial advocacy, deposition taking, and discovery development. Combined with Kirkland’s willingness to take its cases to trial, this allows junior attorneys to truly get hands-on experience in each aspect of litigation from start to finish.

What are some typical tasks that a junior lawyer would perform in this practice area?

Abby: One of Kirkland’s goals is to get junior lawyers significant litigation experience as early as possible, and my career has been a good example of Kirkland’s success in this regard. In my early years at Kirkland, I worked on junior-level tasks, such as legal research assignments and drafting discovery requests and responses, but I also defended multiple fact witness depositions and sat at counsel table during a jury trial within my first two years at the firm—experience most of my friends at other firms didn’t get. At Kirkland, an associate can be promoted to partner at the end of their sixth year at the firm, which provides earlier opportunities for junior lawyers to take on responsibilities, such as arguing motions in court or taking witnesses at trial.

What kinds of experience can summer associates gain in this practice area at your firm?

Abby: Kirkland’s summer program is the best! Summer associates at Kirkland get a great introduction to what it’s like to be an IP litigator at our firm. In addition to working on legal research and writing projects for patent infringement cases, summer associates experience invaluable hands-on opportunities, like sitting in on depositions, participating in meetings with clients and opposing counsel, and attending hearings and appellate arguments. Our summer associates also participate in an introductory version of Kirkland’s industry-leading trial advocacy training that we require for all associates (called KITA), which teaches the mechanics and art of courtroom presentations, including opening and closing statements and direct and cross examinations.

Kyle: The great part about the summer associate program here at Kirkland is that our summer associates are not simply given busy work but instead are tasked with working alongside both associates and partners to tackle real issues in real cases. Summer associates get the opportunity to prepare for a number of depositions and hearings and participate in aiding the team to prepare for trial. Getting to go to a jury trial as a summer associate was one of the most formative and exciting experiences during my time in law school.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Kyle: My biggest piece of advice would be not to get too intimidated by the amount of technical and scientific issues inherent in this practice. These issues are just as challenging for most of us attorneys that do have technical backgrounds and require learning something entirely new from scratch. The technology at issue in the majority of my cases bear little relation to my background as an engineer, and I am challenged every day to wrap my head around complex technologies. What will set you apart is your willingness to take these technical challenges head on and leverage your skills as a legal researcher and writer to frame each of your client’s positions in a persuasive light. Some of the best intellectual property litigation attorneys that I know have little-to-no technical background.

Abby Litow, Partner, and Kyle Calhoun, Associate—IP Litigation

Abby Litow is a partner in Kirkland’s Washington, DC, office. While much of her practice is focused on patent infringement litigation, she also has experience litigating cases and advising on other subject matters, including trade secrets, antitrust, pharmaceutical regulation, and breach of contract. She has represented clients in litigation and advisory matters involving a variety of technologies and products, including medical devices, pharmaceuticals, HVAC controls and accessories, semiconductors, consumer products, and mechanical designs. Before joining Kirkland, Abby earned her B.S. in Biology from the College of William & Mary and her J.D. from Harvard Law School, where she served on the masthead of the Harvard Journal of Law and Technology and was a National Winner of the Giles S. Rich Moot Court Competition.

Kyle Calhoun is an intellectual property litigation associate focusing on high-tech patent and trade secret litigation in U.S. federal courts and at the International Trade Commission. Kyle also has extensive experience in motion practice and fact discovery in matters not strictly limited to patents, including contract and licensing disputes, business torts, and claims based in unfair competition laws. Before joining Kirkland, Kyle attended law school at the University of Texas at Austin, where he was involved in a number of advocacy and intellectual property organizations, including the Board of Advocates and the Texas Intellectual Property Law Journal. Kyle received his B.S. in Mechanical Engineering from the University of Florida.

Ali R. Alemozafar, Partner
Wilson Sonsini Goodrich & Rosati

Describe your practice area and what it entails.

I work with companies that are disrupting some area of science or technology. I work with such companies to identify and build an IP strategy around their ideas, which would include preparing and filing patent applications with aggressive claims. I subsequently work with the patent offices in the United States and around the world to move such applications to allowance.

I also advise companies on their freedom to operate, when the time is right. This involves structuring a search strategy to broadly identify third-party patents and patent applications, which would then be reviewed in light of what a company is planning on doing commercially to help assess and manage risk.

What types of clients do you represent?

I represent clients in a wide range of technical fields. In the life sciences, for example, I represent companies such as 10x Genomics, Guardant Health, Personalis, and GenapSys. I also advise clients in other spaces, such as materials, computing, and engineering disciplines. One in particular is 1Qbit, a company in the quantum computing space. Another is Scoot, a San-Francisco-based company in the mobility space that was acquired by Bird.

What types of cases/deals do you work on?

I work with companies from very early stage to late stage, including companies that have gone public. I work with companies that are planning to undergo venture financing, an M&A, or an IPO.

How did you choose this practice area?

I have always enjoyed being exposed to new ideas. I went into my Ph.D. program at Stanford University with the intent of solving a new problem. Having done that, and after a postdoctoral research fellowship at Harvard University, I wanted to continue my exposure to new ideas. My practice area brings me in contact with highly innovative ideas all the time and enables me to help my clients problem-solve to protect such ideas.

What is a typical day like and/or what are some common tasks you perform?

On a typical day, I might be meeting with existing or potential clients and my team of associates and patent agents. A common task on a given day may involve me advising companies on their IP strategies and working with my team to move such IP strategies forward.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

I recommend that an individual wishing to enter my practice area focus on active listening. I get exposed to new ideas over a very short timeframe, so I need to make sure I am listening very carefully to pick up even the smallest detail.

What is the most challenging aspect of practicing in this area?

There are many moving pieces in my practice area, which makes prioritization and time management very important. Careful attention to prioritization and time management may enable a person to make sure more urgent tasks are addressed over other tasks and that the time to address such tasks is spent efficiently.

What do you like best about your practice area?

Exposure to new and highly innovative ideas.

What is unique about your practice area at your firm?

We have the largest patent group for a general practice firm and the largest life science practice area in the world. This allows us to problem solve for clients across a wide range of technical fields quickly and efficiently.

What are some typical career paths for lawyers in this practice area?

There are many potential career paths for lawyers in my practice area. These include following a traditional path to partnership, becoming in-house counsel in a company, or even starting a company.

Ali R. Alemozafar, Partner—Patents & Innovations

Dr. Ali R. Alemozafar is a partner at Wilson Sonsini Goodrich & Rosati, where he focuses on strategic intellectual property counseling in a wide range of technical fields, including diagnostics, tools, genomics, digital health, bioinformatics, artificial intelligence, materials, and various engineering fields. His expertise includes patent strategy, patent prosecution, and patent diligence—including freedom-to-operate analyses—for financings, mergers and acquisitions, and public offerings. Ali has prepared and prosecuted patent applications in the United States and other jurisdictions, including Europe, China, and Japan. He provides legal counseling to companies at various stages of growth, from pre-financing startups to public companies.

Prior to joining the firm, Ali worked on data warehousing, business intelligence, and enterprise data integration. He frequently lectures at the UC Berkeley School of Law and UC Hastings College of Law on various intellectual property topics, including patent strategy and IP due diligence.

Paul Bondor, Partner • Kerri-Ann Limbeek, Associate
Desmarais LLP

Describe your practice area and what it entails.

Paul: My practice focuses on patent infringement jury trials in federal courts. Since a trial doesn’t happen overnight, my daily work spans courtroom hearings and motion arguments, fact depositions, expert reports, and depositions, all the way through the jury trial, post-trial arguments, and appeal. Basically, I’m always working with my colleagues to develop our client’s case on the merits, including the technical details required to prove (or fight) infringement and validity of the patents at issue, as well as damages-related evidence.

Kerri-Ann: Complex technology-driven disputes are the core of our practice. My practice focuses on patent infringement litigation in federal courts, as well as inter partes reviews (IPRs) before the Patent Trial and Appeal Board. The technologies involved in our cases span many industries, including medical devices, biotechnology, pharmaceuticals, semiconductors, smartphones, and computer hardware and software.

What types of clients do you represent?

Paul: At Desmarais LLP, we represent blue-chip global technology powerhouses, substantial intellectual property licensing companies, and life sciences and medical device companies, as well as individual inventors with world-changing inventions. I’ve had the opportunity personally to work with all of these types of clients.

Kerri-Ann: We represent both plaintiffs and defendants, including large corporations, small companies, research institutions, and individual inventors across a broad spectrum of technology areas. Some of our clients include Cisco, Apple, GlaxoSmithKline, Nokia, IBM, and Intellectual Ventures.

What types of cases/deals do you work on?

Paul: High-profile patent infringement cases make up the bulk of our practice, but we also take on other high-stakes technology-related cases involving unfair competition, trade secret theft, and corporate raiding.

Kerri-Ann: I have worked on a number of patent litigations in district court, as well as on inter partes review proceedings. I work on cases involving a broad range of technologies, including medical devices, biotechnology, semiconductors, smartphones, and computer hardware and software. Some of the clients that I have had the opportunity to work with include Apple, Enzo Life Sciences, LifeCell, and Intellectual Ventures.

How did you choose this practice area?

Paul: I really like analytical and problem-solving challenges, and I enjoyed studying engineering in college. But I’m also a talker who loves argument, and I thought there would be more variety in practicing law. After two years as a federal law clerk watching jury trials and learning about effective advocacy and writing, I chose to go into intellectual properly litigation—a path that gives me all the excitement and challenge associated with trying a case in court, coupled with an endless variety of new technologies to learn about.

Kerri-Ann: I began my career in a general litigation group and worked on securities and other complex commercial litigations before deciding to focus on patent litigation. As soon as I started working on patent cases, I realized that this practice area was a perfect fit for me. Patent litigation allows me to learn about new technologies while providing the challenging and exciting legal work involved in litigating cases in court. Litigation also provides the opportunity to work with a team on each of my cases.

What is a typical day like and/or what are some common tasks you perform?

Paul: Typically, any given day will find me either in my office preparing for the next event, be it trial, a hearing, a meeting, or a deposition (or working with my team on litigation-related documents of all stripes: pleadings, briefs, and written discovery requests or responses) or on the road to get to a hearing or deposition, whether that’s in Delaware, California, Texas, Japan, or Taiwan.

Kerri-Ann: My typical day or week varies depending on the nature and stage of the cases that I am working on. In the early stages of a case, I may be interviewing engineers for discoverable information or developing a case strategy with my team. During fact discovery, I’ll be traveling to prepare witnesses and to take and defend depositions. During expert discovery, I’ll be working closely with expert witnesses to develop the theories we will present at trial, including drafting expert reports, preparing my experts for their depositions and taking and defending expert depositions. Throughout a case, I’ll also be drafting pleadings, written discovery, and briefs and preparing for hearings.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Paul: An undergraduate degree in engineering or science is certainly helpful. Once you get to law school, evidence and trial advocacy are also helpful—there’s no substitute for getting on your feet and presenting evidence and arguments in whatever forum is open to you.

Kerri-Ann: Although technical experience is helpful, I would recommend focusing on classes and experiences that help you to develop written and oral advocacy skills. Hands-on experience presenting evidence and arguments will help prepare you to think (and act) like a trial lawyer early in your career.

What is the most challenging aspect of practicing in this area?

Paul: I think the single biggest challenge is the task of explaining enormously complicated technology to judges and juries who are not familiar with it, who likely have no preexisting interest in it, and who almost certainly don’t come pre-equipped with an educational background in the area. In order to win, you not only have to make the technical aspects understandable, but you also have to provide enough of the rest of your client’s story to make the facts interesting and compelling.

Kerri-Ann: The most challenging part of my practice is quickly getting up to speed on complex technologies that I am not familiar with. However, learning about new technologies that are outside of my comfort zone is also one of the most rewarding and interesting parts of my practice. In addition, it’s often helpful to have members of a case team without a background in the specific technology area at issue to give perspective and insight on how to explain the technology to judges and jurors who may be unfamiliar with it.

What do you like best about your practice area?

Paul: Far and away, the best thing about my practice area is its astounding variety. Because you have to learn the technology at issue—understanding the details so well that you know it better than the technical experts—every matter gives a chance to learn fascinating stuff. You get to learn about it from passionate people, and each case is a story with its own cast of characters: witnesses, clients, judges, and opposing counsel. Everything is new, every time, and the endless variety makes working a lot of fun.

Kerri-Ann: My favorite part of my practice area is learning new technologies with every case. I love working with engineers and scientists employed by our clients, as well as technical expert witnesses to develop the legal and technical arguments that we will present to a jury.

What misconceptions exist about your practice area?

Paul: People are always surprised to hear that we try our cases to juries, because they assume that juries wouldn’t be able to understand the complex technology. But if the jury has trouble understanding our cases, we’re not doing our job. Likewise, people often think that you need a degree in engineering or the sciences to excel in patent litigation, but I think that it’s possible to succeed regardless of your background—if you’re not afraid of technology and if you’re smart, interested, and dedicated enough to push yourself to really learn it for each case. The only thing I wish I’d known at the outset is just how much on-your-feet experience helps you as a trial lawyer; I would have started even earlier with trial advocacy and clinic work in law school.

Kerri-Ann: One common misconception among law students (and one that I fell prey to) is that if you focus your practice on patent litigation, you may limit your career options in the future. In reality, I have found that patent cases provide far more opportunities for substantive work (like taking depositions, working with experts, and going to trial) than other types of complex commercial litigation, which involve a lot of early-stage document review and often settle before getting too far along in the discovery process. The skills that you build as a litigator are applicable to any subject area, so I think that the most important question to think about in deciding where to start your career is where you will get the best opportunities to learn and practice litigation skills.

What is unique about your practice area at your firm?

Paul: Though we concentrate on a single practice area, we differ from virtually every other law firm in our space because we do not bill by the hour. Instead, our alternative billing arrangements let us work more efficiently, focusing on the work necessary to win. By avoiding traditional incentives that encourage simply billing hours, we’re able to structure a variety of arrangements to meet a client’s needs more effectively.

Kerri-Ann: One of the unique aspects of our firm is that we do not bill by the hour, nor do we track billable hours. This causes all attorneys to focus on the issues that really matter to the case and results in associates getting real responsibility and hands-on experience from the time we are very junior. The focus at Desmarais is always on the quality of the work product rather than the hours spent in the office. Additionally, Desmarais is only seven years old, and it still has the feel of a startup. Rather than focusing on how things have been done traditionally, the firm listens to associate input and adapts. For example, associates meet with John Desmarais every quarter and discuss ideas for making the firm better. It’s exciting to work somewhere that allows associates to have a real voice!

Paul Bondor, Partner, and Kerri-Ann Limbeek, Associate—Intellectual Property

Paul Bondor is a partner at Desmarais LLP. After studying mechanical and aerospace engineering at Princeton University, he attended the University of Michigan Law School, where he served on the Michigan Law Review. He clerked for the Hon. Louis L. Stanton in the U.S. District Court for the Southern District of New York from 1993–1995 and then began private practice at Kenyon & Kenyon, where he became a partner in 2001. He was also a partner in Kirkland & Ellis’ New York office from 2004–2011.

Kerri-Ann Limbeek graduated from the University of Pennsylvania in 2010 with a degree in chemical and biomolecular engineering and from the University of Chicago Law School in 2013. After spending two years in the Litigation group at Sullivan & Cromwell LLP, Ms. Limbeek joined Desmarais LLP in 2015.

Susan Y. Tull, Partner • Shawn S. Chang, Associate
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Describe your practice area and what it entails.

Susan: My practice focuses on guiding my clients to the best possible resolution when involved in a patent litigation, from forum selection, to case and settlement strategy, and through trial and appeal. I manage all aspects of litigation, including pre-suit diligence, discovery, motions practice, trial, and appeals.

Shawn: My practice primarily focuses on assisting our clients in patent litigation in U.S. federal district courts and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). I also maintain a robust transactional practice, including evaluating client’s technologies and advising on IP strategies, preparing and prosecuting U.S. and foreign patent applications, and assisting in licensing negotiations.

What types of clients do you represent?

Susan: I represent the full spectrum of clients, from small startup companies to large established industry players and multinational organizations.

Shawn: I represent a range of clients, including small start-up companies, large U.S. corporations, and multinational technology companies. These companies innovate in a wide range of industries, including in consumer products, electronic devices and components, electric and computer technology, artificial intelligence, nanotechnology, unmanned aerial systems, and financial services.

What types of cases/deals do you work on?

Susan: I work on contentious proceedings, predominantly on patents or trade secrets in the mechanical, electrical, and computer science fields. Often, this work includes pre-suit client counseling followed by a district court or ITC litigation if early resolution cannot be reached. My cases often involve co-pending challenges to the validity of the patents-in-suit in post-grant proceedings at the Patent Office. I also handle the appeals of those cases.

Shawn: My practice primarily consists of contentious disputes involving patents. Typically, these disputes involve district court patent litigation, but I have also represented clients in contractual disputes involving patent issues.

How did you choose this practice area?

Susan: I knew from the start that I wanted to be a litigator, so the question for me was: In what field did I wish to practice? Patent litigation provided me with the full scope of litigation activities, including discovery, oral argument, and jury trials, while allowing me to pursue my interest in engineering and science.

Shawn: I always had a love for science and technology. While I was studying electrical engineering as an undergraduate, I had the opportunity to explore a broad set of intellectual areas within the field. I knew when I was considering an advanced degree that I wanted to remain in the forefront of science and technology, and patent law is the intersection of technology and law. Thus, I went into law school knowing that I wanted to be an intellectual property attorney.

What is a typical day like and/or what are some common tasks you perform?

Susan: There is no one “typical day” in patent litigation, and that is one of the things I enjoy so much about my work. On any given day, I may be meeting with an inventor to learn about a new technology, taking a deposition, arguing in court, or cross-examining a witness at trial. As a patent litigator, I see the full gamut of litigation activities, from the work put in before filing a complaint through appeal of a verdict, in a broad range of technologies and fields of innovation. I have clambered over fire trucks, played video games, and met the pioneers of life-saving technologies as part of my practice.

Shawn: My days vary greatly. Some days, I may be developing technical and legal positions, drafting a motion or responsive paper, or preparing for a deposition or hearing. Other days, I may be involved with teleconferences with experts and internal meetings to strategize and coordinate with other team members.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Susan: I would highly recommend any class that allows you to experience litigation firsthand, whether trial advocacy, a clinic, or—if offered at your school—patent litigation. Any class that allows you time to argue/advocate on your feet is invaluable.

Shawn: Courses and trainings that provide practical experiences in drafting legal documents, such as litigation documents and contracts, would be useful. Strong persuasive writing skills are also essential.

What do you like best about your practice area?

Susan: Finding the evidence or argument that turns the tide in your client’s favor. For every case, we are striving to get the best possible outcome for a given client, whether that means pursuing a case all the way through trial or reaching a pre-suit resolution. And you dedicate yourself to that goal, looking to get the maximum impact from every deposition, argument, or even discussion with opposing counsel. I love the moments where the work, the strategies, and the constant focus come together so that you can obtain that desired outcome. Sometimes, this takes the form of uncovering previously undisclosed information in a deposition, it may be the day you argue a case-dispositive claim construction to the judge and prevail, or it may be the moment you see a line of questioning resonate with the jury. Any given moment in a litigation can turn the tide of the case, and those are the moments when all of the work pays off.

Shawn: Patent law is a dynamic and evolving area of law. With the passage of the America Invents Act in 2011, significant changes were introduced to the U.S. patent system. New patent office rules and policies have created an entirely new arena of practice. The Supreme Court and Federal Circuit have also reshaped all aspects of patent law, including patent eligibility and patentability, patent infringement, standards of review, damages, and patent defenses. And the development of science and technology is also constantly evolving. To me, these constant changes keep life interesting and force you to continually develop as an attorney.

What is unique about your practice area at your firm?

Susan: I think the people we work with are a unique aspect of patent litigation. We work with and for some of the best scientific and technical minds in the world, whether they are clients or experts. Day to day, I get to work with the inventors of revolutionary technology, while still participating in all aspects of litigation.

Shawn: Finnegan is unique both in its breadth and depth of technical and IP-related legal knowledge. Our professionals have technical experience in almost every industry and technology, and our practice includes all aspects of IP. The firm also values high-quality legal work while fostering a culture of collegiality within the firm and civility and professionalism outside the firm. This ethos results in a firm full of top IP attorneys.

What are some typical tasks that a junior lawyer would perform in this practice area?

Susan: At Finnegan, we encourage our junior associates to jump into a case and continuously volunteer for the next level of responsibility. As an example, if you are asked to work on a document review, do it, but then offer to assist in preparing for a deposition using your knowledge of the documents, second-chair that deposition, and then ask to first-chair the next deposition. We try to get our junior attorneys as much time on their feet as possible, whether that is arguing motions before a court, taking depositions, or examining a witness at trial.

Shawn: The firm provides many fulfilling opportunities for a junior attorney depending on the specific practice area. For litigation, for example, the junior attorney may be assisting with discovery, preparing motions and papers, as well as developing technical and legal positions for the case. For contentious disputes before the PTAB, the junior attorney often has additional opportunities to work with experts and help prepare for depositions and hearings.

What kinds of experience can summer associates gain in this practice area at your firm?

Susan: Our summer associates gain real-world experiences in all aspects of intellectual property and do the same work that our junior associates do. With respect to patent litigation, summer associates will perform legal research, write briefs, attend depositions, and go to trial, in addition to training in all aspects of intellectual property law and attending social outings.

Shawn: Our summer program is designed to expose our summer associates to a range of substantive legal experiences. We understand that most of our summer associates have not selected a specific IP practice area, so we try to assign them real work involving the various areas within IP, including litigation, licensing, prosecution, opinion writing, IP management, and other legal issues. The firm also provides training programs that complement these substantive areas of law.

Susan Y. Tull, Partner — Patent Litigation, and Shawn S. Chang, Associate — Electrical Practice Group

Susan Tull is a partner in Finnegan’s Washington, DC, office. With years of particular focus on patent litigation, Susan Tull has been involved in all phases and forums of litigation. Her patent litigation, appeals, and post-grant proceedings practices focus on technologies related to consumer products, medical devices, automotive, and other mechanical and electrical systems. Susan represents clients before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit. Susan has actively participated in several trials, where she has examined witnesses and has managed every phase of patent litigation.

Shawn S. Chang focuses his practice on district court patent litigation, post-grant proceedings at the U.S. Patent and Trademark Office, and strategic patent counseling. He also advises clients on their U.S. and international patent portfolios, provides opinions of counsel, assists in licensing negotiations, and advises clients on IP business strategies, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms. He has represented clients in all aspects of electrical and computer technologies, including communications systems, wireless communications, data and signal processing, optical systems, computer and network architecture, semiconductor devices, unmanned aerial systems, and mobile devices.

Heather DiPietrantonio, Associate • Jessamine (“Jas”) Lee, Shareholder
Wolf, Greenfield & Sacks, P.C.

Describe your practice area and what it entails.

Heather: I guide clients through the patent application process, which includes drafting patent applications and prosecuting the applications at the U.S. Patent Office (USPTO). I also work with foreign counsel to prosecute internationally and work to obtain patents that will protect a client’s invention. I counsel clients on both patent- and business-related issues, including freedom to operate, licensing, and various due diligence processes.

Jas: My practice focuses on client counseling and IP portfolio management. I advise clients on how to protect their IP, including identifying patentable inventions, deciding which inventions to keep a trade secret, and developing filing strategies, as well as how to build and maintain their patent portfolios. I also advise clients from a defensive position, including reviewing competitor patents and assessing freedom to operate.

What types of clients do you represent?

Heather: I represent both large and emerging biotech companies developing antibody therapeutics. I also represent privately financed growth-phase companies developing vaccine technologies and prestigious academic and research institutions on the cutting edge of gene editing and nucleic acid nanotechnologies.

Jas: I particularly enjoy advising startup companies but also work with large global corporations, venture capital firms, and academic institutions. I have represented clients in a broad range of fields, including microfluidics, medical devices and diagnostics, drug delivery, bioreactors, cleantech technologies, electrochemical devices (lithium batteries), nanotechnology, microfabrication, materials chemistry, organic chemistry, and pharmaceuticals.

What types of cases/deals do you work on?

Heather: I generally work on cases related to patent prosecution and assessment for companies and research institutions in the genetic engineering, vaccine technology, and genetic mouse model spaces. I work with clients to develop and strengthen their IP portfolios, and I also work with clients to assess the strengths and weaknesses of their competitors’ IP portfolios.

Jas: I have worked with clients to develop and manage their patent portfolios, including our clients’ own patent applications and licensed-in patents. I advised one client through several stages of venture financing, acquisition, and integration with a multinational pharmaceutical and diagnostics company. I have also evaluated complex patent portfolios and developed strategies to best position clients in worldwide coordinated efforts. I have assessed clients’ freedom to operate (likelihood of getting sued) by coordinating non-infringement and invalidity studies and writing opinions directed towards our clients’ competitors’ patents. I have also analyzed patent portfolios as part of due diligence on prospective acquisitions for large clients and venture capitalists.

How did you choose this practice area?

Heather: Impulsively. One afternoon, while in the lab staring through a microscope, I thought, “I’m ready for a change.” A search for “alternative careers in science” landed me on “patent agent.” I applied for a position at a couple of IP boutiques, was fortunate to have been offered a position soon after, and dove in. I have been loving it ever since.

Jas: In graduate school, I worked on a project that ended up going through the patenting process, and through this experience, I had the opportunity to work with patent attorneys. I was intrigued by the process, and it soon became clear to me that patent law was an avenue where I could apply my scientific and analytic skills in a unique way. I spoke to several law firms in Boston that had a technology specialist program and chose Wolf Greenfield. The program allowed me to obtain hands-on experience in patent law and interact with clients.

What is a typical day like and/or what are some common tasks you perform?

Heather: One of the things I love about this career is that there is no “typical.” Each day is full of a mixture of different technologies, different client interactions, different strategies to develop, and different problems to solve. I spend my days writing, participating in conference calls, meeting with clients, teaching, and being taught. Every day is something new and exciting.

Jas: I manage patent portfolios for and work closely with several clients, so each day brings new and exciting challenges. On a typical day, I will have calls with clients about a particular matter, such as a new invention or how to argue against a rejection in an office action issued by the U.S. Patent Office. I work with individuals who help me with these analyses, and together, we formulate arguments and make recommendations to our clients. I review drafts of the responses themselves, as well as drafts for new patent applications that will be filed. I am also active in mentoring junior attorneys and technology specialists, so I meet with or speak with them regularly.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Heather: Someone entering this practice area should have a strong technical background, organizational skills, and outstanding communication skills—both written and verbal. It also helps to be calm, sensible, and adaptable.

Jas: Someone entering this practice area should be curious, be organized, be able to learn quickly, have strong analytical skills, be strong technically, and be able to communicate effectively. Much of our practice involves seeing a new technology for the first time and being able to ask the right questions to gain a solid understanding of it—enough to be able to describe it in your own words and distinguish it from other technologies, all the while instilling confidence in your client.

What is the most challenging aspect of practicing in this area?

Heather: The most challenging aspect for me is maintaining boundaries between work life and all the rest of life. I think a lot of us do what we do because we are really good at it, and we are really good at it because we enjoy it. If I didn’t set aside enough time to enjoy with friends and family, ultimately, I wouldn’t be any good at work.

Jas: My practice in patent law is extremely rewarding but also very intense when there are many things going on for several different clients. I find that I need to be recharged in order to focus on my work and use my time effectively, so I make it a priority to exercise regularly and spend time with my family and friends. My husband and I have two young children, and we are constantly coordinating their activities and our time together and balancing it all with the demands of work.

What do you like best about your practice area?

Heather: Our clients and colleagues. I am really fortunate to have had the opportunity to build strong relationships with our clients, many of whom are not only intelligent, driven visionaries, but are also kind, witty, and understanding. Also, as patent prosecutors—particularly in the biotechnology practice area—we are among the first to learn about and guide the development of the most exciting technologies, we have the opportunity to talk with and advise the most innovative minds, and we are responsible for arguing with the USPTO to secure valuable intellectual property rights.

Jas: I love the diversity in the types of clients I work with and the kinds of projects I work on. Every day brings a new challenge, and I am constantly learning something new, whether it’s a new technology, new aspect of patent law, or how to best address the needs of a client. I also love the flexibility of my job. I can take my work with me anywhere I go as long as I get it done and am responding to our clients’ and the firm’s needs.

What is unique about your practice area at your firm?

Heather: Leading biotech companies, innovative startups, and prominent research institutions consistently turn to us to protect and enforce their intellectual property rights. We take a team-based approach, including recognized leaders in the biotechnology area, combined with a mix of paralegals and seasoned administrative professionals to maximize efficiencies. We maintain a comprehensive internal educational program, which includes periodic lunches, seminars, 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.

Jas: Many of our practitioners have science or engineering degrees or advanced degrees. We also have more than 100 attorneys and technology specialists working in practice groups that are divided by technology, including biotechnology, chemical and materials technologies, electrical and computer technologies, mechanical technologies, and pharmaceuticals. It is, therefore, quite easy to put together a team that has the right technical fit to address a particular client’s needs, even when a client’s technology spans different technologies. We also have trademark, litigation, and post-grant groups.

What are some typical tasks that a junior lawyer would perform in this practice area?

Jas: Junior practitioners may be given an office action in which the USPTO has rejected the claims of a patent application. He/she would review the prior art cited by the examiner (typically a patent or research article), come up with a strategy for distinguishing our client’s invention from the prior art, and summarize their findings with a supervising attorney. They may then draft arguments for a response to be filed with the Patent Office. Junior practitioners work closely with supervising attorneys, so they receive feedback on their work.

Heather DiPietrantonio, Associate — Biotechnology, and Jessamine (“Jas”) Lee, Shareholder—Chemical and Material Technologies

Heather DiPietrantonio is a senior patent attorney practicing in the field of biotechnology with experience in gene editing, genetic engineering, nucleic acid nanotechnology, synthetic gene circuitry, nucleic acid vaccines, antibody therapeutics, and immune and stem cell therapeutics. Her practice focuses on patent prosecution, strategic patent portfolio development, and life cycle management. Heather counsels startup companies, research and academic institutions, and small to mid-sized biotech companies.

Jas Lee works with clients in IP strategy development and execution, including IP portfolio management, U.S. and foreign patent prosecution, non-infringement and invalidity opinions, and due diligence. She counsels a variety of clients, including startup companies, large global corporations, venture capital firms, and academic institutions on U.S. and international patent issues. Jas earned her B.Sc. in Chemistry from McGill University, her A.M. and Ph.D. in Chemistry from Harvard University, and her J.D. from Suffolk University Law School.

Christopher Douglas, Partner • Lindsay Church, Associate
Alston & Bird LLP

Describe your practice area and what it entails.

Chris: I work with both petitioners and patent owners in pre- and post-grant proceedings before the USPTO. Working with Fortune 100 multinational clients, I provide strategic portfolio advice during patent development and bring an approach resembling a cross between patent prosecution and litigation to successfully acquire and defend patent rights for my clients.

Lindsay: My practice is in IP litigation, with a focus on patent infringement cases in federal courts and before the USITC. I also track and analyze case developments, industry updates, and policy changes affecting IP rights for firm clients domestically and overseas.

What types of clients do you represent?

Chris: I represent large, multinational clients that span several industries, including data capture, sensors and IoT, warehouse automation, machine learning systems and data analytics platforms, imaging, medical device and equipment manufacturers, glass and ceramic materials, and even a business that designs specialty fire trucks and equipment. My practice covers a broad range of complex technologies. 

Lindsay: I’ve had great opportunities to work with clients across a variety of industries, including payment systems, footwear, and even fire trucks. The largest portion of my work has focused on the cellular communications space, including patents declared essential to various technical standards. By focusing on the cellular communications area, I’ve been able to build and hone my skills within one industry. But I’ve been able to put that skill set to use for other businesses, which creates a balance in my practice.

What types of cases/deals do you work on?

Chris: My casework varies, which is why I enjoy it so much. From the patent prosecution side, I’ve counseled a global developer of machine learning systems and data analytics platforms. I was patent counsel in acquisitions, transactions, and patent preparation/prosecution for the world leader in natural language generation. On the post-grant side, I have served as counsel for a Fortune 100 company in multiple IPR proceedings relating to in-home automation, location awareness, energy management systems, and data capture. I have also served as counsel for a leader in marine electronics in multiple IPR proceedings concerning sonar technology; a provider of technology for reservoir characterization, drilling, production, and processing to the petroleum industry in multiple IPR proceedings; and multiple inter partes and ex parte reexamination proceedings related to global positioning systems, motion control systems, middleware, and medical devices.

Lindsay: I work primarily on litigation matters, representing both plaintiffs and defendants during all phases of litigation—from the filing of the complaint through appeal. One of the most significant cases I have worked on was a victory for a cellular communications client before the USITC. I also work on patent policy matters and legislative strategy.

How did you choose this practice area?

Chris: Personally, I have always been interested in the latest technologies. When I decided to pursue a legal career, IP provided me with an intersection of my personal interests and professional goals. Now I meet with inventors at the forefront of technology. I hear about the latest innovations when they are just ideas and see them brought to life firsthand. I vividly recall the first time I sat down with an inventor. I relished hearing about his software development, but I also saw the gratification on his face because he valued our insight and work to protect his invention and bring it to the marketplace.

Lindsay: While I am an IP attorney, my background is in journalism. When I was a summer associate, I had the opportunity to work in various practices, including general litigation, IP transactions, and trademark/copyright. I was exposed to a variety of IP projects and was excited to realize that not only did I find the subject matters very interesting, but my interest in writing and my journalism skills lent themselves to IP litigation.

What is a typical day like and/or what are some common tasks you perform?

Chris: While there is no typical day, there is one constant for me: an early alarm clock! Because I work with multinational companies with engineers in Europe and Asia, my day begins at 5 a.m. when I immediately catch up on client communications. When my overseas clients head home, my day then turns to strategic thinking, analysis, patent applications, proceedings, and big filings.

While literally living in a world of evolving technology, which gives me great flexibility in client communications, I do carve out time for travel to meet my clients around the globe. There is no substitute for face-to-face meetings.

Lindsay: I have no typical day, which is one of the exciting parts of my practice. I could find myself spending time on case management and drafting briefs and motions. On most days, I’m communicating with clients and our internal teams about case strategy. I also assist with fact and expert discovery, including taking and defending depositions and meeting with inventors and technical and damages experts.

One current project on my plate is preparing to mock a case for an upcoming jury trial regarding fire truck patents. My days vary, which keeps me engaged and constantly learning.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Chris: I would advise young legal professionals interested in patent practice to focus on their tech degrees to ensure they are qualified to sit for the patent bar exam. But in college, engineers may not have as many writing opportunities as their peers. Seek out opportunities to develop and practice legal writing and advocacy skills. These are important skill sets that will help you when you begin your legal career—with or without courtroom aspirations.

Lindsay: I would recommend taking IP-focused law school classes. Understanding the substantive law before practicing allows you to identify and think more critically about the issues that arise during litigation.

It is also helpful to stay up to date on the industry news specific to your practice, as well as major legal decisions and policy changes that may affect that industry. By staying current and keeping my eye on the news, it helps me to better serve my clients.

What do you like best about your practice area?

Chris: The best part of my practice is figuring out a way to protect some of the world’s greatest technological innovations. It’s incredible what can be created today to help businesses and people alike. I consider myself lucky enough to get an inside first look at these developments and help them enter the marketplace.

Lindsay: In addition to the legal issues that arise over the course of complex litigation, each case is an opportunity to learn about a new area of technology, such as 5G. In today’s global marketplace, technology and innovation are everywhere. I get to have a special lens into seeing what new technologies and innovations may be in the works, watching them come to life, and knowing what’s needed to protect them.

What kinds of experience can summer associates gain in this practice area at your firm?

Chris: All Alston & Bird summer associates get to handle real billable work, both in patent prosecution and patent litigation. Summer associate work mirrors the job of a first-year associate, sitting in on every part of a project.

We also assign both an associate and partner mentor who help integrate our summer associates and plug them into the right diverse mix of projects. Our goal is that at the end of the summer, when they walk out the door, they want to come back because they know and understand the practice and work and are excited to be part of our team at the firm, where we hope they will have a long, successful career.

The firm invests in people. That culture creates a dynamic and collegial place to work. It’s no surprise that Alston & Bird has been ranked by Fortune as one of the “100 Best Companies to Work For” for 20 consecutive years. This year, we were also honored again by Fortune as one of the top employers for millennials. We’re very proud of that record.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Chris: When you practice in front of the patent office, a technical background is a requirement. But that shouldn’t discourage lawyers who want to pursue a career in IP. As the hiring partner in the Charlotte office, I’m talking to students and young lawyers all the time. I always tell them that there are plenty of areas that allow good lawyers with a strong interest in tech to work in IP.

Lindsay: Don’t be discouraged from practicing IP because you don’t have a technical background. In the litigation context, most often a specific background is not mandatory. And not having a technical background can even bring a valuable perspective to the team to distill complex information in a manner that translates well with judges and juries.

Christopher Douglas, Partner, and Lindsay Church, Associate — Patent Prosecution, Counseling & Review; Intellectual Property Litigation

Christopher (“Chris”) Douglas, a partner in Alston & Bird’s Patent Prosecution, Counseling & Review practice, represents both petitioners and patent owners in post-grant proceedings. Recognized as one of the more active post-grant practitioners nationwide, Chris remains one of the few practitioners to tout confirmation of all claims in an inter partes review (IPR) in a final written decision on behalf of a patent owner. His familiarity with both pre-grant and post-grant proceedings informs his ability to counsel and secure foreign and domestic patent rights for his clients. Eager to share his knowledge, Chris co-wrote the USPTO Post-Grant Trials Handbook and speaks on the patent practice regularly.

Lindsay Church, an associate in Alston & Bird’s IP Litigation practice, works on cases involving all aspects of the IP landscape, including complex patent litigation in federal courts and before the U.S. International Trade Commission. She has also had the opportunity to work on patent policy matters and legislative strategy and draft amicus briefs on behalf of firm clients regarding significant IP issues. Lindsay joined Alston & Bird in September 2016 and worked as a summer associate in 2015.

Nicole Townes, Partner
Knobbe Martens

Describe your practice area and what it entails.

I have a very diverse practice. However, I dedicate most of my time to assisting clients with brand protection and enforcement. I help clients protect their trademark or trade dress rights and prevent third parties from improperly capitalizing on the goodwill my clients have developed in their brands. Conversely, I advise and defend clients when another party makes allegations of trademark infringement against them. I help clients obtain trademark registrations in the U.S. and foreign countries. I also represent clients in U.S. opposition and cancellation proceedings, which determine whether a party has the right to obtain and own a trademark registration.

What types of clients do you represent?

I represent clients across a diverse range of industries, including food and beverage, fashion and beauty, home furnishings, entertainment, software, engineering services, and medical devices. Some exemplary clients include Monster Energy, simplehuman, Holly Hunt, AECOM, Gavrieli Brands, and Inogen.

What types of cases/deals do you work on?

I work on trademark, trade dress, copyright, licensing, false advertising, unfair competition, trade secret, and patent litigation matters. I also manage worldwide trademark portfolios and enforcement strategies. I assist clients with domestic and international trademark selection and clearance, prosecution, and procurement. I also represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

How did you choose this practice area?

I chose intellectual property because it is always evolving with changes in technology. During my first year of practice, I worked on a few trademark matters, and I really enjoyed them. I liked that brands and branding are part of everyday life.

What is a typical day like and/or what are some common tasks you perform?

My days vary widely. However, some of the tasks I typically encounter include conducting client calls or meetings regarding litigation strategy or trademark protection strategy, corresponding with opposing counsel, negotiating agreements, drafting or responding to motions, participating in internal team strategy meetings, corresponding with foreign attorneys regarding trademark protection and enforcement, and attending legal or client-centric networking events.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

I recommend taking intellectual property classes and participating in an intellectual property clinic in law school. I also recommend joining any intellectual-property-focused organizations. Also, writing, negotiation, and oral advocacy skills are very important in my practice. Thus, I recommend participating in a journal and moot court or mock trial, as well as taking a negotiations class.

What do you like best about your practice area?

I enjoy the fast pace and challenge of my practice. IP law is constantly evolving, and my clients continually invent new and effective ways to engage with consumers. Every day, I learn something new.

What are some typical tasks that a junior lawyer would perform in this practice area?

Knobbe tries to expose junior lawyers to a wide range of tasks. Some exemplary tasks a junior lawyer may encounter in the trademark prosecution area include reviewing trademark searches and preparing clearance opinions. Junior lawyers also regularly draft Office Action responses during examination of U.S. trademark applications. On the litigation and enforcement side, junior lawyers routinely draft cease and desist letters, pleadings, discovery requests and responses, and motions.

What kinds of experience can summer associates gain in this practice area at your firm?

Knobbe allows its summer associates to select projects that interest them. A summer associate interested in trademark prosecution will gain experience reviewing trademark searches and providing clearance opinions. The summer associate will also have opportunities to draft Office Action responses. As for litigation and enforcement, summer associates will assist with legal research projects and prepare initial drafts of discovery requests, pleadings, and motions. Summer associates may also have the opportunity to attend depositions, hearings, trials, and litigation team strategy meetings.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

I recommend that you show a demonstrated interest in intellectual property law. For example, you should take the intellectual property classes offered at your law school and participate in intellectual property organizations or intellectual-property-focused journals. I also recommend that you try to obtain summer internships or jobs that expose you to intellectual property law. Finally, develop a clear and persuasive explanation for why you are interested in intellectual property law that you can provide during interviews.

Nicole Townes, Partner — Trademark and Litigation

Nicole Townes counsels a wide range of clients on litigation matters relating to trademarks, trade dress, copyrights, false advertising, unfair competition, trade secrets, and patents. Her practice also focuses on domestic and international trademark selection and clearance, prosecution, and procurement. She has experience managing worldwide trademark portfolios and enforcement for a number of large clients. Nicole frequently represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. In addition, Nicole has assisted clients in combatting counterfeit and gray-market goods with the assistance of U.S. Customs. She has also handled domain name disputes and advised clients regarding notice and takedown procedures for social media sites and domestic and foreign e-commerce websites.

Nicole serves on the firm’s Diversity and Recruiting Committees. She is also a contributor to the firm’s Fashion and Beauty and Litigation blogs. Nicole is the Chair of the Orange County Bar Association Intellectual Property Section and a board member of the Orange County Intellectual Property Law Association.

Nicole attended Vanderbilt University for both her undergraduate and law degrees.

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