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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.
Tara Elliott, Partner • Michelle Ernst, Associate
Latham & Watkins

Describe your practice area and what it entails.

Tara: As an IP trial lawyer, I represent both plaintiffs and defendants in enforcing and defending their patents, trademarks, trade secrets, and other confidential information. I litigate cases in federal district court, proceedings before the Patent Trial and Appeal Board, and appeals at the Federal Circuit. I also draw on my litigation experience to counsel clients during pre-suit dispute resolution as it relates to intellectual property rights.

Michelle: My patent litigation practice focuses on brand-name pharmaceuticals and biologics. I litigate cases in federal court, parallel proceedings at the Patent Trial and Appeal Board (PTAB), and related appeals at the Federal Circuit. These cases involve disputes over pharmaceutical drugs and biologics and the patents covering those drugs.

What types of clients do you represent?

Tara: My background is in computer engineering, and my clients include technology companies, including many household names. I also represent companies across industries such as retail, food and beverage services, defense industry, financial services, and manufacturing that employ technology or rely on IP assets, though they are not considered tech companies themselves.

Michelle: I represent clients in the biopharmaceutical industry, specifically pharmaceutical and biologic companies. These are the companies that are innovating and developing new drugs and other medical innovations that save and improve lives.

What types of cases/deals do you work on?

Tara: My patent cases are usually litigated in federal district courts, and occasionally the ITC, where exclusionary orders can be sought as a remedy. Outside of the courtroom, I work on many matters that are pre-litigation in nature and involve negotiating license agreements and seeking resolution before a dispute goes to court. I also litigate contract and business disputes that are IP adjacent, such as breaches of contract, collaboration, or non-disclosure agreements that are connected to the development or commercialization of intellectual property.

Michelle: Patent litigation cases fall under the jurisdiction of federal courts, though there are sometimes parallel validity proceedings before the PTAB, and appeals proceed before the Federal Circuit. The majority of my cases fall under the Hatch-Waxman Act, a statute that governs the interplay between brand and generic pharmaceutical companies, including before the Food and Drug Administration and in attendant patent litigation proceedings. In my cases, I typically represent the plaintiff brand pharmaceutical company in enforcing patents that cover their innovative drug.

How did you choose this practice area?

Tara: It happened very early for me. I had taught myself to code on a Radio Shack computer while in middle school and was always interested in technology. I also knew I wanted to be a lawyer. These were parallel interests for me, until I got to high school calculus, and my math teacher encouraged me to study engineering. I realized engineering could be a distinct segue into law. I hatched a plan to be an engineer for five years, then go to law school. I wanted to be a technology lawyer. And as soon as I learned about IP in college, I knew that was the road to follow and eventually focused on litigation. 

Michelle: I studied genetics and molecular and cell biology in college and planned to go to medical school. Following college, I worked as a cancer cytogeneticist and conducted cancer research as a Fulbright scholar in Singapore. While I greatly enjoyed the sciences, I had other interests too, including the law. To bridge my interests, I decided to go to law school and pursue patent litigation. It allows me to stay immersed in science while practicing law, the best of both worlds.

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

Tara: This week included revising an opposition brief to a motion to dismiss in a patent case, editing a motion to dismiss in a different patent case, interviewing more than a half-dozen law students and lawyers who want to join Latham, debriefing with colleagues on presentations made to clients, meeting with clients to discuss litigation strategy, reviewing documents related to litigation strategy, and working on a pitch for a new matter. And that is probably just half of the projects I worked on this week. 

Michelle: No day is typical. Litigation is fun because there are always new issues to analyze and resolve. My day also depends on the stage of litigation. If the case is close to trial, I will be doing witness preparation and analyzing the best way to present our case to the court through witness examinations and other evidence. If the case is in its earlier stages, I might be taking depositions, working with experts, and analyzing the infringement and validity issues for the patents at issue in the case.

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

Tara: Law students who have technical degrees should strongly consider taking the patent bar, irrespective of whether they have decided on patent prosecution or litigation. Patent bar registration is a marketable credential. Clerking in courts that handle patent disputes is also valuable, such as trial courts in Delaware, Texas, and California, as well as the ITC and the Court of Appeals for the Federal Circuit. A technical degree can be valuable but is by no means necessary. However, a keen interest in learning new technology and a willingness to roll up your sleeves and learn complex technical matters is important.

Michelle: Many patent litigators have a science background, but that is not required. However, an appreciation for and interest in science and technology is important. I strongly recommend taking a general patent law class if available at your school. And, if you’re interested in the litigation side of IP, participating in a moot court or similar experience that allows you to make arguments on your feet would be beneficial.

What do you like best about your practice area?

Tara: I’m a lifelong learner with a persistent curiosity. There is always something new to learn when working in IP. Although some aspects are routine, the work never gets old; the subject matter is always new and interesting.

Michelle: Working with innovative companies that are making new drugs that save lives is pretty exciting. Because of Latham’s global footprint and stature, we work on cases for the very top pharmaceutical clients working on the cutting edge of medicine.

What is unique about your practice area at your firm?

Tara: We go to trial a lot. And we draw on a deep bench of trial lawyers, which is fairly unique. Some practices are built around a few lead trial lawyers, but we can call on nearly a dozen multi-generational and experienced first-chairs. This gives clients a lot of options depending on the specifics of the matter and spreads the workload, which can allow us to be even more effective. This broad base is also healthier from a succession-planning standpoint.

Michelle: Latham’s global and multidisciplinary nature allows cases to be staffed across offices and permits an integration between practice groups that benefits the overall service we can provide to our clients. Our practice is collaborative and diverse, with each person contributing a unique perspective to our cases.

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

Tara: Legal research is always part of the job of a junior lawyer, but in our practice, you get to do much more than that. You will help write briefs, prepare for and participate in interviews and depositions, and develop the facts and themes of the cases you work on.

Michelle: The Patent Litigation group staffs matters leanly, so junior lawyers are provided the great opportunity of taking on significant responsibility. For example, a junior associate will spend time digging into the patented technology, conducting legal research, drafting discovery and pleadings, and preparing for depositions.

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

Tara: There are multiple paths. You could pursue the straight law firm path of associate to partner. Or you could end up at a law firm with diversions: to a clerkship and back or in-house and back. You could move from associate to a government position at the Patent and Trademark Office or go in-house either in the legal department or on the business side. If you enjoy working with technology and the law, there is an array of opportunities and work environments to explore.

Michelle: Working at Latham provides a platform for several great career paths. One path is progressing through the associate ranks to partner. However, if law firm partnership is not your goal, the skills and experiences developed at Latham provide a great opportunity to consider in-house opportunities, including with clients you had the opportunity to work with at Latham.

Tara Elliott, Partner, and Michelle Ernst, Associate—Litigation & Trial

Tara Elliott is a partner in the Washington, DC, office of Latham & Watkins. She is a first-chair trial lawyer whose practice focuses on high-profile intellectual property proceedings and commercial litigation. Ms. Elliott currently serves on the Board of Trustees for the American Intellectual Property Law Education Foundation and the Federal Circuit Lawyers’ Advisory Council. She has previously served as a Special Master in the District Court for the District of Delaware, clerked for the court’s chief judge, and clerked for a judge on the Federal Circuit Court of Appeals. She began her career at the CIA where she worked as a computer engineer and an analyst.

Michelle Ernst is an associate in the New York office of Latham & Watkins. Her practice focuses on patent litigation, with an emphasis on the pharmaceutical and biotechnology industries. Ms. Ernst has represented brand-name pharmaceutical clients from the pre-litigation stage through trial in various federal district courts and appeals to the Federal Circuit, as well as in inter partes and post-grant review proceedings before the U.S. Patent and Trademark Office. Prior to law school, she was a cancer cytogeneticist and conducted cancer research as a Fulbright scholar in Singapore.

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 property 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.

Arpita Bhattacharyya, Partner • John Livingstone, Managing Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Describe your practice area and what it entails.

Arpita: My practice involves all phases of patent litigation, including discovery efforts, claim construction, working with technical and damages experts, depositions, drafting motions and briefs throughout every phase of litigation, and trial. In my patent office practice, I represent petitioners and patent owners in post-grant proceedings, where my role involves preparing written submissions, taking and defending depositions, and arguing at the oral hearing. My counseling practice includes providing strategic advice through opinions of counsel, patent portfolio development and management, due diligence investigations, and freedom-to-operate analysis.

John: My practice involves complex, high-stakes patent litigation in the pharmaceutical, chemical, and biotechnology arenas. I am involved in all phases of litigation, including pre-suit due diligence, discovery, motion practice, trial, and appeals. My cases often include co-pending, post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, and I lead those efforts as well.

What types of clients do you represent?

Arpita: My client base is very diverse and ranges from small startups to established, publicly traded companies in the areas of medical technologies, diagnostics, and high tech. 

John: My clients run the gamut in terms of size and technology, from small startups that recognize the value added of strong IP to large, established global players in the areas of small-molecule pharmaceuticals, biologics, biotechnology, genetically modified organisms, CRISPR, and diagnostics.

What types of cases/deals do you work on?

Arpita: A major focus of my practice is district court litigation and contested PTAB proceedings in the technology areas noted above. I represent both patentees and accused infringers in litigation and at the PTAB. I also leverage my technical background and litigation experiences to help startup companies build and manage their patents portfolios.

John: I work on contentious proceedings, typically in the district courts, the International Trade Commission, or the PTAB in the technology fields noted above. For instance, I have worked on AstraZeneca’s blockbuster drugs CRESTOR®, SAXAGLIPTIN®, and FARXIGA®; Ajinomoto’s feed-grade tryptophan produced by genetically modified organisms; Kaken Pharmaceutical’s drug JUBLIA®; and Nissei ASB’s mold tooling technology for making plastic packaging materials via injection stretch blow molding machines.

How did you choose this practice area?

Arpita: I have a B.S. in Electronic Engineering, M.S. in Bioengineering, and a Ph.D. in Biomedical Engineering, so patent law was an easy choice for me to apply my technical background. Within patent law, however, I prefer to have a mixed practice because I believe that my experiences with litigation and patent office practice complement each other and better prepare me to serve my clients.

John: I have a B.S. in Biochemistry and an M.S. in Biology with a focus on neuroscience, so practicing patent law in the life sciences area was always going to be a natural fit for me. The question then became whether I wanted a counseling practice, a litigation practice, or both. Personally, I was immediately drawn to the nature of a litigation practice, which incorporates many of the skills necessary to be a first-class counselor but tends to be more intensive and team based.

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

Arpita: On any given day, I could be studying a new technology and reviewing related publications, developing case strategy, drafting a brief, taking or defending a deposition, preparing for an upcoming hearing, or working with an expert on preparing a report/declaration. These are just a few examples of what I could be doing on a typical day. Every day is very different!

John: Ha—there is no such thing as a typical day. On any given day, I could be working on case strategy, dealing with discovery requests/responses, attending a meet-and-confer with opposing counsel, drafting a brief, taking or defending a deposition, preparing for a hearing, attending settlement negotiations, pitching for new work, or strategizing with a client on how to create freedom to operate or leverage our legal strategy to effectuate a business goal. That variety is what I absolutely love about my practice.

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

Arpita: If you aspire to be a patent litigator, your Civil Procedure, Evidence, and Trial Advocacy classes can be very helpful. Also, take as many patent law classes as you can, so that you understand the basics of patent law really well when you start as a first-year associate. Mock trials and moot court can also provide valuable stand-up experience.

John: Any class that requires you to think creatively, that gives you the opportunity to engage in adversarial exercises (bonus if it is on your feet), and that strengthens your persuasive writing will be useful. You’ll learn more substantive law in your first year of practice than anyone cares to admit, but creative thinking, advocacy, and persuasive writing are the fundamentals to a strong practice in any area.

What do you like best about your practice area?

Arpita: My practice area and versatile technical background allow me to work with a diverse range of clients in many different technology areas. I love learning about my client’s technology platform(s) and applying that knowledge to help my client assert or defend its IP or to provide strategic advice to manage and grow my client’s patent portfolio.

John: I love working with clients to achieve their business goals. I love working on complex, sophisticated matters that require thoughtfulness and creativity. I love making law. And I love working with the most talented professionals in the business.

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

Arpita: The junior attorneys on my teams typically help with conducting legal research, drafting memoranda that summarize substantive areas of law, drafting motions and briefs, helping prepare for and second chairing depositions, and managing discovery.

John: I want the lawyers on my teams to be invested in the project and getting the best result for our client. To that end, I give junior lawyers as many substantive opportunities as they can handle. That includes managing discovery, drafting motions and briefs, preparing for and maybe even taking depositions, and taking the lead on discovery disputes.

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

Arpita: Finnegan provides summer associates with real, hands-on experience. For those interested in prosecution and counseling work, you could be interacting with clients to learn their technology and then drafting patent application(s) or responding to actions taken by the Patent Office. You could also be doing legal research and drafting memoranda summarizing those results and even drafting portions of legal briefs. We also let summer associates observe depositions and court hearings, which provide valuable practice tips that you can use as a junior associate.

John: We try to give our summer associates an experience that mirrors what it’s like to be a junior associate. That means doing real, substantive work for an actual project. That can include performing legal research, drafting discovery, sitting in on depositions, or participating in a client pitch. We also throw in a number of social activities so we can all get to know each other better.

In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?

Arpita: The biggest change to my practice due to the pandemic has been virtual depositions and court hearings. I had to adapt very quickly to online platforms for participating in client meetings, prepping witnesses for depositions, taking and defending depositions, and attending court hearings and settlement conferences. The upside to everything being virtual is no travel!

John: The biggest effect on my practice was creating a home office and getting used to working from there. Thankfully, our firm was already using virtual platforms for meetings among various offices, so the transition was pretty seamless. From a substantive perspective, our litigation cases slowed down early in the year, but courts got used to operating virtually, and we are up and running now. Admittedly, virtually taking/defending depositions and participating in hearings is not ideal, but we are getting used to it.

Arpita Bhattacharyya is an all-around patent attorney. Her practice covers all aspects of patent law, including district court and ITC litigation, contested patent office proceedings, Federal Circuit appeals, and client counseling, with an emphasis on patents related to medical devices, diagnostics, and electronic and mechanical technologies. She has been recognized as a WIPR Influential Women in IP Trailblazer. She is a resident of the firm’s Palo Alto office.

John Livingstone is the managing partner of the firm’s Atlanta office and is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit. He also serves as lead counsel in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). John was a resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues.

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—does 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.

Brian Flynn, Partner
Knobbe Martens

Describe your practice area and what it entails.

The majority of my practice is in patent prosecution and patent portfolio management. I work with clients to develop strategies for protecting their innovations and advancing their business interests by building patent portfolios. I speak with clients to learn about their technologies, draft patent applications, and prosecute those applications at the U.S. Patent and Trademark Office. I also work with clients to develop international filing strategies and manage the prosecution of their international patent portfolios. Additionally, I perform due diligence for patent acquisitions and prepare intellectual property opinions.

What types of clients do you represent?

My clients range from individual inventors to Fortune 500 companies. Many of my clients are medical device companies or medical practitioners. I have also represented clients in a variety of other industries, including automotive, electronics, food and beverage, and sporting goods and recreation. Additionally, I prosecute patent applications in the United States for foreign law firms.

What types of cases/deals do you work on?

I prepare and prosecute both utility and design patent applications, including appeals at the U.S. Patent and Trademark Office. I also perform due diligence and draft intellectual property opinions. Additionally, I assist clients in patent strategy, manage patent portfolios, and oversee international patent prosecution.

How did you choose this practice area?

After studying bioengineering, I gravitated towards intellectual property due to the opportunities for learning about and working with new technologies. At the start of my career, I was able to work on patent prosecution and litigation matters. I chose to focus on patent prosecution because I enjoyed working with inventors and developing patent strategies to help them protect their innovations.

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

Every day is different, but common tasks include drafting patent applications, responding to Office Actions, attending invention disclosure meetings or patent strategy meetings with clients, conducting patent examiner interviews, attending internal strategy meetings, and attending networking events.

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

I was able to take a patent prosecution class in law school in which I drafted a mock patent application and responded to a mock Office Action. If any similar opportunity is available, I could not recommend it enough. It provided me with a great foundation to build on as a summer associate. I would also recommend any class that gives you the opportunity to practice advocacy skills. Classes like Trial Advocacy were vital for developing skills I use while prosecuting applications at the Patent Office. Any opportunity to practice writing would also be beneficial.

What do you like best about your practice area?

No two days are ever the same. I continuously learn about new technologies. As my clients’ technology and business interests change, I get the opportunity to face new challenges that help me grow as an attorney.

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

Summer associates typically perform legal research, draft patent claims, draft patent applications, and draft responses to Office Actions. As a summer associate, I was also able to sit in on an examiner interview and attend an invention disclosure meeting at a client’s office.

In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?

I have been working 100 percent from home since March. So far, the scope of the work has generally stayed the same, but there is a big difference in communication, both with co-workers and clients. In the office, it was easy to stop by a colleague’s office for quick questions or strategy discussions. Now, meetings can require a little more planning. Similarly, invention disclosure meetings with clients are very different. In the past, I had visited several clients’ offices to view their technology in person, but now most of that is done over video conferencing.  There has also been a big shift towards virtual events for networking. Clients have also begun developing technology related to COVID-19, and I expect we will continue to see a great deal of technological development stemming from the pandemic, not only on the medical side, but also related to the current shift toward remote work.

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

When you are interviewing for IP positions, you are going to be asked why you are interested in IP. You will want to have a well-thought-out response and be able to point to a few experiences that demonstrate your interest. For example, taking IP classes, joining IP organizations, or participating in an IP journal or moot court would help show that you are genuinely interested in IP. It would also be helpful to look for internships that provide IP experience.

Brian Flynn, Partner—Patents

Brian Flynn focuses on patent prosecution and patent portfolio management. He counsels clients in a wide variety of technologies, including medical devices (e.g., medical and dental instruments, implants, diagnostic equipment, and communication and data systems), mechanical technologies (e.g., automotive technology, sporting goods, kitchen appliances, beverage containers, and toys), and electronics (e.g., digital camera technology, mobile devices, GPS devices, and sensor technology). In addition, Brian has assisted clients with patent acquisition due diligence and intellectual property opinions.

Brian has served as an editor of and contributor to the firm’s medical device blog.

Brian received his law degree from the University of Illinois College of Law, where he served as the secretary for the Intellectual Property Legal Society and as an articles editor for the Journal of Law, Technology & Policy. Prior to his legal education, he received a Bachelor’s Degree in Bioengineering from the University of Illinois.

Han-Wei (“Harvey”) Chen, Partner
Perkins Coie LLP

Describe your practice area and what it entails.

My practice includes two focuses: to help companies protect their intellectual properties and to help international companies navigate through U.S. legal waters. For the first part, I work with my clients to tailor their IP portfolio development and enforcement strategies to fit their business goals, as well as work with their engineering teams to capture their investment in research and development. I also represent my clients before the U.S. Patent and Trademark Office to argue for, procure, and/or defend their patents. When it is applicable, I challenge certain patents’ validity for my clients. For the second part, I typically play the role of a de facto in-house counsel, helping a company’s management team and legal team understand and develop solutions to the issues they face in the U.S., as well as overseeing the implementation of those solutions.

What types of clients do you represent?

I represent clients who build their businesses on technology of any sort and clients whose international business maps include the U.S.

What types of cases/deals do you work on?

I work on IP portfolio strategizing and review; patent procurement; patent due diligence review and analysis; infringement/validity analysis and opinion letters; freedom-to-operate projects; targeted patent prosecution; and patent ex parte appeals and post-grant proceedings before the Patent Trial and Appeal Board.

How did you choose this practice area?

Since I was trained as an electrical engineer and a computer scientist, learning about new technologies never gets old for me. Also, born and raised in Asia, I am an immigrant who is very familiar with the culture and intricacy of companies in Asia, as well as the legal and business issues they face.

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

My daily routine includes discussing business and IP legal strategy with company management; monitoring the progress of patent procurement cases; reviewing and supervising associates’ and paralegals’ work involving patents; conducting invention disclosure meetings and work with inventors; coordinating with foreign counsel on clients’ international IP portfolios; hosting interviews with USPTO patent examiners; and drafting responses, briefs, and memoranda for my cases.

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

The first one is certainly patent bar exam courses and the patent bar, which will provide the key to the patent prosecution world. I would also encourage law students and lawyers to gain exposure to as many different IP arenas as practical. I tend to think patent prosecution, licensing, and litigation are the legal manifestations of three practical ingredients for success in high-tech companies: technology, business, and law. The more business savvy a patent attorney can be, the better the attorney can serve the client.

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

A successful patent lawyer has to wear many different hats—a savvy businessperson, an effective leader, a meticulous project manager and inspector, a sensible engineer, a creative problem solver, a doer, and a person who has common sense (in a lot of areas).

What do you like best about your practice area?

I love it because my practice gets the best-balanced blend of all three disciplines of my interest: technology, business, and law.

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

A junior lawyer may conduct legal and factual research; draft legal memoranda; interview inventors; draft patent applications; and draft responses to USPTO office actions.

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

For all the areas of IP practices that are out there (i.e., patent prosecution, patent litigation, technology licensing and transactions, trademark prosecution, trademark enforcement, trade secret, copyright practices, and privacy and other state IP rights), probably only patent prosecution needs a relevant technical/science background. I would encourage lawyers even
without the technical or science backgrounds to start from other IP fields. I personally have worked with many, many stellar patent and IP attorneys who do not have technical or science backgrounds, who obviously all have excellent understanding, to the extent necessary, of the relevant subject-matter technologies. If you are smart enough, you’ll overcome the obstacles and learn it. Engineers or not, most people acquire the necessary technical and industrial knowledge on the job anyway. That investment will gradually make you an expert in that particular niche and become an entry barrier for your competitor.

Han-Wei (“Harvey”) Chen, Partner—Intellectual Property

Harvey Chen is a partner with Perkins Coie’s Intellectual Property (IP) group. His work focuses on patent procurement, strategy planning and counseling, post-grant validity contentions (e.g., inter partes reviews), and litigation support for electrical and mechanical arts. He also provides trademark consultation and registration services.

Before becoming a lawyer, Harvey worked as an engineer at Philips Semiconductors. His legal practice includes work with a wide variety of technologies and industries, including consumer electronics, embedded system, digital and analog circuit design, IC manufacturing, telecommunication and computer network, computer architecture, cloud computing, and big data processing.   

Harvey has drafted and prosecuted many U.S. and foreign patent applications; his work also includes invention disclosure meetings, examiner interviews and negotiations, and appellate proceedings. He helps companies shape their patent portfolios and develop their IP strategies, formulates patent mining strategies, and performs patent analyses in due diligence projects for corporate transactions. Harvey also provides support for patent litigation and post-grant proceedings, including preparing infringement and invalidity claim charts, performing prior art searches, and providing client strategic consultation.

Harvey is fluent in spoken and written Mandarin Chinese and Taiwanese and works to help Asian companies navigate legal issues in the United States.

Pauline M. Pelletier, Director • Chase Hammond, Associate
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Describe your practice area and what it entails.

Pauline: My practice involves significant amounts of written and oral advocacy, with a particular focus on patent litigation before district courts and federal agencies, including the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC). My cases are in a range of technology areas, from biotechnology and pharmaceuticals to consumer electronics and automotive technology. I also handle appeals to the Federal Circuit.

Chase: My practice includes drafting and filing new utility and design patent applications for clients, as well as prosecuting utility and design patent applications at the United States Patent & Trademark Office (USPTO). I provide strategic advice to clients on how to achieve effective patent protection for their inventions. In addition, I am involved in various other areas of patent law, including patent invalidity opinions, non-infringement opinions, freedom to operate searches, and inter parte review (IPR) proceedings.

What types of clients do you represent?

Pauline: I have represented Fortune 500 companies and sole inventors. I’ve handled a significant amount of patent litigation related to therapeutics (e.g., small-molecule drugs and large-molecule biologics). Recent work includes advising clients in cannabinoid therapeutics; the groundbreaking, Nobel Prize-winning gene-editing technology CRISPR-Cas9; and electric vehicle technology, including EV charging stations and lithium-ion batteries. I have been involved in cases relating to popular consumer products, such as the iPhone, safe flameless candle technology invented at Disney, and Invisalign.

Chase: I represent a variety of clients, including Apple, adidas, Pepsi, Corning, and Taylor Made Golf Company.

What types of cases/deals do you work on?

Pauline: I have litigated in various U.S. district courts. These actions typically involve allegations of patent infringement, although some have involved trade secret misappropriation or business tort claims. I also work frequently on challenges to patent validity before the USPTO called inter partes review proceedings, which are trial-like agency adjudications with limited discovery. I have handled patent interferences, re-examinations, and appeals from patent prosecution activities—both to the Federal Circuit and in district court in Section 145 actions. I also do Section 337 investigations before the International Trade Commission, which have broad discovery and offer injunctive relief by barring importation of products that infringe valid patent claims.

Chase: I represent my clients’ interests in front of the USPTO and negotiate with the personnel to secure effective patent protection for inventions. Specifically, I begin by working directly with inventors to fully capture and effectively describe their innovations and prepare their patent applications. The goal is to secure patents with claims that are valuable and enforceable.

How did you choose this practice area?

Pauline: I love patent law and have always focused my practice on areas where patent legal expertise is critical. Over the years, that has evolved. For example, in 2012 the America Invents Act (AIA) created the PTAB and inter partes review proceedings, and this fundamentally changed the patent enforcement and defense landscape. The PTAB has taken on increasing significance in the past five years, as district court actions are increasingly stayed pending review of the asserted patents by the PTAB. Having that expertise, both procedural and substantive, has been key to delivering great results for clients, whether with respect to challenging, asserting, or defending patents.

Chase: During my senior year as an undergraduate engineering student at Virginia Tech, I took an environmental law course as an elective. At the time, I only chose that course because it was a good fit for my schedule. However, shortly after beginning the course, I realized that I really enjoyed analyzing legal issues. To me, analyzing legal issues is very similar to analyzing technical issues. Both require applying a set of unique rules and variables to a problem to achieve a desired outcome. After finishing the environmental law course, I took an intellectual property law course the next semester, and I was hooked.

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

Pauline: The average day is mostly spent reading, writing, and being in meetings and on calls. I work on developing case theories; reviewing case law; reviewing documents and transcripts; writing briefs or motions; and preparing for hearings, arguments, and depositions. At all stages of a case, I spend significant amounts of time communicating with the client, joint defendants, and opposing counsel. When a case is in discovery, I travel and participate in depositions. When a case is in the dispositive motions or trial stage, I travel and prepare to be in court. For appellate work, I spend significant time researching the law, reviewing the record, and crafting arguments for the principal brief. Once the appeal has been calendared for oral argument, I keenly focus on preparing, including participating in mooting sessions.

Chase: It is tough to describe a “typical” day for me because many times, I end up working on something I did not expect to be working on that day. This makes this job exciting. In general, I spend my days reviewing USPTO office actions and prior art, drafting office action responses or patent applications, communicating with clients, and working with my assistants and team of paralegals to file documents at the USPTO. However, every day is different and brings its own set of challenges.

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

Pauline: I would recommend spending the time you have in a classroom to learn the substantive and procedural law as well as you can. Once you start practicing, much of the research you do will be very practical in nature, focused on a particular venue or a specific issue or fact pattern. Having a strong foundation on the basics of civil procedure, evidence, administrative law, commercial law, contract law, as well as patent law will serve you well in the long run. School is the best (if not the only) time to build that foundation. The theoretical framework for how law is practiced is vitally important and helps ensure that the theories you pursue can withstand scrutiny, both at the trial and at the appellate level.

Chase: I encourage young lawyers to take writing classes and constantly try to improve their writing skills. Effective writing is important when drafting legal documents, such as briefs or memos, and it is critical for effectively communicating with colleagues and clients.

What do you like best about your practice area?

Pauline: I like the complex and dynamic nature of the field as well as the focus on technology and innovation. I‘ve had the privilege over the years to work with clients on cases involving society-changing technology and many life-saving innovations. And while not every case involves cutting-edge or ground-breaking technology, all the cases I have worked on have presented complex and interesting technical or legal issues. Patent law is specialized, and for an area of law that has been around since the start of the country, it changes more often than you might expect. For example, the increasing role of federal agencies in the patent landscape has raised some interesting and novel administrative legal issues. It’s safe to say I have never been bored working in this field.

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

Chase: Junior lawyers often have the opportunity to jump right in on patent drafting and prosecution projects. A junior lawyer can expect to work directly with a supervising attorney to help draft and file new patent applications, draft and file office action responses, and manage other aspects of a patent application family.

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

Pauline: At any given time, we have litigations pending in various patent-related venues, including in district courts, before the PTAB, and before the ITC. Summer associates have the unique opportunity to survey each type of case. Understanding the nuances of each venue, by observing their similarities and differences, can be a great way to get familiar with the practice of patent litigation, including how patent litigation works, why rights are enforced and challenged the way they are, and what practitioners and clients view as the strategic advantages and disadvantages of each venue. Each of these venues has a distinct feel (e.g., some have more discovery than others, some are before an agency as opposed to an Article III judge, some are limited in scope, some offer special remedies), and a summer position can be a good time to assess what does or does not suit you.

Chase: Summer associates can experience all facets of patent prosecution at my firm. They will have the opportunity to review office actions and learn how to draft responses to those office actions. They will also have the opportunity to participate on client calls and calls with the USPTO personnel. These opportunities provide summer associates with a glimpse into how patent prosecution works and how to strategically achieve client goals during prosecution. In addition, there are opportunities to participate in other projects, such as legal research and technical research. And, of course, there are really great events and activities to get to know each other and the firm on another level.

Pauline M. Pelletier, Director—Trial & Appellate Practice Group;
Chase Hammond, Associate— Mechanical & Design Practice Group

Pauline M. Pelletier is a director in Sterne Kessler’s Trial & Appellate practice group. She is experienced in patent litigation before the federal courts and the ITC; post-grant trial and reexamination practice before the USPTO; and appeals before the U.S. Court of Appeals for the Federal Circuit, where she clerked prior to re-joining the firm. Pauline’s clients include leading companies in the life sciences, electronics, and automotive industries. She also counsels clients in emerging and regulated industries, including cannabinoid therapeutics. Pauline received her J.D. from the University of Maryland Francis King Carey School of Law and her M.S. and B.A. from The Johns Hopkins University.

Chase Hammond is an associate in Sterne Kessler’s Mechanical & Design practice group. His practice focuses on the preparation and prosecution of utility and design patent applications in the fields of materials science, mechanical engineering, and electrical engineering, and he has experience in post-grant proceedings. Chase has prepared invalidity opinions, performed patent landscape and freedom to operate analyses, and worked on due diligence investigations. He is also a former patent examiner at the USPTO. Chase earned his J.D. from George Mason University School of Law, and he holds a B.S. from Virginia Polytechnic Institute and State University.

Zachary Piccolomini, Shareholder • Chelsea Witte-Garcia, Associate
Wolf, Greenfield & Sacks, P.C.

Describe your practice area and what it entails.

Zach: A primary area of my practice is advising clients on intellectual property protection strategies. The clients I work with range in size and sophistication, so I tailor each client’s counseling to their specific needs and situations. In addition to counseling, I also handle a wide range of other IP issues, including diligence, licensing, and enforcement-related issues, ranging from pre-litigation investigations to full-blown patent litigation and post grant proceedings.

Chelsea: My practice is in the biotechnology space and focuses on counseling and patent prosecution in the U.S. and foreign jurisdictions. We touch on all aspects of intellectual property, including counseling clients regarding identification of patentable inventions; decisions related to how best to protect their IP through patents, trade secrets, or other means; landscape and competitor analyses; as well as patent preparation and prosecution. This involves understanding the client’s research and development plans and business goals to protect their IP. Many of my clients are smaller or early-stage companies that may not have extensive IP experience and rely on our guidance through the patent application process.

What types of clients do you represent?

Zach: I represent clients primarily in the computer science
and electrical engineering space, including in areas that branch into mechanical, biotech, and pharmaceutical spaces. I work relatively evenly across different size companies, ranging from early-stage companies to multinational corporations. Some of my current areas of technical focus include machine learning, machine vision, video coding, and pharmaceutical-related medical devices.

Chelsea: I represent a wide range of clients, including individual inventors, early-stage startups; universities and research institutes; and companies up to large, worldwide pharmaceutical companies. The individual needs of each of my clients also ranges significantly, and we tailor our approach to meet those needs.

What types of cases/deals do you work on?

Zach: I advise clients on a full range of patent and trade secret issues, ranging from ground-up protection strategies to clearance, prosecution, and enforcement issues in the U.S. and abroad. I also advise clients on copyright and trademark-related issues and recently completed a secondment at a major streaming music company that was heavily focused on trademark and copyright matters. Other common matters include diligence projects, clearance studies, and licensing projects.

Chelsea: Most of my work is related to patent prosecution for biotechnology companies, many of which are in the therapeutic space. I work with clients to develop an IP strategy aimed to protect their current and future directions and also strategically position them relative to competitors. I also was recently part of a team that advised one client through several stages of financing to public offering.

How did you choose this practice area?

Zach: In some senses, this practice area chose me. My background is in computer science, and after school, I worked at the Massachusetts Institute of Technology’s Lincoln Laboratory (a government-funded research laboratory), where I focused mostly on computer science-related projects in the military space. After realizing engineering was not the right path for me, I transitioned to IP law because it allowed me to continue to apply my technical background in the legal field. I haven’t looked back since.

Chelsea: After I completed my Ph.D., I pursued a postdoctoral fellowship but quickly realized that academic science was not the right fit for me. I considered different career directions by reaching out to people with a similar scientific background. Through these conversations and learning more about different directions for scientists that were not the traditional “scientist” role, I found IP to be a very interesting intersection of science, business, and the law.

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

Zach:  The best part about this job is that there isn’t a “typical” day. Each day brings with it new questions, projects, and challenges. I can’t think of a day when I actually worked on what I planned to do for the day. Instead, clients call, issues arise, and the day evolves from there. For me, it has been a perfect fit because it makes for a very dynamic work experience that is rich in new issues to explore.

Chelsea: The matters, technologies, and types of issues that I handle each day are quite different. This requires self-motivation and organization to see and plan for upcoming deadlines, but also the ability to adapt to the unexpected. It is not uncommon for clients to raise urgent requests, invention disclosure plans, or other issues that require immediate attention. I also spend time meeting with clients, discussing strategies with other firm team members, attending training sessions to keep abreast of recent court decisions and PTO guidance, and mentoring/training junior group members.

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

Zach: To enter the IP field, most IP attorneys (setting aside those that strictly practice IP litigation) have a technical degree that is relevant to the area in which they practice. While my background is in computer science, others have backgrounds in mechanical engineering, chemistry, biology, etc. It is, therefore, important to have the right technical training. Additionally, courses in patent law and other areas of IP law are particularly relevant on the legal side of the career.

Chelsea: Having a strong technical background is very important. We interface with experts and scientists in different fields and frequently need to dive into new technology areas, get up to speed quickly, and be able to ask the important questions. Much of the patent application process involves distinguishing how an invention is new and non-obvious relative to prior work and requires an in-depth understanding of the science. It is also important to develop strong communication skills, both written and verbal. We interact with CEOs, scientists, investors, and patent examiners and need to clearly communicate complex issues to varying audiences.

What do you like best about your practice area?

Zach: One thing I like best is the constant exposure to new technology. Companies routinely turn to us to protect ground-breaking inventions in cutting-edge areas, and I enjoy learning their technology and inventions. I also like learning about a client’s business, since understanding their business is of paramount importance to developing an appropriate IP strategy. Lastly, I enjoy keeping abreast of the constantly changing legal landscape, including court decisions, new rules, and new regulations.

Chelsea: IP is an evolving field from both the patent law and technology aspects. I really enjoy that I am constantly learning something new and facing new challenges with a broad diversity of types of projects and clients.

What is unique about your practice area at your firm?

Zach: Since our firm is exclusively an IP law firm, we counsel clients in all technical areas. As a result, our firm includes several different technical groups, one of which is the Electrical and Computer Technologies group in which I practice. My group leverages scientists, including many with advanced degrees from top universities, to provide spot-on technical expertise for each client’s individual needs in the computer science and electrical engineering space. 

Chelsea: The biotechnology practice group reaches into all different technology practice areas: pharmaceuticals, mechanical such as medical devices, electrical and computational, and chemical spaces. You will frequently find Biotechnology group members involved with clients in other technology areas as well as different types of matters, such as post-grant/litigation. This offers many opportunities to collaborate between different practice groups and share information and experiences.

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

Zach: We strive to give junior lawyers strong experiences from the start. As a result, junior lawyers will perform many of the tasks that more-senior lawyers perform, from conducting inventor interviews to drafting patent applications to helping develop IP protection strategies. We have a strong training program, and we work with junior lawyers to help build their experiences and provide them with the strong foundation they need to succeed in the field.

Chelsea: Most client teams include a shareholder and a combination of one or more associates and technology specialists/patent agents. This structure allows mentorship and training on each individual project, from shareholders as well as more-senior associates. Junior attorneys are involved in a variety of types of projects, including patentability analyses, patent application drafting, responses to rejections from the patent office, and landscape analyses. Initially, junior attorneys will be involved in an aspect of a project and then take on a larger role as they gain experience and confidence.

In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?

Zach: In some ways, the pandemic hasn’t greatly affected my practice since many clients and teams were already used to working remotely. But at the same time, the pandemic has also significantly changed aspects of my practice. It is common, for example, for IP attorneys to travel to client sites and to meet with inventors, which has essentially come to a halt due to the pandemic. I really miss these social aspects, which I’m excited to have pick back up again once the pandemic comes to an end.

Chelsea: There was initially quite a bit of uncertainty around how the COVID-19 pandemic would impact the biotechnology field, particularly related to research and development funding and closure of businesses, and how that would consequently affect our Biotech IP practice. However, we saw many clients repurposing their products or development efforts to aid COVID therapeutic development. The pandemic does significantly impact how we interact with colleagues within the firm and with our clients. Regularly scheduling videoconferences has been a good substitute to keep a personal connection.

Zachary Piccolomini, Shareholder—Electrical & Computer Technology; Chelsea Witte-Garcia, Associate—Biotechnology

Zachary (“Zach”) Piccolomini counsels clients in a wide variety of intellectual property matters, including patent portfolio development, IP licensing, IP due diligence, post-grant proceedings, IP litigation, and related issues. Zachary represents clients in the computer hardware, computer software, and mechanical device fields, with a focus in the high-tech space. Zach’s clients range in size from small early-stage companies to large international corporations and include companies based in both the U.S. and abroad. He, therefore, strategically develops custom-tailored IP strategies that fit the particular situations and needs of each client. A focus of Zach’s practice is developing commercially valuable patent portfolios, including preparing and prosecuting patent applications, as well as leading teams to develop and prosecute larger patent portfolios. Zach is well versed in prosecuting patent applications in the United States as well as coordinating IP protection in nearly all foreign jurisdictions (and he has close relationships with a number of foreign law firms). Before beginning his legal career, Zach was a computer engineer in the Air and Missile Defense Technology Division of the Massachusetts Institute of Technology Lincoln Laboratory, where he was involved in various aspects of radar system engineering.

Chelsea Witte-Garcia is an associate patent attorney practicing in the field of biotechnology with experience in genetic engineering, antibody therapeutics, vaccine development, cell therapies, microbiome-based therapeutics, and microbial and enzyme engineering. Her practice focuses on patent prosecution, strategic patent portfolio development, and life cycle management. Chelsea counsels individual inventors, universities and research institutions, and biotech/pharmaceutical companies—ranging from early-stage and startup companies to large, multinational companies. Chelsea earned her B.S. in Medical Microbiology, Immunology, and Spanish at the University of Wisconsin; her Ph.D. in Microbiology from the University of California, Berkeley; and her J.D. from Suffolk University Law School.

Martin Gomez, Partner • Naomi Birbach, Associate
Goodwin

Describe your practice area and what it entails.

Marty: My practice includes assisting technology and life sciences companies of all sizes—startup through public
companies—with the IP and patent matters that arise through-
out their corporate lives. This includes counseling regarding IP strategy and helping my clients think about and identify their IP and then selecting the appropriate legal tools to protect it. When appropriate, I assist with patent portfolio architecting and development and prosecution matters. Once the IP assets are identified and protected, I help my clients monetize these assets, either by explaining the value to investors/partners or through other strategic transactions, such as licensing agreements. I also help investors identify and value their investments, and I help my clients manage risk by evaluating third-party IP assets and rendering freedom-to-operate opinions. When necessary, I advise clients regarding IP enforcement strategies such as litigation. 

Naomi: As part of Goodwin’s Intellectual Property Litigation group, I focus on patent litigation before federal district courts, the Patent Trial and Appeal Board, and the International Trade Commission. I also work on trade secret, employee mobility, copyright, and trademark litigation matters as well as arbitrations and breach of contract actions involving intellectual property. I handle cases in all stages of litigation, from pre-suit investigation through trial and appeal and including pre-litigation counseling and advice.

What types of clients do you represent?

Marty: My clients are technology and life sciences companies—ranging from small startups to large public corporations/universities—and their investors. I represent companies focused in a wide range of technical disciplines, from medical devices to robotics to software, and everything in between.

Naomi: I work with a mix of pharmaceutical and tech clients, ranging from smaller startup companies to large corporations.

What types of cases/deals do you work on?

Marty: I work on matters that involve protecting a client’s IP assets or explaining (company side) or determining (investor side) the value of those assets as part of a corporate transaction. Recent matters include advising (i) Ori, developer of robotic furniture to improve living spaces, in identifying and drafting patent applications; (ii) Cold Chain Technologies, developer of smart thermal packaging solutions for medical supply shipment, to understand and mitigate risk related to third-party patent assets; and (iii) Bain Capital Life Sciences in its investment in several private medical device companies. 

Naomi: My practice focuses on patent litigation in a variety of district courts across the country. I represent both patent holders who are asserting their patents against accused infringers and accused infringers defending against infringement allegations. I also work on parallel inter partes review proceedings before the U.S. Patent and Trademark Office.

How did you choose this practice area?

Marty: I was drawn to IP law because it is a wonderful combination of legal and technical work. I love being a lawyer and counseling my clients on the issues they face, but I am also fortunate that I still get to engage with cutting-edge technology on a daily basis. However, when I graduated from law school, I really thought I wanted to be an IP litigator. It wasn’t until I had been practicing for a few years that I realized I prefer corporate transactions to courtroom litigations. Goodwin gave me the flexibility to explore different possible career paths until I found the practice that suited me best.

Naomi: I majored in Chemistry in undergrad but always wanted to be a lawyer. After college, I was lucky to get a job working as a Patent Examiner at the U.S. Patent and Trademark Office. I found the work very interesting but also a bit solitary and had a feeling that I would prefer the team-based approach of patent litigation more than patent prosecution. After two years at the Patent Office, I left for law school with the goal of becoming a patent litigator and haven’t looked back.

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

Marty: One of the best parts about my practice is working with a wide range of companies (both size and technology) on various matters depending on their IP needs; so, there really isn’t a typical day (which is part of what I like about my job!). To the extent there is a typical day, however, it’s changed over the years. When I was a junior associate, much of my day was spent preparing substantive work product (patent applications, diligence memos, etc.)—that work was crucial to developing my legal skills and knowledge. As a partner, I spend more of my time talking with clients about the issues they’re facing and enacting strategies to address those issues. Also, in non-COVID times, I spent at least a few evenings a week attending industry events, meeting and networking with startup companies, to build my network and better understand the industries and environments my clients operate in.

Naomi: I love that there is no typical day as a patent litigator. Tasks are largely dependent on the stage of a particular case. For example, early in a case, I might be working on developing non-infringement or invalidity strategies, interviewing potential expert candidates, and drafting motions to dismiss. As a case progresses through fact and expert discovery, I might be drafting claim construction briefing or arguing at a claim construction hearing, taking or defending fact and expert witness depositions, or drafting summary judgment briefs. As a case gets closer to trial, I might be preparing witnesses to testify or working on cross examination outlines. These are just a few examples—there is a wide variety in the type of work I do on a daily basis, which keeps things exciting. I also spend time on firm activities like mentoring and training more-junior associates and recruiting summer associate and lateral candidates.

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

Marty: From a legal perspective, it is important to understand the different types of IP as well as how to draft and negotiate contracts. For the non-patent parts, a technical education is not required, though it helps if technology interests you. For patent work, a technical background is generally needed, but keep in mind that very rarely do patent attorneys understand the technology as well as their clients; it’s more important to have enough technical background to ask the right questions and then describe or explain the technology to others. One skill that is often neglected, but is critical to success in any corporate legal job, is business acumen. Ultimately, my clients want me to help them solve business problems, and I need to understand their business and industry to tailor the advice appropriately. I recommend starting with reading a daily tech newsletter or listening to a tech podcast. 

Naomi: Goodwin offers both formal and informal subject matter and skills training, so hardworking associates should be able to succeed in our practice group even if they did not take specific courses in law school. That said, I would recommend taking one or more patent law classes and Evidence. I would also recommend taking any experiential trial or pre-trial skills classes. Strong writing skills are also important in any litigation practice.

What misconceptions exist about your practice area?

Marty: One misconception is that patent attorneys are nerds and shy introverts. Well, maybe the nerd part is true; but the best part of my job is talking to my clients and networking with potential new clients—and that requires me to be outgoing.

Naomi: I think the biggest misconception is that you need a technical or science background to be an IP litigator. As discussed below, a science background is not necessary at Goodwin as long as you are willing to work hard.

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

Marty: It depends on the type of IP practice. For patent work, a junior associate meets with inventors to take invention disclosures, draft patent applications, and negotiate with the patent office examiners to obtain patents. Other IP-focused junior attorneys review IP-related agreements as part of deal diligence and draft and negotiate portions of (and eventually entire) licensing and other IP transactional documents.

Naomi: Junior associates are assigned to litigation teams and can expect early substantive experience. While typical junior-level tasks include things like drafting discovery requests and responses, completing legal research assignments, and preparing deposition outlines, juniors can quickly get more advanced-level work if they show that they are capable. By the end of my second year at Goodwin, I had taken my first deposition and was regularly drafting sections of briefs.

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

Marty: People come to IP law in many different ways. Some, like me, go straight to law school after undergrad. Others spend several years working as engineers in the industry and then return to law school and begin second careers as patent attorneys. And others spend several years working as science advisors in law firms and attend law school at night before becoming lawyers.

Naomi: Most IP litigators stay at firms or move to in-house counsel positions at pharmaceutical or technology companies.

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

Marty: Depending on the type of IP law you want to practice, a technical or science degree may not be required at all; however, it helps if you demonstrate an interest in technology or science. For some practices, equally important is an understanding of business and how innovative technology or science can allow a company to achieve its business objectives.

Naomi: Don’t be afraid of the science. We have numerous associates and partners in the IP Litigation group at Goodwin who do not have technical or science backgrounds. And even those that do have science backgrounds work on cases involving complex technologies unrelated to their training. For example, I have an undergraduate Chemistry degree but have worked on cases involving technologies like LED displays and ground fault circuit interrupters. What is necessary to succeed is a willingness to dig in and become an expert on the technologies in the case regardless of your background.

Martin Gomez, Partner—Technology Companies and Intellectual Property;
Naomi Birbach, Associate—Intellectual Property Litigation

Martin (“Marty”) Gomez is a partner in Goodwin’s Technology Companies and Intellectual Property groups, specializing in intellectual property matters. Mr. Gomez focuses his practice on advising technology and life sciences companies of all sizes (including startups), and their investors, in corporate and especially intellectual property matters throughout the business life cycle, including new company formation, IP protection, fundraising, strategic transactions, and exits. Mr. Gomez is also a registered patent attorney. His practice includes intellectual property rights counseling, procurement, and enforcement, with significant experience in strategic patent portfolio development, transactional IP diligence, IP licensing, and patent and trade secret litigation. Mr. Gomez also has special expertise with design patents, both in obtaining design patent protection for clients and in evaluating design patent portfolios in the transactional and litigation contexts.

Naomi Birbach is an associate in Goodwin’s IP Litigation group. She joined the firm in 2013. Ms. Birbach focuses her practice on intellectual property litigation in U.S. district courts and before the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in post-grant proceedings such as inter partes reviews (IPRs). She has worked on cases involving pharmaceuticals, electronic devices, and display systems. Ms. Birbach has particular expertise in generic drug litigation under the Hatch-Waxman Act.

Mark L. Whitaker, Partner & Co-Chair • Rachel Dolphin, Associate
Morrison & Foerster LLP

Describe your practice area and what it entails.

Mark: My practice is focused on intellectual property (IP) litigation, primarily in the patent and trade secret spaces. I regularly litigate cases before various U.S. District Courts and the International Trade Commission. I represent both clients who have been accused of infringement and those who are asserting their patent rights, as well as those accused of misappropriating trade secrets and those asserting their trade secret rights. Patents and trade secrets both cover technology that is valuable to a company, but in different ways: A patent is published and therefore public knowledge, while a trade secret is technology for which a company, for various reasons, decides to maintain confidentiality.

Rachel: I am an IP litigator with experience in various types of IP cases. I have mostly worked on patent litigation, but I have also worked on significant trade secret cases and have done a little bit of copyright and trademark work as well. I have worked on cases in district courts across the country, before the International Trade Commission, and before the Patent Trial and Appeal Board. In our group, we generally do not specialize in a particular technology; rather, we work on matters in various fields.

What types of clients do you represent?

Mark: At this stage in my career, I tend to represent larger companies that develop and market a broad range of technologies. Currently, my client base consists of companies in industries such as data warehousing and analytics, camera lens technologies, lithography, medical devices, chemical technology, semiconductors, and software. My clients over the years have included Teradata, Nikon, TSMC, Johnson & Johnson, Caterpillar, Dell, BASF, Manitowoc, and AT&T.

Rachel: I have represented clients in numerous fields, including large technology companies, pharmaceutical companies, consumer products companies, and a university. I have also represented multiple pro bono clients, most of whom have been individuals.

What types of cases/deals do you work on?

Mark: I am currently representing Teradata in a trade secrets case dealing with data warehousing and big data analytics technology patents. Other cases involve automated camera lens technology and software, spinal correction and alignment equipment, semiconductor chip and wafer development for various personal and automotive electronics, polyurethane chemistry for golf balls, and hydraulic excavators.

Rachel: Our cases often involve cutting-edge technology, which introduces new challenges and complexities to the already complex world of IP law. The cases I have worked on have varied widely and include a patent case about water filters, a plant patent case about strawberries, patent cases about smartphones and tablets, patent cases about pharmaceutical drug compositions, and a trade secret case about autonomous vehicles.

How did you choose this practice area?

Mark: I developed an interest in technology after my experience as a naval officer following various technical and engineering billets. After law school and a stint in commercial litigation, I found that I could combine my interest in technology with my skills as a litigator by focusing on patent and trade secrets litigation.

Rachel: I was a summer associate at MoFo in the Litigation group. I wasn’t sure what type of litigation I wanted to do, so I tried projects in various groups (e.g., employment, general commercial, and white collar defense). I didn’t do any IP work because I assumed I wouldn’t qualify given my lack of technical background. When I started at MoFo as a first-year associate, I was asked to join a patent case. I was definitely intimidated—I had never seen a patent before—but the rest is history.

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

Mark: My day consists of many of the tasks common to complex patent litigation cases. I oversee discovery, both affirmative and responsive. I also will review infringement charts and other technical evidence of misappropriation in my trade secrets cases. I often manage large teams of attorneys, depending on how complicated the litigation is. I am constantly drafting and editing briefs and motions along with various correspondence, and, of course, I conduct regular meetings with my clients.

Rachel: The tasks I perform vary depending on the stages of the cases I am working on and the particular needs of those cases. If cases are in the early stage, my tasks often involve analyzing patents, conducting legal research, and drafting analyses and/or memorandums. When the cases are further along, my tasks are often focused on discovery (drafting requests, responding, analyzing responses, negotiating with opposing counsel, analyzing key documents, preparing for and taking depositions, and assisting with expert reports), and then brief writing (motions for summary judgment and motions to dismiss). As the cases continue to progress, I work on various pretrial tasks (drafting motions, jury instructions, exhibit lists, and witness outlines), and when I’m lucky, the cases go to trial.

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

Mark: I think it’s helpful to have some kind of scientific or technical degree, such as electrical or mechanical engineering, computer science, chemistry, or biology. It would also be helpful, but it’s not required, to become a member of the patent bar, which requires a separate patent bar exam. At law school, I recommend taking any clinics that are available in litigation practice, especially those that focus on evidence and the burden of proof at trial. Finally, persuasive writing skills are key throughout your career.

Rachel: It is definitely helpful to take a class or two in intellectual property law if you want to get into IP litigation. It is not required (I had not), but it is good to have that general knowledge before starting as an associate. If that isn’t possible, reading a treatise on IP law can also be helpful and can help you get a sense for whether or not the issues seem interesting to you. I also recommend taking some sort of trial skills and/or negotiation workshop. After all, IP litigation is a form of litigation, and it is important to develop those skills. Your Civil Procedure class will also definitely come in handy.

What do you like best about your practice area?

Mark: I really enjoy learning about new and emerging technologies, including many of those that you can find in your own home and that you likely rely on every day.

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

Rachel: Just as there are no typical days, there are no “typical tasks,” but MoFo’s IP group definitely provides substantive experience early on. Our cases tend to be pretty leanly staffed, which means that everyone has significant opportunities and plays an important role on the team. When I was a first-year associate, I drafted and responded to discovery requests; participated in internal meetings regarding strategy; drafted invalidity contentions, which involves reviewing patents and other publications and mapping arguments regarding invalidity; conducted legal research; and reviewed documents for production. I was on two trial teams in my first three years at MoFo, and was able to experience jury trials firsthand.

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

Mark: I think companies are understanding more and more that their intellectual property is one of the most important assets they own. So it is important for both U.S. and foreign entities to do their utmost to protect their IP. I also see IP litigation continuing to expand in the courts, as it has at the USPTO, such as with inter partes reviews, which challenge the validity of issued patents. I also think acts of legislation will continue to hone and possibly broaden the scope of access to litigation, refining more causes of action and increasing the availability of IP litigation and related trade issues here in the U.S. and worldwide.

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

Rachel: MoFo has a robust two-summer patent program that immerses summer associates in our Patent Litigation and Patent Prosecution practices. This program allows incoming associates to get a lot of experience in the field and to work with many different IP attorneys. When those summer associates start as first years, they have already had substantial experience in our group and are able to jump right back in. Given the amount of time we have had to work with them before they start as associates, we are excited for them to come back and talk about wanting to get them on our cases months before they actually start.

Even for those who did not do the two-summer patent program (and I am in that boat), there is plenty of substantive IP experience a summer associate can have. Our group is always happy to have summer associates dip their toes in the IP waters, whether it is analyzing a patent for potential invalidity defenses, writing a response to an office action in a trademark prosecution, or drafting a memo summarizing recent jurisprudence on a particular IP issue.

Mark L. Whitaker, Partner & Co-Chair of IP Litigation Practice and Intellectual Property Group; Rachel Dolphin, Associate—Litigation

Mark Whitaker is the co-chair of Morrison & Foerster’s IP Litigation practice. He has more than 30 years of experience crafting legal strategies in high-stakes patent and trade secret litigation. Mark sees the whole board for each of his clients, working closely with them to define a successful litigation outcome and determine the best path to achieve that goal. He regularly acts as lead counsel in matters involving technologies such as semiconductors, photo/optical technologies, chemicals, and database analytics. A past president of the American Intellectual Property Law Association, Mark was elected to their prestigious Fellows membership in 2019.

Rachel Dolphin is an associate in the Litigation department. Her intellectual property practice concentrates on patent litigation and includes litigation, pre-litigation, inter partes review, and other post-grant proceedings. Her work involves a variety of technology fields, including biotechnology, pharmaceuticals, communications, and information technology. In law school, Rachel served as a student attorney for the Legal Services Center, Family Law and Domestic Violence Unit, representing domestic violence survivors in various family law matters. Additionally, she worked as a legal extern for Justice Judith Ashmann-Gerst of the California Court of Appeal, Second District.

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