The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
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’s New York office from 2004–2011.
Joze Welsh’s practice focuses on intellectual property and technology-related litigation, including patent and antitrust litigation. Her experience includes preparing pleadings and contentions, drafting briefs, taking depositions, and preparing fact and expert trial witnesses in cases involving smartphone software, computer networking technology, medical and robotic devices, and consumer products. Ms. Welsh has also served as pro bono counsel in asylum proceedings at U.S. Citizenship and Immigration Services. During law school, Ms. Welsh served as an Articles Editor of the Cardozo Law Review and participated in Cardozo’s Tech Startup Clinic, where she assisted tech startup clients with entity formation, funding questions, intellectual property issues, commercialization strategies, and operational and employment matters.
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.
Joze: Our practice focuses primarily on technology-driven patent infringement cases headed to jury trial in federal court. We also frequently work on other patent-related matters such as inter partes review (“IPR”) proceedings at the Patent Trial and Appeal Board (which deals with patent validity disputes), as well as investigations before the International Trade Commission.
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.
Joze: We represent a wide variety of clients from large tech and pharmaceutical leaders—such as Apple, Google, and GlaxoSmithKline—to innovative individuals and small businesses with patented inventions. Our clients include both patent holders/plaintiffs and defendants, which gives us unique insight on “both sides of the v” that allows us to best represent all of our clients.
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.
Joze: I primarily work on district court patent infringement cases. While the cases are all technology-driven, those technologies vary widely. I have worked on cases involving computer networking, smartphone hardware and software, medical testing and devices, pharmaceuticals, and consumer products. We also occasionally work on other technology-related matters. For example, I have worked on antitrust and trade secret litigations.
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.
Joze: I studied neuroscience as an undergraduate. After spending some time in the lab, I knew I wanted to do something different after graduating, but did not want to give up the opportunity to constantly learn and be challenged. I asked a neuroscience Ph.D. for her thoughts. She said, “Have you considered intellectual property law?” Turns out, that was a great suggestion.
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.
Joze: In patent litigation, I would have to say that there is no truly “typical” day. It is different depending on the case and the stage that it is in. I may, for example, be meeting with a client to learn about their technology, strategizing with colleagues, taking or defending a deposition, writing a brief or other pleading in my office, or preparing for an upcoming trial.
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.
Joze: I would recommend a trial advocacy class or any mock trial type program. Persuasive speaking may come naturally to some, but as I learned during trial advocacy classes (and in our trial training at Desmarais), when your prepared argument or line of questioning is peppered with (or derailed by) questions and objections, you need a new set of skills to stay on track. For me, practicing has been the best way to improve—so I would suggest getting on your feet as soon as possible.
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.
Joze: The most challenging aspect (but also, in my opinion, one of the most fun) is distilling complex technologies into explanations and arguments that an audience who is less familiar with the technology—whether judge or jury—can not only quickly understand, but be persuaded by. It is a great opportunity to get creative and collaborate (including with colleagues in nearby offices who are willing to lend an ear).
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.
Joze: Patent litigation does not get boring or repetitive—each case brings something new. We are not only learning about new technologies, we also regularly get to meet and learn from incredible inventors, experts, and other scientists in a wide range of fields.
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.
Joze: One misconception is that to work on a particular case, you must have an educational background or other experience in the relevant field. While that can be helpful, it is not a requirement or the norm. We all work on cases in a variety of fields. What is most important is a willingness to dig into and learn the technology (with help from expert witnesses, scientists, and other team members).
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.
Joze: We are trial focused and team oriented. Throughout any litigation, we are always thinking of the big picture and strategizing for our long-term case goals (including winning at trial). Even in my first years at Desmarais, partners and senior associates would not just give me assignments. They would take the time to explain to me why we were doing things and what we were trying to achieve. The results of any particular project or case, therefore, are never just for that case. They also provide valuable insight that can be carried on through future cases. In addition, we do not bill by the hour, which really allows the firm’s collaborative atmosphere to flourish. There have been countless times when I have dropped by a colleague’s office (who was not working on the same case) to bounce ideas off of them or to get advice. The focus is on getting to the best result, not on tracking time.