The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Kara Specht focuses on patent litigation before district courts, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). Kara has experience representing a variety of clients in all aspects of patent litigation before district courts, the ITC, and in inter partes review proceedings before the PTAB. She has first-hand insight into corporate litigation procedures, having seconded at a leading multi-national technology company. She has also been recognized as a Trailblazer by the World Intellectual Property Review.
Cecilia Sanabria focuses her practice on complex patent litigation and client counseling in the mechanical, industrial, and electrical fields. She represents clients before U.S. district courts and the U.S. ITC. Cecilia has been selected as a DC Rising Star by the National Law Journal, recognized as a They’ve Got Next: The 40 Under 40 honoree by Bloomberg Law, as a HNBA Top Lawyer under 40 by the Hispanic National Bar Association, as a Rising Star by the Minority Corporate Counsel Association (MCCA), and by World Intellectual Property Review as one of the “Influential Women in IP.”
Describe your practice area and what it entails.
Kara: My practice involves complex patent litigation in the electrical and mechanical arts. I am involved in all phases of litigation, including pre-litigation investigations, early procedural motion practice, discovery efforts, claim construction, working with technical and damages experts, depositions, drafting motions and briefs throughout every phase of litigation. In my patent office practice, I primarily represent petitioners in post-grant proceedings, where I am involved in preparing petitions and other submissions, taking and defending depositions, and the oral hearing. I also work with clients on license negotiations.
Cecilia: The majority of my practice is focused on complex patent litigation in a wide range of technologies, spanning from medical devices, to cellphones and software-based systems, to refrigerators, and more. My litigation practice spans the pre-trial, discovery, trial, and post-trial phases of litigation, and includes arguing motions in open court and examining witnesses in jury trials and hearings before the ITC, managing fact discovery, drafting motions and legal briefs, and working with fact and expert witnesses. I also counsel clients in portfolio management, licensing issues, and alternative dispute resolution matters, and work with clients in various aspects of patent prosecution and USPTO proceedings.
What types of clients do you represent?
Kara: My client base includes a variety of companies of all sizes in a variety of industries from all over the world. Clients include companies involved in software, fintech, computer hardware and semiconductor technology, and automotive technologies.
Cecilia: I represent a wide variety of clients from small companies that rely on IP to grow their business, to Fortune 500 companies in bet-the-company litigations, to government contractors that seek to protect their investments in innovation.
What types of cases/deals do you work on?
Kara: I am generally involved in district court and ITC litigations, as well as contested PTAB proceedings in the technology fields listed above. In my district court and ITC cases, I represent both patentees and accused infringers.
Cecilia: The focus of my practice is litigation at the district court and ITC level. Currently, I am working on a number of cases in both forums for large Fortune 500 companies who are looking to enforce their patent rights. I am also working on arbitration proceedings that initiated as a result of dispute in licensing agreements, as well as a number of patent portfolio management matters for clients who are looking to expand their IP footprint in the U.S. and abroad.
How did you choose this practice area?
Kara: I have a B.S. in Electrical Engineering and enjoy working in a variety of related technologies, so practicing patent law in the high tech and computer-centric space was a choice that I felt best leveraged my talents and expertise. When I first began practicing, I primarily focused on prosecution, but was quickly drawn to the fast-paced and adversarial nature of litigation, which allows me to advocate for my clients to protect their IP and their business goals and endeavors.
Cecilia: Having a bachelor’s degree in Mechanical Engineering, I went to law school knowing I wanted to do IP. From there, the decision was whether I wanted to focus my practice on transactional matters or litigation. Initially, 100% of my practice was focused on litigation, as the skills needed to be an effective litigator aligned with my skillset and interests. With time, my practice has expanded into much more, working with clients on a variety of complex IP matters outside of the litigation context.
What is a typical day like and/or what are some common tasks you perform?
Kara: One of the things I like best about my varied litigation and PTAB practice is the variety in day-to-day tasks. On any given day I could be developing case strategies, learning a new technology, preparing discovery requests and responses, taking or defending depositions, drafting briefs, or arguing a hearing. One of my favorite tasks is engaging with the clients to understand their business and jointly develop strategies that advance their business initiatives.
Cecilia: One of the things I enjoy most about my practice is that there is no truly typical day. Working with a wide number of clients means that I am constantly learning about new and emerging technologies and complex legal issues associated with those technologies. For my litigation practice, my work ranges from considering strategies for patent enforcement to developing key positions to defend against infringement allegations. My counseling and transaction practice brings new and different challenges, ranging from considering how to best grow an IP portfolio to analyzing and crafting licensing provisions that align with my clients’ business objectives.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Kara: The most valuable classes I took were mock trial and patent drafting. Although trial and patent drafting themselves make up a small part of my daily practice, the skills I learned are transferrable to all aspects of my work. Advocacy and detailed patent-based critical thinking are fundamentals for a successful practice in this area.
Cecilia: For litigation, I always encourage others to take classes or courses, or participate in initiatives, that provide practical and hands-on experience in oral advocacy, and if those courses are focused on IP issues, even better. For patent litigators, litigation has the added challenge of having to present very complex technologies to an audience who is likely to not have a technical background. Mastering the skillset of breaking down technical concepts into digestible information that everyone can understand is key to succeeding as a patent litigator.
What is the most challenging aspect of practicing in this area?
Kara: I work in areas of the law that are continuously evolving. While it can be challenging to understand and anticipate changes in procedures and strategies, and incorporate them into case strategies to achieve success, it is also incredibly rewarding to be involved on the cutting edge of such interesting legal issues.
Cecilia: The most challenging aspect of an IP practice is also the most rewarding, and for me, that is working on a wide variety of complex technologies that involve interesting legal issues.
What do you like best about your practice area?
Kara: I love learning new things. Each case presents an opportunity to learn something new and develop expertise in a new technical area. The variety and challenge of mastering new areas of technology and devising corresponding legal strategies to achieve success for my clients is incredibly rewarding.
Cecilia: Working creatively with my colleagues, clients, and experts to develop legal strategies that align with my clients’ business goals. Although it may sound counterintuitive, as a litigator, sometimes that may mean not fighting every fight and working together with the other side to reach an amicable resolution. Other times, however, that means taking cases to the finish line.
In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?
Kara: COVID-19 has had a drastic impact on the way cases are handled. Remote depositions and hearings, for example, have become commonplace, which present both new opportunities and challenges with, for example, effectively questioning witnesses at deposition or engaging with judges and juries during a court proceeding. It has in some ways also made it easier to connect with clients and colleagues across the country with the normalization of video conferencing.
Cecilia: Initially, the COVID-19 pandemic brought things to a halt. However, my practice area quickly adapted and now things are back to business as usual, with the caveat that our work happens remotely more often than not, including remote hearings, depositions, meetings, and more. One aspect of my practice that has been mostly impacted by the pandemic, however, is mentoring, networking, and business development efforts. Since most events are remote, I’ve had to be much more creative in finding new ways to connect with people without face-to-face meetings, whether that be through virtual happy hours and lunches, to virtual conferences, to webinars and much more.
What is unique about your practice area at your firm?
Kara: My practice is somewhat unique because I have the opportunity to work in so many aspects of patent law. I began my career focusing primarily on patent prosecution, which helped me develop critical skills about the intricacy of patent claim drafting useful for identifying strong claims for assertion in litigation or for finding creative ways to argue for non-infringement or invalidity of claims asserted against my clients.
Cecilia: With a practice that is mostly litigation focused, but that also includes client counseling and transactional work, I bring a different perspective to solving legal issues and developing strategy. Understanding the life cycle of IP and knowing how to leverage it to meet my client’s goals is a unique aspect of my practice.
