The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Cara Regan works on patent and trade secret litigation at every stage, from the strategic decision to file a proceeding through appeal. Her experience includes district court and International Trade Commission (ITC) actions; post-grant challenges at the Patent Trial and Appeal Board (PTAB); and appeals at the U.S. Court of Appeals for the Federal Circuit, where she clerked. She also assists clients in evaluating infringement risks and negotiating license agreements. Her technical expertise encompasses a wide range of technologies, including medical devices, software, mobile phones, laptops, automobiles, and consumer products. Cara maintains a pro bono practice assisting with veterans’ affairs.
Constance (Connie) Lee focuses on patent and trade secret litigation in the chemical and pharmaceutical fields. She represents clients before U.S. district courts, the ITC, in post-grant challenges at the PTAB, and in arbitration proceedings. Connie has experience litigating cases under the Biologics Price Competition and Innovation Act (BPCIA) as well as those arising from the filing of Abbreviated New Drug Applications (ANDAs). Prior to working at Finnegan, Connie worked at Procter & Gamble as a senior engineer, developing packaging for popular brands of household goods such as laundry detergent, oral care, cosmetics, and other products. Her industry experience includes upstream packaging development, including materials assessment and compatibility, with a focus on polymers, blow molding and injection molding technologies, device development, and decoration technologies.
Describe your practice area and what it entails.
Cara: I help clients with IP litigation in district court, at the ITC, before the PTAB, and on appeal. In addition to the litigation itself, I am regularly involved in pre-suit risk evaluation and pre-filing analysis, as well as licensing and settlement negotiations.
Connie: My practice is focused on complex patent litigation. My practice spans all phases of litigation, including pre-litigation counseling, developing infringement and invalidity strategies, fact and expert discovery, claim construction, motions practice, and trial.
What types of clients do you represent?
Cara: A wide range, from small businesses to multinational corporations.
Connie: I have represented a wide variety of clients, from small companies to Fortune 500 companies. I mostly represent branded pharmaceutical companies.
What types of cases/deals do you work on?
Cara: I typically work on non-pharmaceutical patent and trade secret litigation. I have been involved in district court cases, ITC investigations, PTAB proceedings, and appeals on behalf of both IP owners and accused infringers. And I have worked with clients to avoid litigation through freedom to operate analyses and licensing, and to develop pre-suit litigation strategy by evaluating infringement and identifying the strengths and weaknesses of a potential case. I have worked with technology ranging from lip gloss to inhalers to light bulbs to jet engines.
Connie: The focus of my practice is pharmaceutical district court litigation under the BPCIA or Hatch Waxman Act. I have also represented clients in contested PTAB proceedings, the ITC, and in arbitration.
How did you choose this practice area?
Cara: I have always wanted to work in IP law. My grandfather was a patent attorney, and he had wonderful stories about working with brilliant inventors and learning about cutting-edge technology. I majored in physics in college with the goal of going to law school and working in IP. I knew I did not want a research career, but I really enjoy science, and working with IP lets me use that background.
Connie: I have a B.S. in Materials Science Engineering and enjoy working in a variety of technology areas, so I knew I wanted to go into patent law when I entered law school. Practicing patent law was a choice that I felt best leveraged my technical curiosity and expertise. My first case as an associate was an ITC case, and I immediately fell in love with the exciting pace of litigation. I enjoy getting to know my clients and working to protect their IP and their business goals.
What is a typical day like and/or what are some common tasks you perform?
Cara: Every day is different. In an upcoming week, I am scheduled to participate in internal team meetings about case action items and surrounding strategy, join joint defense group and client calls, interview potential experts, and meet and confer with opposing counsel on discovery issues. I will also draft a complaint, write sections of a claim construction brief, and review contention positions prepared by other team members. And I may write discovery letters or a motion to compel, depending on the results of the meet and confer. In some weeks, I might also attend a court hearing or a status conference, or I might travel to meet with a client or an expert.
Connie: I’ve been lucky in that for most of my litigation cases, I’ve had the opportunity to be on them from the very beginning (from pre-litigation analysis) and continue all the way until they’ve settled or gone through trial, which can take years. My daily activities depend on the phase of the cases I’m on. On any given day, I might be developing case strategy, drafting a motion or brief, preparing for document collection, preparing discovery requests, reviewing documents, taking or defending a deposition, or attending client meetings.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Cara: Write as much as possible. A lot of IP work is writing, regardless of whether your primary focus is client counseling, patent and trademark prosecution, or litigation. Being able to communicate clearly to clients, opposing counsel, and the court is a huge advantage.
Take opportunities to be uncomfortable too. In practice, you will often be asked to do things—taking depositions, running portions of a case, speaking in court—before you think you are ready, because more senior members of the team know that you are. Trying things in low-stakes practicums or moot court competitions can help you gain confidence.
Connie: Analytical thinking, oral advocacy, and writing skills are the fundamentals for entering this practice area. I think most courses in law school are directed to developing these skills. I took very few IP classes in law school. Instead, I opted to take a variety of classes that would expose me to areas of the law I might not see in practice. Substantively, mock trial was probably the most useful course I took.
What do you like best about your practice area?
Cara: I love learning about new technology. In litigation, you learn a lot about the specific technology covered by the patents at issue in the case, and you get to spend time with inventors and technical experts who know that technology better than anyone.
I also really enjoy helping clients to develop the strategy that best fits their technology and their business. Even after a litigation starts, there isn’t a one-size-fits-all solution. Knowing what a “win” looks like for the client shapes our approach to every case.
Connie: I like that with each new case I work on, I get to learn about a new technology and develop expertise in a new technical area. As I mentioned above, I’ve been lucky in that I’ve had the opportunity to work on several matters from start to finish. I enjoy the opportunity to form long-lasting relationships with sophisticated colleagues and clients over multi-year projects. I find the variety and challenge of conquering new technology areas and helping to develop legal strategies to achieve success for clients incredibly rewarding.
What is unique about your practice area at your firm?
Cara: Instead of being one small part of a larger firm, the whole firm is IP-focused. Whatever issue comes up in a case, someone here has expertise, and because of the firm’s open-door policy, you can reach out to that person and ask questions.
Our deep IP bench also allows attorneys to try a lot of different work. No one is siloed, and it is not unusual for associates to have a mixed prosecution-litigation-client counseling workload. As a junior associate, I tried just about everything. And though I prefer litigation, having prosecution experience has really helped me in my litigation practice because I understand prosecution files in a way that I might otherwise not.
Connie: Finnegan is unique in that the firm is dedicated to IP law, and almost every attorney has a technical background, providing a deep pool of expertise. This means the firm handles some of the most complex issues for a wide range of sophisticated clients. Although our firm is divided into practice areas based on technical expertise, no one is siloed, and I’ve gotten the opportunity to work on litigation matters with attorneys from different practice groups.
What are some typical tasks that a junior lawyer would perform in this practice area?
Cara: Junior associates often help with discovery, for example, reviewing documents, drafting discovery requests and responses, and writing discovery letters. And junior associates might also help with research or write sections of larger briefs. A junior associate who does well at those tasks is often asked to take on more—maybe leading a discovery meet and confer with opposing counsel or presenting strategy for a brief to a client.
Connie: Junior associates at Finnegan are given meaningful and substantive work. For example, they may help review documents to develop technical and substantive positions, help with legal research, draft pleadings or portions of motions, or provide support for depositions or expert meetings.
What kinds of experience can summer associates gain at this practice area at your firm?
Cara: Summer associates receive both formal training and hands-on experience with real work. The firm generally gives summers training on issues such as patent law, litigation, and writing, but summers also help with projects for real cases. As a summer, I wrote a brief for a pro bono case, helped with invalidity contentions, and did research for several briefs. I’ve given similar assignments to summer associates.
Connie: Summer associates are assigned projects to help with ongoing cases at the firm. For example, they may be assigned legal or fact research for discrete issues for an ongoing matter. Summer associates also often help with article writing and pro bono cases. Additionally, if there is an ongoing trial, deposition, or hearing, summer associates are often given the opportunity to observe.