The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Nichole DeJulio is an IP litigation partner in Kirkland’s Washington, DC office. Her practice focuses on patent infringement and trade secret litigation, but she also has experience litigating and advising on false advertising, antitrust and contractual disputes. She has represented clients in litigation before federal courts and the International Trade Commission and in arbitration involving a variety of technologies, including quantum technology, semiconductors, nanomaterials, medical devices, and roofing materials. Nichole received her B.S. from the University of California, Los Angeles, and her J.D. from The George Washington University Law School, where she served as an editor on the AIPLA Quarterly Journal.
Yan-Xin is an IP litigation associate in Kirkland’s San Francisco office. She has worked on matters spanning diverse industries, and her litigation experience includes extensive motion practice, claim construction briefing and Markman hearings, defending and taking depositions, and witness preparation. Yan-Xin has a broad range of experience across IP law, including post-grant proceedings, freedom-to-operate, validity and infringement assessments, licensing disputes, and domestic and foreign patent procurement. Prior to law school, Yan-Xin served as a secondary education volunteer with the Peace Corps in Tanzania. She also worked for a Fortune 500 company, designing upstream and downstream oil and gas facilities.
Describe your practice area and what it entails.
Nichole: Kirkland’s IP Group handles litigation relating to patents, trade secrets, copyright, trademark, and false advertising. Given the complexity of many of the issues we handle, our matters also involve other areas of law, including contracts, unfair competition, antitrust, and torts. We work closely with clients to advise them on pre-litigation issues and handle all aspects of the litigation matters.
Yan-Xin: The bulk of what we focus on involves patent, trade secret and/or copyright, and trademarks. With respect to patents and trade secrets, our practice covers a wide range of industries and subject matter, such as software related to private securities, entertainment electronic devices, and battery technology used in smartphones. Our practice focuses on taking a case from inception through fact and expert discovery, all with the goal of succeeding at trial.
What types of clients do you represent?
Nichole: My clients range from Fortune 500 corporations to individual inventors in various industries, including high technology (Samsung), healthcare (Abbott Laboratories), consumer product (Dollar Shave Club), building supply (CertainTeed), and robotics (iRobot).
Yan-Xin: We have a wide variety of clients. To name a few: Meta Platforms, Motorola, Cisco, EagleView, and Abbott.
What types of cases/deals do you work on?
Nichole: I primarily work on patent and trade secret matters involving a wide range of technologies, including materials science, hardware and software technology, mechanical technologies and quantum materials. While we often manage cases from the beginning, clients also come to us during litigation to take over cases that may go to trial. I have represented clients on the plaintiff side, defense side and as third parties. We work with the client and learn its business and goals to develop the best strategy for the case and their business. To achieve the best results for our clients, and given the complexity of the issues, we often litigate in multiple venues, managing litigations and countersuits in district court, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB) concurrently.
Yan-Xin: I mainly work on federal district court litigation, which means I participate through fact discovery (drafting and responding to discovery requests, taking and defending depositions), followed by expert discovery (writing expert reports and defending expert depositions). This culminates in trial. There is also ongoing motion practice and patent-specific tasks such as infringement and invalidity contentions and claim construction. The group also litigates before the ITC and files and defends against inter partes review petitions.
How did you choose this practice area?
Nichole: I was always interested in being a lawyer and having a job that involved critical thinking, writing, and developing strategic positions. My undergraduate degree focused on microbiology, immunology, and molecular genetics, and while I remain interested in these fields, I was not interested in pursuing research in the field. Patent litigation offered the ability to pursue what I wanted from a legal career while also constantly learning about new technologies, working with experts in these fields, and teaching this technology to others in high-stakes cases.
Yan-Xin: My undergraduate degree is in chemical engineering, and during law school, I decided I wanted to capitalize on my technical background. IP litigation allows me to marry my undergrad and prior work experience with legal strategy, writing, and advocacy.
What is a typical day like and/or what are some common tasks you perform?
Nichole: What I am doing on any given day depends on the stage of the litigation we are in. At the beginning of a case, we may be interviewing company employees, conducting legal research, strategizing plans, or briefing motions to dismiss. During discovery, we are meeting with witnesses, taking depositions, seeking discovery, briefing and arguing claim construction positions, and working with experts. During the later stages, we are working on the summary judgment briefing, refining trial themes, and preparing the case for trial. Throughout the course of the litigation, our team is constantly evaluating and building the facts we need to support the legal positions we are taking in a clear and persuasive manner.
Yan-Xin: I’m currently working on invalidity contentions and inter partes review petitions seeking to invalidate patents asserted against our client. I’m also working on discovery and document review of the opposing party’s information to find circumstantial evidence regarding trade secret misappropriation.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Nichole: At Kirkland, our IP litigators are ready and willing to jump in, learn, and distill down the technologies at issue. Advocating on behalf of our clients is at the heart of what we do and is a key skill I recommend any prospective IP litigator work on developing. Evidence, Civil Procedure, and patent law courses provide a solid foundation for how our cases progress. Beyond that, I would recommend focusing on persuasive writing courses, Trial Advocacy, and moot courts. Additionally, working in legal clinics can provide substantive experience that includes standing up in court, working with clients, and developing case strategy.
Yan-Xin: I’d recommend any sort of practical course, such as a clinic where you have an opportunity to work with real clients or a course where you can simulate tasks performed in civil litigation. The most useful class during law school required us to draft written discovery and file a motion for temporary injunction.
What do you like best about your practice area?
Yan-Xin: I enjoy the fact hunting and strategy/adversarial nature of my practice. I like working with experts who are the leaders in a specific field and being able to learn more about emerging or existing technology I didn’t appreciate previously.
What is unique about your practice area at your firm?
Nichole: One of the unique things about Kirkland’s IP Group is how well we integrate with other groups. Kirkland is a large firm with prominent IP, litigation, restructuring and transactional groups. The firm has worked hard to ensure we are a trusted resource to our clients and can offer advice and solutions no matter what issue they face. For example, a client may be working directly with our restructuring team but behind the scenes, our attorneys are seamlessly working together to evaluate the merits of ongoing IP litigations, potential IP-related liabilities, and potential IP-related claims. This presents a unique opportunity for our attorneys to become familiar with other areas of law, to work in collaboration with attorneys across different groups and offices, and to work with our clients in furtherance of their overall business goals.
Yan-Xin: Kirkland takes trial advocacy very seriously. We have mandatory training for associates that simulates trial, opening/closing statements, depositions, and cross-examinations. We also give associates opportunities very early on.
What are some typical tasks that a junior lawyer would perform in this practice area?
Nichole: At Kirkland, one of our primary goals is to train junior lawyers and ensure they are getting substantive opportunities from the beginning. We want and expect junior attorneys to become integral team members who help shape our case strategy and prepare our cases for trial. Typical tasks our junior attorneys work on include learning the technology at issue, conducting legal research, drafting and collecting offensive and defensive discovery, interviewing witnesses, managing vendors, preparing deposition outlines, working with experts, and drafting motions and briefs. As a junior attorney, I went to trial in my first year and defended fact witness depositions, ran meetings with experts, and examined a witness during trial.
What are some typical career paths for lawyers in this practice area?
Nichole: The career paths for lawyers in this practice area vary, but one of the great things about Kirkland is the freedom to choose your cases to gain the experience for whatever trajectory you hope to pursue. We have partners who have been practicing IP litigation for decades, but also have attorneys who move in-house to clients and other tech-focused corporations. Some continue to focus on IP litigation-related issues, while others have taken general counsel roles or have gone into government, working on policy, serving as judges for the PTAB, or becoming United States District Attorneys.