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The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.

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.

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.