The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Mark L. Whitaker, Partner & Co-Chair of IP Litigation Practice and Intellectual Property Group; Rachel Dolphin, Associate—Litigation
Mark Whitaker is the co-chair of Morrison Foerster’s IP Litigation practice. He has more than 30 years of experience crafting legal strategies in high-stakes patent and trade secret litigation. Mark sees the whole board for each of his clients, working closely with them to define a successful litigation outcome and determine the best path to achieve that goal. He regularly acts as lead counsel in matters involving technologies such as semiconductors, photo/optical technologies, chemicals, and database analytics. A past president of the American Intellectual Property Law Association, Mark was elected to their prestigious Fellows membership in 2019.
Rachel Dolphin is an associate in the Litigation department. Her intellectual property practice concentrates on patent litigation and includes litigation, pre-litigation, inter partes review, and other post-grant proceedings. Her work involves a variety of technology fields, including biotechnology, pharmaceuticals, communications, and information technology. In law school, Rachel served as a student attorney for the Legal Services Center, Family Law and Domestic Violence Unit, representing domestic violence survivors in various family law matters. Additionally, she worked as a legal extern for Justice Judith Ashmann-Gerst of the California Court of Appeal, Second District.
Describe your practice area and what it entails.
Mark: My practice is focused on intellectual property (IP) litigation, primarily in the patent and trade secret spaces. I regularly litigate cases before various U.S. District Courts and the International Trade Commission. I represent both clients who have been accused of infringement and those who are asserting their patent rights, as well as those accused of misappropriating trade secrets and those asserting their trade secret rights. Patents and trade secrets both cover technology that is valuable to a company, but in different ways: A patent is published and therefore public knowledge, while a trade secret is technology for which a company, for various reasons, decides to maintain confidentiality.
Rachel: I am an IP litigator with experience in various types of IP cases. I have mostly worked on patent litigation, but I have also worked on significant trade secret cases and have done a little bit of copyright and trademark work as well. I have worked on cases in district courts across the country, before the International Trade Commission, and before the Patent Trial and Appeal Board. In our group, we generally do not specialize in a particular technology; rather, we work on matters in various fields.
What types of clients do you represent?
Mark: At this stage in my career, I tend to represent larger companies that develop and market a broad range of technologies. Currently, my client base consists of companies in industries such as data warehousing and analytics, camera lens technologies, lithography, medical devices, chemical technology, semiconductors, and software. My clients over the years have included Teradata, Nikon, TSMC, Johnson & Johnson, Caterpillar, Dell, BASF, Manitowoc, and AT&T.
Rachel: I have represented clients in numerous fields, including large technology companies, pharmaceutical companies, consumer products companies, and a university. I have also represented multiple pro bono clients, most of whom have been individuals.
What types of cases/deals do you work on?
Mark: I am currently representing Teradata in a trade secrets case dealing with data warehousing and big data analytics technology patents. Other cases involve automated camera lens technology and software, spinal correction and alignment equipment, semiconductor chip and wafer development for various personal and automotive electronics, polyurethane chemistry for golf balls, and hydraulic excavators.
Rachel: Our cases often involve cutting-edge technology, which introduces new challenges and complexities to the already complex world of IP law. The cases I have worked on have varied widely and include a patent case about water filters, a plant patent case about strawberries, patent cases about smartphones and tablets, patent cases about pharmaceutical drug compositions, and a trade secret case about autonomous vehicles.
How did you choose this practice area?
Mark: I developed an interest in technology after my experience as a naval officer following various technical and engineering billets. After law school and a stint in commercial litigation, I found that I could combine my interest in technology with my skills as a litigator by focusing on patent and trade secrets litigation.
Rachel: I was a summer associate at MoFo in the Litigation group. I wasn’t sure what type of litigation I wanted to do, so I tried projects in various groups (e.g., employment, general commercial, and white collar defense). I didn’t do any IP work because I assumed I wouldn’t qualify given my lack of technical background. When I started at MoFo as a first-year associate, I was asked to join a patent case. I was definitely intimidated—I had never seen a patent before—but the rest is history.
What is a typical day like and/or what are some common tasks you perform?
Mark: My day consists of many of the tasks common to complex patent litigation cases. I oversee discovery, both affirmative and responsive. I also will review infringement charts and other technical evidence of misappropriation in my trade secrets cases. I often manage large teams of attorneys, depending on how complicated the litigation is. I am constantly drafting and editing briefs and motions along with various correspondence, and, of course, I conduct regular meetings with my clients.
Rachel: The tasks I perform vary depending on the stages of the cases I am working on and the particular needs of those cases. If cases are in the early stage, my tasks often involve analyzing patents, conducting legal research, and drafting analyses and/or memorandums. When the cases are further along, my tasks are often focused on discovery (drafting requests, responding, analyzing responses, negotiating with opposing counsel, analyzing key documents, preparing for and taking depositions, and assisting with expert reports), and then brief writing (motions for summary judgment and motions to dismiss). As the cases continue to progress, I work on various pretrial tasks (drafting motions, jury instructions, exhibit lists, and witness outlines), and when I’m lucky, the cases go to trial.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Mark: I think it’s helpful to have some kind of scientific or technical degree, such as electrical or mechanical engineering, computer science, chemistry, or biology. It would also be helpful, but it’s not required, to become a member of the patent bar, which requires a separate patent bar exam. At law school, I recommend taking any clinics that are available in litigation practice, especially those that focus on evidence and the burden of proof at trial. Finally, persuasive writing skills are key throughout your career.
Rachel: It is definitely helpful to take a class or two in intellectual property law if you want to get into IP litigation. It is not required (I had not), but it is good to have that general knowledge before starting as an associate. If that isn’t possible, reading a treatise on IP law can also be helpful and can help you get a sense for whether or not the issues seem interesting to you. I also recommend taking some sort of trial skills and/or negotiation workshop. After all, IP litigation is a form of litigation, and it is important to develop those skills. Your Civil Procedure class will also definitely come in handy.
What do you like best about your practice area?
Mark: I really enjoy learning about new and emerging technologies, including many of those that you can find in your own home and that you likely rely on every day.
What are some typical tasks that a junior lawyer would perform in this practice area?
Rachel: Just as there are no typical days, there are no “typical tasks,” but MoFo’s IP group definitely provides substantive experience early on. Our cases tend to be pretty leanly staffed, which means that everyone has significant opportunities and plays an important role on the team. When I was a first-year associate, I drafted and responded to discovery requests; participated in internal meetings regarding strategy; drafted invalidity contentions, which involves reviewing patents and other publications and mapping arguments regarding invalidity; conducted legal research; and reviewed documents for production. I was on two trial teams in my first three years at MoFo, and was able to experience jury trials firsthand.
How do you see this practice area evolving in the future?
Mark: I think companies are understanding more and more that their intellectual property is one of the most important assets they own. So it is important for both U.S. and foreign entities to do their utmost to protect their IP. I also see IP litigation continuing to expand in the courts, as it has at the USPTO, such as with inter partes reviews, which challenge the validity of issued patents. I also think acts of legislation will continue to hone and possibly broaden the scope of access to litigation, refining more causes of action and increasing the availability of IP litigation and related trade issues here in the U.S. and worldwide.
What kinds of experience can summer associates gain in this practice area at your firm?
Rachel: MoFo has a robust two-summer patent program that immerses summer associates in our Patent Litigation and Patent Prosecution practices. This program allows incoming associates to get a lot of experience in the field and to work with many different IP attorneys. When those summer associates start as first years, they have already had substantial experience in our group and are able to jump right back in. Given the amount of time we have had to work with them before they start as associates, we are excited for them to come back and talk about wanting to get them on our cases months before they actually start.
Even for those who did not do the two-summer patent program (and I am in that boat), there is plenty of substantive IP experience a summer associate can have. Our group is always happy to have summer associates dip their toes in the IP waters, whether it is analyzing a patent for potential invalidity defenses, writing a response to an office action in a trademark prosecution, or drafting a memo summarizing recent jurisprudence on a particular IP issue.