The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Nathan Kelley assists clients with patent appeals from district courts and from United States Patent and Trademark Office (USPTO) inter partes reviews. He has argued more than 40 Federal Circuit appeals involving a full range of technologies, including pharmaceuticals, medical devices, software, and computer networking, as well as an equally broad range of legal issues. Beyond litigation, Nate’s experience includes helping develop USPTO rules and guidelines, shaping federal policy on various intellectual property (IP) matters, and internally counseling the USPTO on its implementation of trial proceedings under the America Invents Act (AIA).
As its solicitor and deputy general counsel for IP law, Nate managed all IP litigation for the USPTO and participated in many of the most significant patent and trademark cases in recent years. Nate also acted as the agency’s chief administrative patent judge, leading the Patent Trial and Appeal Board (PTAB) during a critical period as it was coming up to speed with its jurisdiction over inter partes reviews under the AIA. Before his time in the solicitor’s office and PTAB, Nate worked for six years at the Federal Circuit, including as a judicial law clerk. His career in IP law began more than 25 years ago as a patent examiner in the semiconductor field.
Describe your practice area and what it entails.
My practice focuses on patent appellate work, either from district courts or the USPTO. It also includes matters and disputes involving unsettled patent law issues or questions likely to come up on appeal. It’s a mix of being an appellate authority while also covering whatever novel or unusual issues could emerge at any stage of the patent acquisition or enforcement process.
What types of clients do you represent?
Because appellate work can arise in any case, I represent a broad range of clients, including individual patent holders, midsize companies, and even large corporations in the tech and pharmaceutical fields. The clients I work with are a cross-section of all the firm’s clients.
What types of cases/deals do you work on?
The best part of my practice is its variety. While patent law is the common thread, I handle a wide range of cases, from appeals involving pharmaceuticals and Internet-based services to disputes over musical instruments, drones, and wireless speakers. My work spans everything from assisting individual inventors with patent application appeals to litigating major cases involving portfolios of patents for blockbuster drugs. I am involved at every stage, whether advising clients before a lawsuit is filed or working to preserve or overturn decisions on appeal.
How did you choose this practice area?
My undergraduate degree is in electrical engineering. I began my career working as a patent examiner before even thinking about law school, so patent law was a natural fit. I chose to focus my career on patent appeals in law school after realizing that I was more interested in legal issues than the technical aspects I encountered as a patent examiner.
What is a “typical” day like and/or what are some common tasks you perform?
My typical day depends on what stage of a case I’m working on. Appeals are much more compact than full litigations, but they move just as slowly. When I first get a case, there’s always a busy stretch where I dig into the record, looking for anything that might help us build a strong appeal. This involves a lot of reading and trying to get a feel for what went on at trial. Sometimes I’ll spend a full day or more just reading a trial transcript. Other days are spent writing and revising our own briefs, and then much later, I’ll have to learn the case all over again when it comes time to argue it in court. I usually have several appeals moving forward at once, each at a different stage, so sometimes I get to choose which task I want to tackle on any given day.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
The key to being a good appellate attorney is having a strong command of the full legal landscape in your field. There is obviously value in specialization, but appellate lawyers, even those who focus on patent appeals, tend to be generalists in their fields. This is because judges are generalists, and much of the work is translating and condensing a dispute in a way that convinces an appellate court that the trial court made a mistake (or not). Writing is obviously important, but so is exposure to many different areas and issues. Being active in an inn of court, or other organization that regularly discusses emerging legal issues helps, but so does opening yourself up to as many different assignments as possible. Because all patent appeals go to the U.S. Court of Appeals for the Federal Circuit, a specific focus on this court’s jurisdiction and practices is especially helpful. For law students, consider participating in the AIPLA Giles Sutherland Rich Memorial Moot Court competition, a yearly event in which law students draft and argue a mock Federal Circuit patent appeal.
What is the most challenging aspect of practicing in this area?
The hardest part of being a good appellate attorney is translating complicated technical, legal, or procedural issues into simple and persuasive explanations. Lawyers want to be thorough and address every possible issue, but appellate judges and law clerks have only a limited amount of time to consider each case. Appellate briefs that get bogged down in the facts or history of the case usually aren’t very persuasive. It’s important to present the story in a way that’s both engaging and true to the facts while also making a compelling case. You’ll often have only a few pages to tell a story about an invention or product that was discussed for hours at trial. It’s also essential—and sometimes challenging—to stay objective. If you oversell your argument or ignore the weaknesses in your case, the court may become skeptical of everything you say.
What misconceptions exist about your practice area?
The idea that a successful appellate attorney needs to have exceptional oral argument skills is a huge misconception. People tend to judge appellate lawyers by how well they argue in court, but the truth is that cases are won or lost on the briefs, so being a good writer is 90% of the job. While it’s important for an appellate advocate to listen carefully to the court’s questions and clearly explain their position, success often comes down to how compelling their written arguments are. That’s especially true for patent appeals, which often involve complicated technical issues. Many people underestimate how much time and effort goes into drafting an appellate brief, which is actually the heart of the job and requires weeks of careful writing and editing. Patent appeals demand even more attention to detail to make sure the technical background is both accurate and useful.
What are some typical tasks that a junior lawyer would perform in this practice area?
Obvious assignments for junior appellate attorneys include mapping out individual arguments or researching specific legal questions, but it’s also common for them to handle a full district court brief on a particular legal issue. Big trial teams are often very busy, so large firms usually assign a junior appellate lawyer to help with legal research, spotting issues, and quickly drafting filings during the trial when needed. It’s a great way to get trial exposure while also adding real value and building trust between the trial and appellate teams. In appeals involving complex technical issues, which are common in patent cases, junior lawyers are often expected to quickly learn and understand the technical aspects of a case.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
One way to develop an IP practice without a technical background is to focus on an area of IP law that doesn’t involve technology, like trademark, copyright, or design patent law; however, even technical patent cases are often staffed by lawyers without a technical background, which is only required to practice before the USPTO. If an attorney has an aptitude for understanding technological issues, they should be able to work on any district court patent litigation. Strong general litigation experience at a firm that handles patent cases makes it easier to volunteer for patent litigation work. Skilled junior litigators are always in demand at top firms. One of the benefits of working at a firm with a wide range of practice areas is that it provides a natural opportunity to move among specific areas. I worked with an associate who did IP litigation but was interested in antitrust law, and he successfully moved from one area to the other without much trouble. One of the best patent appellate attorneys I’ve worked with started with a liberal arts degree and nonpatent appeals.