The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Paige Cloud is an associate in Sterne Kessler's Trial & Appellate practice group. Her practice focuses on cases in the United States district courts and the International Trade Commission, including cases under the Hatch-Waxman Act. Paige has litigated cases involving various technologies, including pharmaceuticals, medical devices, and electronics. Her practice includes representing plaintiffs and defendants through all steps of patent litigation, including fact discovery, expert discovery, trial preparation, and trial. Paige graduated from William & Mary Law School with a concentration in Intellectual Property. Paige received her B.S. in chemical engineering with an option in biomedical engineering and her M.S. in health care administration at Oklahoma State University.
Steve Pappas is an associate in Sterne Kessler’s Electronics Practice Group, specializing in software, database, computer networking, and financial technologies. Steve’s practice focuses on patent litigation in federal court, global prosecution, and post-grant proceedings (inter partes review and covered business method review proceedings) before the Patent Trial and Appeal Board of the USPTO, representing both patent owners and petitioners. He received his J.D. from Georgetown University Law Center, his M.S. in computer science from Columbia University, and his B.S.E. in computer science from the University of Michigan.
Describe your practice area and what it entails.
Paige: My practice is primarily patent litigation before federal district courts and the International Trade Commission. I am involved in almost every aspect of litigation, from drafting complaints to collecting and producing discovery, brief writing, depositions, and trial.
Steve: My practice is primarily focused on patent litigation before federal district courts and the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR) and post-grant review (PGR) proceedings. My role typically involves developing both technical and legal positions, and drafting briefs and related documents arguing those positions. I also maintain a small amount of patent prosecution work and have recently become involved in some appellate work before the Federal Circuit, mainly concerning appeals from PTAB proceedings.
What types of clients do you represent?
Paige: As a litigation associate, I’m able to take on cases from a variety of industries, which always keeps things interesting. I have represented a wide range of clients, from pharmaceutical companies to electronics manufacturers and everything in between.
Steve: I represent a variety of clients, both large and small (e.g., technological startups). My clients in litigation tend to be medium-to-large companies looking to defend important patents or products. The technology at issue has ranged from computer networking technology to road-building machines to industrial meat slicers.
What types of cases/deals do you work on?
Paige: I work almost exclusively with patent litigation cases, both defending and enforcing. I have been involved in four trials—three in front of juries and one in front of the ITC. Most patent litigation involves litigating both patent infringement and patent validity, although each case is unique. I have also been involved in litigation involving contract disputes, trademark infringement, and trade secret misappropriation.
Steve: For litigation, I represent clients in federal district court actions, primarily involving claims of patent infringement. While many of these cases settle before trial, I’ve had the opportunity to go to trial twice to present our case in front of a jury. For PTAB litigation, I’ve been involved in dozens of IPR proceedings before the USPTO in which the validity of a patent is challenged. Additionally, I assist with appeals to the Federal Circuit arising from proceedings before the PTAB (e.g., IPR proceedings). For prosecution, I assist with application drafting and office action responses in order to obtain patents. It often involves working directly with inventors to draft valuable patent claims and ensure the invention is accurately captured in the patent application.
How did you choose this practice area?
Paige: When I graduated with my engineering degree, I knew I didn’t want to be an engineer. After a year of telling everyone and their dog that I wasn’t going to go to law school, I went to law school with the intention of working in health law. I quickly realized that I loved science too much to move too far away from the field. After taking an oral advocacy course, I also quickly realized that I wanted to be a litigator. Patent litigation was the best of both worlds!
Steve: I never intended to pursue a legal career. I began my career as a financial technology consultant and software developer. My father was a civil litigator and had whispered patent law in my ear for years. Following my master’s degree, I took a job at Sterne Kessler as a technical specialist as a way to see if patent law was a good fit. I realized that patent law allowed me to learn a greater range of technology than I would have as a software developer. I decided to pursue law school while working at the firm, and I have no regrets about my career change.
What is a typical day like and/or what are some common tasks you perform?
Paige: Every day is different, which is another reason why I enjoy patent litigation. Some days, I’ll be reviewing discovery productions to prepare for things like motions, infringement/invalidity contentions, or depositions. The majority of my time is typically spent conducting legal research or drafting motions and briefs.
Steve: My days vary depending on the particular case and phase, which makes each day interesting. Surrounding PTAB proceedings, I spend time reading documents, preparing technical positions, drafting briefs in support of those positions, and preparing for depositions and oral arguments. During the course of district court proceedings, I assist with preparing discovery responses, infringement and invalidity contentions, and expert reports and taking depositions. Overall, the majority of my day involves some form of reading, persuasive writing, and strategy discussions.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Paige: As someone who went to engineering school so she didn’t have to take English classes, it physically pains me to say writing courses. Patent law (much like all areas of law) requires effective and persuasive writing. The more writing experience you can get, the better! I also highly recommend law students to take every intellectual property class your school offers, as well as oral advocacy classes like trial advocacy.
Steve: Similar to other areas of the law, effective writing is the most important tool for patent law. Legal writing courses can improve your abilities in that respect. For those with technical backgrounds, a patent bar training course is an efficient way to learn the Patent Office rules and procedures and core legal concepts related to patent law.
What misconceptions exist about your practice area?
Paige: The biggest misconception in patent litigation is that you need a science background! While this may be true for patent prosecution, it is not true for patent litigators. Some of the best patent litigators I know don’t have science backgrounds! All you really need is a love for science and the ability to learn.
Steve: One of the biggest misconceptions is that you must choose between patent prosecution and patent litigation (or that the choice will be made for you). I’m proof this is false. I began my career in patent prosecution and have since shifted almost entirely into patent litigation. Sterne Kessler doesn’t draw any strict boundaries; they’ve encouraged me to discover what interests me and to form my practice around those interests. It’s possible to maintain a mix of patent litigation and patent prosecution work if that’s what you desire.
What is unique about your practice area at your firm?
Paige: Patent litigation at Sterne Kessler is also known as the Trial and Appellate group or TAG. TAG is unique in that it collaborates with every single other group at the firm, which allows the associates and partners in TAG to experience a wide range of technologies. We’re also able to litigate matters in district courts, the PTAB, and the ITC depending on the case. While I can’t speak for other groups, TAG also has some of the best mentors and partners who are always willing to give you advice or help you get on cases you’re interested in.
Steve: I am part of the Electronics group at Sterne Kessler. What makes it unique is the range of work performed within the group. Members of the Electronics group are involved not only in patent prosecution, but also in opinion work, due diligence, licensing, reexamination, reissue, PTAB and district court proceedings, International Trade Commission (ITC) actions, and appellate work at the Federal Circuit and Supreme Court. There’s significant crossover between groups at Sterne Kessler. I’ve been fortunate to work with others from the Trial and Appellate and Mechanical and Design groups in both prosecution and litigation matters.
What are some typical tasks that a junior lawyer would perform in this practice area?
Paige: Junior associates can expect to do a lot of document review, legal research, and memo drafting. They may also be asked to draft briefs or discovery letters or help prepare for depositions.
Steve: For patent prosecution, junior attorneys draft applications and responses to office actions issued by the USPTO. They also participate in invention disclosure calls (attorneys speak directly with inventors prior to drafting a patent application) and examiner interviews (attorneys speak to the USPTO). For PTAB litigation, junior attorneys often conduct prior art searching, create claim charts mapping prior art to challenged claims, develop technical and legal arguments for briefs to both defend and invalidate patents, help prepare expert witnesses for deposition, and conduct legal analysis when needed.
What kinds of experience can summer associates gain at this practice area at your firm?
Paige: We work hard to give summer associates substantive work over the summer, and the work really depends on the cases that are currently ongoing at the time. When I summered at the firm in 2020, I helped develop IP strategies for a client and drafted motions. Examples of assignments that summer associates were given this past summer include drafting research memos for trial strategy, helping prepare expert reports, and helping draft dispositive motions.
Steve: I was not a summer associate, but I have worked with a number of them over the years. Surrounding patent prosecution, summer associates have the opportunity to analyze and draft responses to real office actions, including amending or drafting new claims. Summer associates also gain valuable insight into the Patent Office’s process through participation in examiner interviews. For PTAB and district court litigation, summer associates assist with technical or legal issues and may conduct legal or technical research and prepare a memorandum on the issue. In the Electronics group, summer associates also prepare a presentation covering an important legal issue or recent case of their choosing and present at our Electronics group luncheon. The work given to summer associates is substantive and the same work an associate would otherwise be doing.