Skip to Main Content

Intellectual Property

Overview

Intellectual Property practice generally falls into one of three buckets: transactional IP, IP litigation, and patent prosecution. It is rare for an attorney to work in both IP transactions and litigation at a large firm but more common in smaller practices. Transactional IP attorneys work on transactions to license intellectual property assets or in support of M&A transactions to handle the IP-related issues in such deals. IP litigators work on disputes involving patents, copyrights, trademarks, and trade secrets. Patent prosecution involves assisting clients in obtaining patents from the Patent and Trademark Office. Patent prosecutors are required to have a science degree and to pass the Patent Bar examination. Patent lawyers evaluate whether their client’s request impinges on other intellectual property, defend against opposition to client’s applications in administrative trials, and oppose applications that impinge on the client’s intellectual property. Lawyers working in “hard IP”—patents and biotech assets—are often required to have a technical background even if not practicing before the patent bar and an undergraduate or graduate degree in science or engineering is helpful. IP lawyers need to fully understand the technologies, products, and businesses of their clients to represent their clients well.

Featured Q&A's
Get an insider's view on working in Intellectual Property from real lawyers in the practice area.
Betsy Flanagan, Partner • Patrick Lauppe, Associate—IP Litigation
Cooley

Describe your practice area and what it entails.

Betsy: My practice focuses on life sciences patent litigation and other life-sciences-related IP disputes, including trade secret misappropriation and contract disputes.

Patrick: I am fortunate to have the opportunity to represent some of the most exciting and innovative technology companies from around the world. My work focuses primarily on software and hardware companies. I have litigated cases relating to virtual and augmented reality, lidar sensors, location-based gaming, electronic displays, inertial sensors, haptic feedback, smartphone chips, and video coding standards. I primarily focus on the technical merits of cases, including interfacing with experts, understanding and explaining source code, researching prior art, and generally figuring out how things do (and don’t) work.

What types of clients do you represent?

Betsy: I represent innovative pharmaceutical, biotech, and medical device companies, whether in enforcing their IP or defending against allegations of infringement. As an example, I am currently representing Moderna in a patent infringement case.

Patrick: I primarily represent large technology companies—particularly software and hardware companies defending against patent infringement claims. I also represent smaller emerging technology companies that are either facing some of their first lawsuits or bringing their own patent infringement suits as plaintiffs.

What types of cases/deals do you work on?

Betsy: I handle a lot of Hatch-Waxman litigations, which arise when generic pharmaceutical companies seek to market their versions of branded pharmaceuticals before the expiration of the patents that cover the branded products. I also represent clients in disputes against non-generic competitors. 

Patrick: I have mainly worked on patent infringement suits in federal district court. I have also worked on administrative proceedings before the Patent Trial and Appeals Board, International Trade Commission Section 337 investigations, and appeals to the U.S. Court of Appeals for the Federal Circuit.

How did you choose this practice area?

Betsy: I was drawn to life sciences patent litigation after pursuing a chemistry degree and being exposed to the intersection of law and science in my undergraduate studies. Before going to law school, I worked at a pharmaceutical company for a few years, then decided, based on that experience, to pursue a law degree rather than a Ph.D. I’ve never regretted my decision and have enjoyed the tech-heavy aspects of my legal job.

Patrick: I wanted to work directly with the things that make tech companies unique—i.e., the intricate details of their technology. Accordingly, I wanted to practice in an area of the law that allowed me to work directly with source code and technical design—which patent litigation requires me to do daily.

What is a typical day like and/or what are some common tasks you perform?

Betsy: Every day is different, which is fun. I spend a lot of time thinking strategically about cases and analyzing the merits, including doing legal analysis, interviewing witnesses and experts, and reading the scientific literature. I work a lot on teams, and spend time managing case strategy and tasks, as well as reviewing and editing work product and providing feedback to team members. Another daily occurrence is communicating with clients about case progress and strategy, usually by email or video call.

Patrick: One of my favorite aspects of patent law is how wide-ranging and un-typical the tasks can be. In a single day, I can move from standard litigation tasks like writing a brief or taking depositions to highly technical work like parsing through source code or stripping wires so I can get a prior art system hooked up to electricity.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Betsy: Courses in patents and intellectual property, civil procedure, evidence, and trial practice are all very useful to take if you want to pursue a patent litigation career. One of the most important skills you can hone throughout your studies and early on in your career is persuasive writing. Pay attention to your legal writing instructor and invest the time in your writing assignments.

Patrick: I would recommend supplementing law school coursework with technical courses at the larger university. For example, I took programming and artificial intelligence courses while in law school that have proved valuable for my practice. I also recommend clerking for a federal district court judge in a patent-heavy district like the U.S. District Court for the Northern District of California or the District of Delaware. In my experience, nothing else has been quite as useful for developing strategic instincts than to be faced with the task of helping wade through the massive docket of a federal district court judge as a clerk.

What is unique about your practice area at your firm?

Betsy: Cooley has broad experience and deep knowledge in IP litigation, and there is no type of dispute we can’t or haven’t handled, from patent litigation to trade secret litigation. We know our clients’ businesses and keep their goals top of mind in our legal representation.

Patrick: Cooley’s IP litigation group has played a major role in shaping the patent litigation landscape for software and hardware companies. For example, Cooley partners such as Heidi Keefe and Dena Chen have pushed the area of patent eligibility forward with high-profile, watershed wins at the Federal Circuit. Further, Cooley’s IP litigation group is uniquely dedicated to developing the merits of patent litigation cases, with an almost academic level of focus on understanding and explaining technology to deliver great strategic outcomes for our clients.

What are some typical tasks that a junior lawyer would perform in this practice area? 

Betsy: Preparing and responding to discovery; reviewing documents to develop a chronological factual timeline of key occurrences relevant to the case; working with witnesses to prepare for deposition; and drafting motions and briefs.

Patrick: Junior lawyers are given incredible opportunities for growth in Cooley’s IP litigation group. The strength of Cooley’s emerging companies practices on the corporate side of the firm means that the IP litigation group often gets unique opportunities to help out smaller companies facing their very first patent suits. These lower-budget cases are a fantastic opportunity for junior lawyers to get experience running all aspects of a case—from strategy to client interfacing to arguing in front of a judge.

How do you see this practice area evolving in the future?

Betsy: Life sciences continues to be a growing field, and patents are important assets for companies to stake a fence around their innovative technology. As the tech develops, the patents will issue, and IP will always be a key lever for companies to protect their market. As biologics medicines continue to be approved and the biosimilar industry develops, more litigation will ensue. 

Patrick: The technology at issue in patent litigation tends to lag slightly behind technology trends, in part because of the time required to prosecute patents. So IP battles more likely to flare up in the near future relate to technology that is prominent or growing in prominence now—including artificial intelligence, electric and self-driving cars, and augmented and virtual reality.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Betsy: You can do it! As long as you have a passion for what you are doing and are willing to learn, the doors are open. Knowledge of the law and its contours is the key to applying it to any given case. There will always be technical experts to help—and don’t forget, they will be the ones testifying, not the lawyers.

Patrick: As a lawyer without a formal technical or science background (I majored in German literature in college), my main advice is that there is absolutely a place for you in IP litigation if you are interested—no matter what your background is. Even folks who have extensive formal technical backgrounds end up having to do a lot of learning in this job, because no one has a broad enough background to have seen every area of technology that gets litigated. So the main things you need are the humility to be OK with constantly being reminded that there’s something you don’t understand, and the curiosity and drive to dig into a new area of technology and figure it out.

Betsy is an experienced trial lawyer who specializes in life sciences patent litigation, and she has substantial experience representing innovators against generic challenges in Hatch-Waxman litigation. She has achieved significant wins in district court and defended them on appeal. Betsy also counsels pharmaceutical and biotech companies to strategically strengthen their patent portfolios for litigation.  Betsy has played significant roles in complex, multi-jurisdictional cases, as well as appeals through the Federal Circuit and U.S. Supreme Court. She has been repeatedly recognized for her high-impact life sciences litigation work. Betsy takes pride in mentoring the next generation of lawyers, and she is a regular presenter on life sciences litigation topics. During law school, Betsy was lead managing editor of the Minnesota Law Review.

Patrick is an associate in the intellectual property litigation practice group. He rejoined Cooley after serving as a patent law clerk for Judge Beth Labson Freeman in the U.S. District Court for the Northern District of California. Having co-designed a cryptocurrency and completed programming courses during law school, Patrick focuses his practice on cutting-edge technologies, such as augmented reality, artificial intelligence, autonomous vehicles, video games, semiconductor chips, and medical devices. Patrick has experience before the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission, the Patent Trial and Appeal Board, and federal district courts.

Paul Bondor, Partner • Joze Welsh, Associate—Intellectual Property
Desmarais LLP

Describe your practice area and what it entails.

Paul: My practice focuses on patent infringement jury trials in federal courts. Since a trial doesn’t happen overnight, my daily work spans courtroom hearings and motion arguments, fact depositions, expert reports, and depositions, all the way through the jury trial, post-trial arguments, and appeal. Basically, I’m always working with my colleagues to develop our client’s case on the merits, including the technical details required to prove (or fight) infringement and validity of the patents at issue, as well as damages-related evidence.

Joze: Our practice focuses primarily on technology-driven patent infringement cases headed to jury trial in federal court. We also frequently work on other patent-related matters such as inter partes review (“IPR”) proceedings at the Patent Trial and Appeal Board (which deals with patent validity disputes), as well as investigations before the International Trade Commission.

What types of clients do you represent?

Paul: At Desmarais LLP, we represent blue-chip global technology powerhouses, substantial intellectual property licensing companies, and life sciences and medical device companies, as well as individual inventors with world-changing inventions. I’ve had the opportunity personally to work with all of these types of clients.

Joze: We represent a wide variety of clients from large tech and pharmaceutical leaders—such as Apple, Google, and GlaxoSmithKline—to innovative individuals and small businesses with patented inventions. Our clients include both patent holders/plaintiffs and defendants, which gives us unique insight on “both sides of the v” that allows us to best represent all of our clients.

What types of cases/deals do you work on?

Paul: High-profile patent infringement cases make up the bulk of our practice, but we also take on other high-stakes technology-related cases involving unfair competition, trade secret theft, and corporate raiding.

Joze: I primarily work on district court patent infringement cases. While the cases are all technology-driven, those technologies vary widely. I have worked on cases involving computer networking, smartphone hardware and software, medical testing and devices, pharmaceuticals, and consumer products. We also occasionally work on other technology-related matters. For example, I have worked on antitrust and trade secret litigations.

How did you choose this practice area?

Paul: I really like analytical and problem-solving challenges, and I enjoyed studying engineering in college. But I’m also a talker who loves argument, and I thought there would be more variety in practicing law. After two years as a federal law clerk watching jury trials and learning about effective advocacy and writing, I chose to go into intellectual property litigation—a path that gives me all the excitement and challenge associated with trying a case in court, coupled with an endless variety of new technologies to learn about.

Joze: I studied neuroscience as an undergraduate. After spending some time in the lab, I knew I wanted to do something different after graduating, but did not want to give up the opportunity to constantly learn and be challenged. I asked a neuroscience Ph.D. for her thoughts. She said, “Have you considered intellectual property law?” Turns out, that was a great suggestion.

What is a typical day like and/or what are some common tasks you perform?

Paul: Typically, any given day will find me either in my office preparing for the next event, be it trial, a hearing, a meeting, or a deposition (or working with my team on litigation-related documents of all stripes: pleadings, briefs, and written discovery requests or responses) or on the road to get to a hearing or deposition, whether that’s in Delaware, California, Texas, Japan, or Taiwan.

Joze: In patent litigation, I would have to say that there is no truly “typical” day. It is different depending on the case and the stage that it is in. I may, for example, be meeting with a client to learn about their technology, strategizing with colleagues, taking or defending a deposition, writing a brief or other pleading in my office, or preparing for an upcoming trial.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Paul: An undergraduate degree in engineering or science is certainly helpful. Once you get to law school, Evidence and Trial Advocacy are also helpful—there’s no substitute for getting on your feet and presenting evidence and arguments in whatever forum is open to you.

Joze: I would recommend a trial advocacy class or any mock trial type program. Persuasive speaking may come naturally to some, but as I learned during trial advocacy classes (and in our trial training at Desmarais), when your prepared argument or line of questioning is peppered with (or derailed by) questions and objections, you need a new set of skills to stay on track. For me, practicing has been the best way to improve—so I would suggest getting on your feet as soon as possible.

What is the most challenging aspect of practicing in this area?

Paul: I think the single biggest challenge is the task of explaining enormously complicated technology to judges and juries who are not familiar with it, who likely have no preexisting interest in it, and who almost certainly don’t come pre-equipped with an educational background in the area. In order to win, you not only have to make the technical aspects understandable, but you also have to provide enough of the rest of your client’s story to make the facts interesting and compelling.

Joze: The most challenging aspect (but also, in my opinion, one of the most fun) is distilling complex technologies into explanations and arguments that an audience who is less familiar with the technology—whether judge or jury—can not only quickly understand, but be persuaded by. It is a great opportunity to get creative and collaborate (including with colleagues in nearby offices who are willing to lend an ear).

What do you like best about your practice area?

Paul: Far and away, the best thing about my practice area is its astounding variety. Because you have to learn the technology at issue—understanding the details so well that you know it better than the technical experts—every matter gives a chance to learn fascinating stuff. You get to learn about it from passionate people, and each case is a story with its own cast of characters: witnesses, clients, judges, and opposing counsel. Everything is new, every time, and the endless variety makes working a lot of fun.

Joze: Patent litigation does not get boring or repetitive—each case brings something new. We are not only learning about new technologies, we also regularly get to meet and learn from incredible inventors, experts, and other scientists in a wide range of fields.

What misconceptions exist about your practice area?

Paul: People are always surprised to hear that we try our cases to juries because they assume that juries wouldn’t be able to understand the complex technology. But if the jury has trouble understanding our cases, we’re not doing our job. Likewise, people often think that you need a degree in engineering or the sciences to excel in patent litigation, but I think that it’s possible to succeed regardless of your background—if you’re not afraid of technology and if you’re smart, interested, and dedicated enough to push yourself to really learn it for each case. The only thing I wish I’d known at the outset is just how much on-your-feet experience helps you as a trial lawyer; I would have started even earlier with trial advocacy and clinic work in law school.

Joze: One misconception is that to work on a particular case, you must have an educational background or other experience in the relevant field. While that can be helpful, it is not a requirement or the norm. We all work on cases in a variety of fields. What is most important is a willingness to dig into and learn the technology (with help from expert witnesses, scientists, and other team members).

What is unique about your practice area at your firm?

Paul: Though we concentrate on a single practice area, we differ from virtually every other law firm in our space because we do not bill by the hour. Instead, our alternative billing arrangements let us work more efficiently, focusing on the work necessary to win. By avoiding traditional incentives that encourage simply billing hours, we’re able to structure a variety of arrangements to meet a client’s needs more effectively.

Joze: We are trial focused and team oriented. Throughout any litigation, we are always thinking of the big picture and strategizing for our long-term case goals (including winning at trial). Even in my first years at Desmarais, partners and senior associates would not just give me assignments. They would take the time to explain to me why we were doing things and what we were trying to achieve. The results of any particular project or case, therefore, are never just for that case. They also provide valuable insight that can be carried on through future cases. In addition, we do not bill by the hour, which really allows the firm’s collaborative atmosphere to flourish. There have been countless times when I have dropped by a colleague’s office (who was not working on the same case) to bounce ideas off of them or to get advice. The focus is on getting to the best result, not on tracking time.

Paul Bondor is a partner at Desmarais LLP. After studying mechanical and aerospace engineering at Princeton University, he attended the University of Michigan Law School, where he served on the Michigan Law Review. He clerked for the Hon. Louis L. Stanton in the U.S. District Court for the Southern District of New York from 1993–1995 and then began private practice at Kenyon & Kenyon, where he became a partner in 2001. He was also a partner in Kirkland & Ellis’s New York office from 2004–2011.

Joze Welsh’s practice focuses on intellectual property and technology-related litigation, including patent and antitrust litigation. Her experience includes preparing pleadings and contentions, drafting briefs, taking depositions, and preparing fact and expert trial witnesses in cases involving smartphone software, computer networking technology, medical and robotic devices, and consumer products. Ms. Welsh has also served as pro bono counsel in asylum proceedings at U.S. Citizenship and Immigration Services. During law school, Ms. Welsh served as an Articles Editor of the Cardozo Law Review and participated in Cardozo’s Tech Startup Clinic, where she assisted tech startup clients with entity formation, funding questions, intellectual property issues, commercialization strategies, and operational and employment matters.

Dan Tucker, Partner—Electrical Practice Group • Lynn Parker Dupree, Partner—Trademark Practice Group
Finnegan

Describe your practice area and what it entails.

Dan: When a patent is asserted in district court, the defendant usually challenges the validity of that patent in a proceeding before the PTAB. I help our clients (plaintiffs and defendants) develop and execute winning district court and PTAB strategies that leverage the unique aspects of each forum. I also advise clients on strategies for appeals from these cases to the Federal Circuit. 

Lynn: Privacy is a cross-cutting area of law that impacts all industries. I help clients align their business practices with complex and evolving privacy laws. My practice is focused on counseling and assisting in the development of privacy governance and compliance frameworks that are suitable for the needs of each particular client.   

What types of clients do you represent?

Dan: I have represented a wide variety of clients ranging from startups to Fortune 500 companies.

Lynn: I provide advice to a variety of clients across multiple industries, from small companies to multinationals.

What types of cases/deals do you work on?

Dan: At any given time, I am typically engaged in multiple district court litigations, PTAB proceedings, and Federal Circuit appeals. Given my technical background, most cases are in the computer or electronics space.

Lynn: I frequently provide privacy compliance counseling and governance advice to clients. Clients often need assistance with conducting marketing and advertising initiatives in compliance with new privacy laws, sharing data with third parties, as well as international data transfers. I also provide guidance on implementing artificial intelligence tools into business processes. 

How did you choose this practice area?

Dan: I am an electrical engineer by training, and I was always interested in patent law. After trying my hand at two different engineering jobs (for Lockheed Martin and General Electric), I decided that I wanted to do something different, so I took a job as a patent agent at a boutique law firm. I loved the work, so I went to law school, applied to Finnegan, and I never looked back. 

Lynn: From a very young age, I always understood that personal information was powerful. When I got my first privacy-related job in the Department of Homeland Security Privacy Office many years ago, I immediately knew that this was the field for me. Privacy is a universal issue that impacts everyone, and I could see how the work I did provided more protections for the public. I love helping companies think creatively about how to protect privacy in a manner that furthers their company goals.

What is a typical day like and/or what are some common tasks you perform?

Dan: Every day brings different excitement based on the timeline of each case. Some days include preparing for or participating in depositions or court hearings in various parts of the country. Almost all days include at least a few team or client-facing meetings for ongoing cases. But this work also requires a lot of reading, analysis, and writing; so, I spend a few chunks of time each day reading underlying materials and drafting or reviewing briefs or other papers. 

Lynn: Every day in privacy is different, in large part because it is such a rapidly evolving area of law.  Some days I am providing advice on the privacy implications of implementing artificial intelligence. Other days involve providing advice on advertising and marketing campaigns, reviewing or drafting privacy policies, conducting privacy assessments, or counseling companies on various aspects of privacy compliance. I also review data protection agreements and contracts, and provide advice on international data transfers. 

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Dan: Learn to explain complex technical and legal issues as simply and clearly as possible, both verbally and in writing. To do this, you need to practice. New attorneys can hone their writing skills by reading many of the great books on writing and by reading legal briefs written by excellent writers. Similarly, I’ve learned a lot about oral advocacy by observing court hearings. But for both written and oral advocacy, the best way to improve is to seek out stretch opportunities, overprepare to excel at those opportunities, and then seek honest but constructive feedback from trusted colleagues.

Lynn: New entrants to the field should have good listening skills and a willingness to engage in rapid and continual learning. I strongly believe that the future of privacy exists at the intersection of law and technology, and that privacy lawyers need to develop their understanding of new technologies in order to provide comprehensive legal guidance. Additionally, privacy lawyers often need to translate legal requirements into business actions, so new entrants should also develop the capacity to communicate clearly with non-legal audiences in addition to lawyers. 

What is the most challenging aspect of practicing in this area?

Dan: Breaking down complex technical or legal arguments into simple terms so that they are persuasive to the judge or jury. The law can be nuanced, and technology can be complicated. Patent law brings the two together and often leaves folks scratching their heads. Our challenge as patent attorneys is to make these obtuse issues easy to digest. It requires careful analysis and a clear delivery. But it is also rewarding when you generate work product that persuades the decision-maker and helps win the case.

Lynn: The pace of change within privacy is unbelievably fast. New privacy laws are passing every day, which is both challenging and exciting. The way data is collected, transmitted, and stored is also increasingly more complex, and sometimes requires the application of law for circumstances the law simply did not contemplate. The application of privacy also requires an understanding of new technologies, which means that privacy lawyers must develop these skills or be in communication with technologists who can assist with learning about a new or unfamiliar technology.

What do you like best about your practice area?

Dan: One thing I love about patent law generally is that I am always learning about interesting new technologies. One thing I love about patent litigation in particular is building teams and fostering relationships with my colleagues and clients. My favorite work memories all revolve around great teams coming together to secure a win for a client. 

Lynn: I enjoy the collaborative aspects of privacy counseling. Sometimes questions about a specific legal issue result in larger brainstorming conversations. I enjoy helping companies think through methodologies to design processes or launch products in privacy-sensitive ways. It’s exciting to see a legal recommendation turn into a product or a plan.

What is unique about your practice area at your firm?

Dan: Finnegan is a special place because of its culture. Most organizations talk about culture, but Finnegan practices what it preaches: we work hard, we work together, and we truly care for each other. This starts in the partnership: partners openly collaborate on business development and substantive legal work, and we share that work across the partnership based on the best interests of our clients and the firm. And it carries through with our associates: the firm invests large amounts of resources into training our associates, and we encourage them to develop broad practices spanning different technologies and aspects of the law. We also work hard to give associates early opportunities for growth, both in terms of substantive legal experience and business development opportunities. 

Lynn: Privacy is a cross-cutting area of law, so it allows me the opportunity to work with a wide variety of my colleagues supporting clients across multiple industries. My privacy practice is business-objective driven with a strong focus on the technology underlying the organizational processes. Having a team of attorneys with STEM backgrounds is a valuable complement to our privacy policy, governance, and compliance experience, and allows me to provide more robust guidance.

What kinds of experience can summer associates gain in this practice area at your firm?

Dan: Our summer associates will gain a variety of experiences that fall into three buckets: formal training, hands-on experience, and culture building. Finnegan’s formal in-house training programs are second to none and span virtually all aspects of IP law. In terms of hands-on experience, typical projects include legal research, brief writing, and assisting with presentations. Summer associates are also often invited to sit in on and observe depositions and hearings. We have fun during the summer program and view this as an opportunity to get to know each summer associate and allow them to bond with each other. I am still great friends with those in my summer class because of the bonding we did during the summer program.

Lynn: Summer associates can expect a hands-on experience that fully integrates them into the team.  The work can include drafting articles to inform clients of new developments in the law. Summer associates have the opportunity to conduct legal research and analysis and assist with presentations regarding a variety of topics, often on cutting-edge issues. Moreover, summer associates get to know the firm through fun social events as well as organized professional development sessions.

Dan Tucker focuses his practice on the interplay among district court patent litigation, post-grant proceedings before the Patent Trial and Appeal Board (PTAB), and Federal Circuit appeals. Dan has litigated numerous patent infringement cases from filing to resolution and has experience in all stages of litigation, including all aspects of discovery; drafting dispositive motions and claim construction briefs; working with experts to prepare expert reports; and arguing in court, including claim construction hearings, PTAB hearings, and Federal Circuit appeals. He has represented clients across a broad range of technologies in the computer and electronics fields.

Lynn is the leader of the firm’s privacy practice and focuses on privacy compliance, governance, and counseling for clients navigating the dynamic privacy landscape. Her years of privacy experience provide her with the sharp ability to provide actionable privacy advice and guidance, and a keen understanding of the ways technology can be used to protect individual privacy. Prior to joining the firm, she served as chief privacy officer of the Department of Homeland Security (DHS). In that role, Lynn was responsible for advising the Secretary of Homeland Security on matters involving privacy for the department.

Jenine A. Rossington, Associate
Kilpatrick

Describe your practice area and what it entails.

At Kilpatrick, I practice trademark law, focusing primarily on national and international trademark enforcement to protect my clients’ trademarks. One of the first steps in protecting a client’s trademark is applying to register the trademark. In the U.S. our clients apply to register trademarks at the U.S. Patent and Trademark Office (PTO). Because I focus on trademark enforcement, I typically monitor new trademark applications or trademarks in use to determine whether any third-party trademarks may infringe on any of the trademarks in a client’s portfolio of existing trademarks. I bring to my clients’ attention any marks that they should be aware of but refrain from enforcing against as well as marks that I recommend enforcing against. Enforcement could involve, for example, corresponding with a third-party trademark owner and resolving the matter, filing an opposition with the Trademark Trial and Appeal Board regarding a pending trademark application, or filing a lawsuit against a third party using an infringing mark.

What types of clients do you represent?

Because of our strong reputation, Kilpatrick serves the intellectual property needs of major international and national companies. In my practice, I have served clients such as Meta Platforms, adidas, Delta Air Lines, Red Bull, Ormco Corporation, and Ford Motor Company.

What types of cases/deals do you work on?

Because my practice focuses on national and international trademark enforcement to protect my clients’ trademarks, I most often initiate a trademark dispute by contacting third parties who are applying to register or using trademarks that may infringe on my clients’ trademark rights. If the matter involves an international application or international use, I work with local counsel to enforce against the third-party mark. Interestingly, my clients have typically been defendants in most of the federal trademark litigation matters that I have handled.

How did you choose this practice area?

During my first year of law school, I attended holiday events at different firms, including Kilpatrick. It was at this event that I learned about trademark law. After interviewing with Kilpatrick, I was honored to be chosen for a 1L summer associate position. During my 1L summer at Kilpatrick, I rotated through different practice groups and knew the Trademark and Copyright Group was where I saw myself in the future. Because brand recognition is so crucial for businesses, trademark attorneys have the benefit of participating in the behind-the-scenes efforts to register and protect trademarks that we then see posted on billboards or on store shelves. Additionally, I chose my practice area because of the great personalities on my team, which I knew would lead to an enjoyable work environment with brilliant people.

What is a typical day like and/or what are some common tasks you perform?

Because my practice focuses on national and international trademark enforcement, my tasks involve managing hundreds of trademark enforcement matters in various stages. Daily tasks could include assessing what action, if any, my client should take against a potential infringing third-party mark, contacting a party applying to register a trademark at the U.S. PTO, negotiating with opposing counsel regarding a trademark dispute, working with local counsel to draft and revise international trademark oppositions, drafting demand letters, drafting written discovery or engaging in motion practice for a Trademark Trial and Appeal Board opposition, or drafting agreements or letters to formalize the resolution of a dispute.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Anyone interested in intellectual property should take relevant courses in law school to gain general knowledge about the practice area, join organizations in law school or in the community that are IP-focused, and seek out internships within the field. Most importantly, you should focus on being teachable and seeking out opportunities for feedback. As much as we prepare, there are skills that develop only after you are on the job. While taking trademark and copyright classes, joining several IP organizations, and working as a returning summer associate in Kilpatrick’s Trademark and Copyright Group provided me with solid experience and skills, my eagerness to learn and grow and my understanding that I could not possibly know it all, has helped me the most in my practice area.

What do you like best about your practice area?

As a trademark lawyer, I like that I can observe, in the real world, the benefits our clients receive from our service. When I see advertisements of my client’s product, I know that my effort in defeating a motion for preliminary injunction has allowed my client to continue to use their trademark for their product. Or when I’m in a grocery store and I notice that a third party has rebranded, I know my efforts in enforcing my client’s trademark rights led to that rebrand. Trademark lawyers have a crucial role in ensuring businesses continue to build brand recognition nationally and internationally. 

What is unique about your practice area at your firm?

Within my practice group, several attorneys have carved out areas of expertise, whether it be in online trademark enforcement, Trademark Trial and Appeal Board practices, international trademark disputes, or federal trademark litigation. Because of the availability of client service opportunities, we can focus on niche areas of our practice, which ensures we are providing a high quality of service to our clients. Client service typically involves collaborating with several colleagues, each of whom can bring a different skill set or knowledge to the team. If you have a specific area that you are interested in, for example, within trademark law, Kilpatrick likely can provide a myriad of work opportunities within that specific area. 

What are some typical tasks that a junior lawyer would perform in this practice area?

Typical tasks for a junior lawyer could include researching case law, reviewing documents produced in federal litigation, researching online for actual confusion between two trademarks, drafting demand letters, drafting written discovery such as initial disclosures, drafting complaints and notices of oppositions, reviewing third-party trademark applications and evaluating whether any marks may infringe on our clients’ rights, drafting trademark assessments to determine if further action is warranted, and keeping track of deadlines.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

There is a place for you in IP. I graduated from college with a Bachelor of Science in Criminology. While there are specific areas within IP, such as patent law, that may require more specialized or technical experience, such experience is not necessary for trademark and copyright law. Because of the abundance of opportunities at Kilpatrick, I have the opportunity to focus on a niche area in IP, trademark law, without having to focus on an area that may require a technical or science background. I recommend focusing on firms or companies that have a wealth of opportunities in non-technical IP practice areas.

Jenine A. Rossington, Associate—Trademark/Copyright

Jenine Rossington focuses her practice on copyright and trademark law. Prior to joining the firm, Jenine served as a law clerk for the Honorable W. Louis Sands in the U.S. District Court for the Middle District of Georgia where she researched, drafted, and edited orders on a variety of civil and criminal law topics including business litigation, employment discrimination, civil rights issues, prisoner rights, torts, and tax.

While attending law school, Jenine worked with the firm as a summer associate in 2016 and 2017. She served as a legal extern in the U.S. District Court for the Northern District of Georgia, research assistant to Professor Dorothy A. Brown, and Symposium Editor of the Emory Law Journal.

Prior to launching her legal career, Jenine worked as a Catastrophic Bodily Injury and Litigation Claims Examiner for a major general insurance company where she investigated coverage, liability, and damages on personal automobile injury claims. While attending the University of Tampa, Jenine studied international criminal law and international human rights law abroad at the University of Oxford in Oxford, England during the fall of 2010.

Peter Law, Partner • Doug Wentzel, Partner
Knobbe Martens

Describe your practice area and what it entails.

Peter: I focus on the transactional aspects of intellectual property (IP) law, including patent and trademark prosecution work and advising clients on IP strategy. I help inventors prepare patent applications and apply for patent protection of their ideas, and negotiate with the U.S. Patent and Trademark Office to obtain patents on their inventions. I advise clients on how best to manage a portfolio of patents to protect their own inventions and how to avoid problems with others’ patents. When someone wants to use our clients’ inventions, I help negotiate a licensing agreement between our client and the other company.

Doug: I am a patent and trade secret litigator. Patent litigation includes cases generally involving the infringement or validity of patents, whereas trade secret litigation generally involves the misappropriation of trade secrets. As an IP litigator, I help innovative clients to assert their IP rights in court and/or to defend against assertions of IP rights by others. I work with my case teams to assist clients with all aspects of litigation, from pleadings to fact and expert discovery (including depositions), claim construction, motion practice (e.g., summary judgment), hearings, trial, and post-trial.

What types of clients do you represent?

Peter: I represent a diverse array of clients, from large corporations to federal government agencies, small startups, and solo inventors. I have represented clients in a variety of technical areas, including pharmaceuticals, oil and gas, nuclear technology, logistics, electrical and computer engineering, fashion, and design.

Doug: I represent companies of all sizes across a broad spectrum of technologies, including wearable health devices, minimally invasive heart repair devices, respiratory therapy products, automotive shock absorbers, microdermabrasion systems, and more.

What types of cases/deals do you work on?

Peter: The largest portion of my practice is supporting our clients’ patent portfolios and protecting their innovations. I work with others at my firm to prosecute patent applications and advocate for our clients at the U.S. Patent and Trademark Office. Often, a client’s business success is dependent on whether they have patent protection. It is a real joy to help secure patents for clients which will enable their company to succeed.

When a client is seeking to acquire a portfolio or company or be acquired, I work on IP diligence. I also work on licensing our clients’ IP to other companies. For example, recently I negotiated an arrangement with a major energy company to license our client’s patent portfolio in a deal that could change the oil refining industry.  

Doug: I work on patent infringement and trade secret misappropriation cases in district courts across the country, on specialized patent infringement cases (called investigations) before the International Trade Commission (ITC), and on other patent proceedings (e.g., Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB).

How did you choose this practice area?

Peter: While working as an engineer, I realized I wanted to get more education, but I did not necessarily want to get a Ph.D., because I felt that would narrowly focus my expertise and possibly limit my career choices. So, I chose to go to law school to broaden my career options and acquire new skills. In law school, I understood that my professional engineering background made me uniquely suited for practicing IP law because I could use the legal skills I was acquiring together with my prior engineering skills. With this understanding, it was an obvious choice for me to pursue IP law.

Doug: I was nearing the end of a structural engineering internship when I realized that, while I enjoyed designing buildings, I wanted to use my engineering skills in a way that allowed me to work on a wider variety of technologies. I also wanted my work to leverage my skills and interest in research and writing. I thought that intellectual property law would allow me to combine my skills and interests, so I went to law school already interested in IP. Law school confirmed that I was fascinated by patent and trade secret law, and showed me that litigating cases in these interesting areas of the law is exactly what I was looking for in a career.

What is a typical day like and/or what are some common tasks you perform?

Peter: On a typical day, I work on several tasks—I may work on a patent application for one client, an office action for another client, meet with an inventor, and have a call with a client regarding a strategic matter. I enjoy having a variety of different tasks on any given day. Patent prosecution gives me a chance to work on several different matters for different clients in a day, whereas in a litigation environment, one may spend the day on a single litigation matter.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Peter: In my work as an engineer, I did not have much writing experience, and the practice of law requires a lot of writing. Also, engineering did not require me to make many presentations or do much public speaking. I recommend engineers and scientists interested in practicing IP law focus on improving their writing and speaking abilities. Inventors and clients really appreciate a lawyer who understands their technology and can explain that technology in clear and compelling language.

What do you like best about your practice area?

Peter: I started as a lawyer working on both IP litigation and prosecution. Over time, I focused my career on IP prosecution, because I found meeting and working with inventors and innovators and protecting their advances in science and technology were the most rewarding aspect of my job. By working closely with inventors, I get to learn about the latest improvements and cutting-edge technologies. I can combine my love of engineering and science with the law to protect and promote innovation.

Doug: I enjoy patent and trade secret litigation because it is so mentally stimulating, and no two days of my work are the same. There are so many new things to learn in each case about the interesting technology and products at issue, and each case has different phases that present complex and interesting issues. I sincerely enjoy working with our clients and my colleagues to create and implement strategies that achieve the best results for clients on every issue and at every phase of a case. Working with and getting to know our innovative clients is fun, and I find advocating for them throughout a case to be a very rewarding career choice.

What is unique about your practice area at your firm?

Peter: Knobbe Martens is an IP boutique, meaning we specialize in all aspects of intellectual property and technology law. Most of our attorneys have technical degrees, and because of this we have someone with knowledge or experience in almost any technical field. When a client needs help in a particular technical area, we can find an attorney with a relevant background.

Also, as an IP boutique where all our attorneys practice IP law, I really enjoy being able to work with a variety of other attorneys in a variety of technical areas. It helps me improve my practice by seeing how so many of my colleagues work.     

Doug: IP litigation is a team sport, and Knobbe Martens does it right. Our case teams are filled with attorneys that are not only great litigators, but great people too. Our litigators are very friendly, approachable, and great mentors, which fosters the collaborative environment that I feel has contributed to our success.

What are some typical tasks that a junior lawyer would perform in this practice area? 

Peter: New associates in patent prosecution start with preparing office action responses, drafting claims, and drafting patent applications. I bring new associates to invention disclosure meetings and to meetings with Patent Office Examiners. I like to get new associates involved with the clients and inventors as soon as possible to help build the relationships and to train new associates on what it takes to be a successful IP lawyer. As new associates progress, they become more involved in strategic planning and managing portfolios of patents.

Doug: New associates in IP litigation can expect to perform legal research and assist with document review, preparing for depositions, writing portions of briefs, and more. There is no shortage of litigation projects for junior associates to handle.

What kinds of experience can summer associates gain in this practice area at your firm?

Peter: We give our summer associates the ability to work on projects in all areas of IP law. We encourage our summer associates to work on prosecution and litigation projects so they can discover what type of practice they want to have as future IP lawyers. We provide formal mentoring through a partner mentor and a host associate. The mentors and hosts are available to answer questions, provide work projects, and counsel our summer associates on being successful IP attorneys.

Peter Law, Partner—Patent Prosecution, and Doug Wentzel, Partner—Litigation

Peter Law received his J.D. from the University of Utah in 2011 and his B.S. in Chemical Engineering from Brigham Young University in 2002. Prior to law school, Peter worked as a nuclear engineer for Lockheed Martin and the U.S. Navy, designing and operating nuclear power plants on submarines and aircraft carriers. Peter joined Knobbe Martens in 2011 and became a partner in 2018.  

Doug Wentzel received his J.D. from the University of Pennsylvania Law School in 2016 and his B.S. in Civil Engineering from Drexel University in 2013. Doug joined Knobbe Martens in 2016 and became a partner in 2023.

Rebekah Holtz, Associate—Mechanical & Design Group • Louis Panzica, Associate—Biotechnology & Chemical Group
Sterne, Kessler, Goldstein & Fox PLLC

Describe your practice area and what it entails.

Rebekah: My practice focuses on the preparation and prosecution of design and utility patents. This involves drafting new applications, responding to rejections and other notices from the U.S. Patent and Trademark Office, and working with foreign counsel to secure IP rights outside the U.S. I also provide strategic advice to clients to help shape their patent portfolios, evaluate IP risks, and assess competitor products prior to enforcement actions. I work on a range of mechanical technologies and product designs, including designs for graphical user interfaces, consumer products, and product packaging.

Louis: My practice generally lies at the intersection between the firm’s biotech and litigation practice groups. I primarily focus on strategic work—including opinions, due diligence, and freedom to operate analyses—and litigation before federal district courts and the Patent and Trial and Appeal Board (PTAB). My role typically involves developing both technical and legal positions and drafting the relevant documents for each project, including complaints, briefs, motions, and client memos.

What types of clients do you represent?

Rebekah: I represent a wide range of clients, from large companies that are household names to startups to individual inventors. To name a few, some of my clients are Trove Brand and Thule.

Louis: I represent a variety of clients, ranging from small startup companies to large pharmaceutical companies. The technology at issue ranges from genetic sequencing technology to pharmaceutical therapeutics.

What types of cases/deals do you work on?

Rebekah: I work on utility and design patent applications from the pre-filing stages to grants. This involves working with inventors to fully describe their innovation in a new application, meeting with examiners at the U.S. Patent and Trademark Office to explain an invention and negotiate an allowance, and drafting written replies to rejections from the U.S. Patent and Trademark Office.

Louis: I also work often with foreign counsel to file and negotiate allowances outside the U.S. While foreign counsel provides expertise on their local law and practices, I make sure our approaches across the world are coordinated, consistent (where desirable), and make sense from a technical perspective.

For litigation, I represent clients in federal district court actions that involve allegations of patent infringement. For PTAB litigation, I generally work on inter partes review proceedings where the validity of a patent is challenged. For my strategic work, I have worked on projects assessing the strength of certain IP, especially before it is acquired from a separate entity.

How did you choose this practice area?

Rebekah: My undergraduate degree is in physics and math, and I wasn’t exactly sure what I wanted to do after graduation. I happened across a job posting for a patent paralegal and thought I’d try it out. That’s how I started as a patent paralegal at Sterne Kessler, and the rest is history! I loved the firm culture and the work and decided to become a patent agent and later returned to law school to become a patent attorney.

Louis: During my graduate program, I enjoyed designing scientific experiments, but did not necessarily love working in a lab. This made me realize that I wanted to pursue a career path that furthered my passion for science, but also included some sort of strategic aspect. At that time, I began learning about patent law and found the best of both worlds.

What is a typical day like and/or what are some common tasks you perform?

Rebekah: My days can vary a lot, and I typically work on several different matters a day. One day I might focus on reviewing a rejection from the Patent Office, including any prior art documents the examiner has relied upon in the rejection, and then formulate a strategy for replying to the rejection. Later in the day I might meet with another attorney about my proposed strategy for replying to a rejection in another case and then draft a reply and share the draft with the client for approval. On another day, I might work with our foreign filing team to coordinate filing applications outside the U.S. And later the same day, I might inspect a competitor’s product and prepare a summary of which of our client’s patents the product infringes and why.

Louis: I am not sure there is a “typical day” for a patent attorney. Every day is different, which is why I love my career. If I am working on a litigation project, I might be reviewing discovery documents, drafting an analysis on infringement or validity, or preparing for a deposition or hearing. Mostly, the common tasks I perform involve reading/studying certain documents, researching, writing, and communicating.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Louis: The most valuable skill in this field is effective communication, both written and verbal. This skill is used every day. Whether you are writing a brief or discussing a legal position with a colleague, having clear, persuasive, and effective communication is very important. I recommend taking legal writing courses and oral advocacy courses to help grow these skills.

What do you like best about your practice area?

Rebekah: There is a large variety of work within my practice area. Some tasks (like responding to certain notices from the U.S. Patent and Trademark Office) are relatively quick and more procedural in nature, while other tasks (like a search to clear a product prior to launch) are more technical in nature and take days or weeks to complete. The variety means there’s always something new, and that I can choose something to work on that’s a good match for what I prefer to work on at that time and the amount of time I have that day.

Louis: Besides learning about new ground-breaking technology, I love the strategic nature of my practice area. I like to say this practice area is similar to playing a game of chess while putting together a puzzle. Especially in litigation, each side is strategizing their moves to beat their opponent, like playing a game of chess. And because my practice involves patented technology, I am putting together the patent claims with the technology, like putting together a puzzle.

What misconceptions exist about your practice area?

Rebekah: People tend to think of lawyers as combative and proceedings involving lawyers as contentious, but patent prosecution is not this way (at least not in my mind). To me, the U.S. Patent and Trademark Office can be thought of not as an opposing party, but as more of a collaborator. So, when an examiner rejects an application, I think of our discussions with an examiner as an opportunity to bring a case to allowance together, and I don’t think of our written replies to the examiner as “arguments” but as “explanations.”

Louis: The biggest misconception is that an associate with a technical degree only works on drafting patent applications and prosecuting those applications at the U.S. Patent and Trademark Office. This is not true, especially at Sterne Kessler. Here, associates are encouraged to explore other areas of patent law and find the area they enjoy. Associates with technical degrees are not limited to only patent prosecution.

What is unique about your practice area at your firm?

Rebekah: At Sterne Kessler, junior lawyers are given a lot of opportunities and exposure that they might not get until later in their careers at other firms. For example, a junior lawyer might work together with a more senior lawyer to draft a new patent application, but the junior lawyer will have the opportunity to meet directly with the inventors during the invention disclosure meeting and correspond directly with the client throughout the patent process. At other firms, junior lawyers might feel a bit more “hidden” behind a more senior lawyer.

Our firm also actively participates in the U.S. Patent and Trademark Office’s Legal Experience and Advancement Program (LEAP), which encourages junior lawyers to argue a case before the Patent Trial and Appeal Board. If a junior attorney is working on a case that goes to appeal, there is a very good chance the junior attorney—and not a more senior attorney working on the case—will argue the case before the Patent Trial and Appeal Board.

Louis: My practice area is unique because of the crossover with other practice groups. I have worked with colleagues from not only the Biotech Group, but have worked with colleagues from the Trial and Appellate Group and the Electronics Group.

What are some typical tasks that a junior lawyer would perform in this practice area?

Rebekah: Junior lawyers work on all aspects of the patent prosecution process. They will often review rejections from the patent office, participate in calls with a patent examiner, formulate a strategy for addressing the rejection, and draft written replies to the rejections.

Louis: A junior lawyer works on various tasks depending on their interests. In patent prosecution, the junior lawyer might assist with drafting applications and office action responses. In litigation, a junior lawyer might be responsible for researching case law, preparing memos, and reviewing documents.

Rebekah Holtz is an associate in Sterne Kessler’s Mechanical & Design Practice Group. Her practice focuses on the preparation and prosecution of design and utility patents, both domestic and foreign. At Sterne Kessler, she secures IP protection for clients across a range of mechanical technologies and product designs, including designs for graphical user interfaces, consumer products, and product packaging. Rebekah received her J.D., cum laude, from Harvard Law School and graduated summa cum laude with a B.S. in physics and mathematics from Tufts University, where she received the N. Hobbs Knight Prize for outstanding ability in theoretical and experimental physics.

Louis P. Panzica, Jr. is an associate in Sterne Kessler’s Biotechnology & Chemical Practice Group. Louis’ technical areas of expertise include genetics, molecular and cellular biology, immunology, virology, and DNA/RNA technology. Louis earned his M.S. in the Cancer Sciences Program at the Roswell Park Comprehensive Cancer Center, offered through a collaboration with the University at Buffalo. Louis received his J.D. from the University at Buffalo School of Law, with a concentration in IP and privacy law. He earned his B.S. in molecular genetics from the State University of New York at Fredonia.

Laura Moran, Partner • Allen Wang, Partner—Litigation
Fenwick

Describe your practice area and what it entails.

Laura: I’m a patent litigator in the life sciences space, which at a high level means that I handle disputes over patent infringement and validity in the federal courts. I also practice before the Patent Trial and Appeal Board and counsel clients on patent matters and patent-related matters outside the context of a litigation.

Allen: I am an attorney in the patent litigation space and focus on representing technology companies. Cases for these kinds of companies have the potential of involving patents spanning a wide range of technologies. Additionally, technology companies hold many patents and face a substantial volume of patents in the cases asserted against them. Thus, work on their matters tends to require the team to have a large breadth of technical expertise so we can best adapt to address this variety of patents in different technical fields.

What types of clients do you represent?

Laura: I work with life sciences companies at various sizes and stages of their growth, up to and including leading global pharmaceutical companies that turn to us to litigate their blockbuster drugs. At Fenwick, our clients are innovators and often pioneers in their fields, whether on the tech or life sciences side.

Allen: My clients touch many areas of technology—advertising, location-based technology, smart devices, e-commerce, artificial intelligence, and cloud computing, among others. In these areas they make and develop hardware and software, both consumer facing and business facing. As Laura noted, Fenwick’s clients are innovators and pioneers; working with them keeps us on the forefront of technology.

What types of cases/deals do you work on?

Laura: Working with innovators in the pharma space means that I am often plaintiff-side in a litigation, asserting patents against infringing parties to protect our clients’ proprietary technology. A large part of my practice entails Hatch-Waxman litigation, which is litigation between branded and generic pharmaceutical companies that arises when a patent challenger wishes to market its generic version of our client’s drug after marketing exclusivity on the product has run, but prior to expiration of our client’s patents.

Allen: I work primarily on high-tech patent litigation. These cases involve digging deep into how our client’s products work. This involves reading and researching very modern, advanced tech and meeting the people who invented it and who are at the forefront of their fields. On the flipside, it also involves looking into historical precursors in the relevant fields and working with other people knowledgeable about early developments. Ultimately, the nature of our practice requires that we take all this information and then distill it into something more accessible.

How did you choose this practice area?

Laura: As a student, I always had an interest in science, which led me to pursue a biology major in college. Given this background, I knew that I would be interested in exploring life sciences patent litigation. I was fortunate to try it as a summer associate, and it was a great fit. I continue to be fascinated by the different technologies, drug products, and disease states we dig into with each new case, which certainly keeps it interesting.

Allen: Originally, my plan was to be a software developer. After going to school to study computer science, receiving undergraduate and masters degrees, and working in the industry for a number of years as a programmer, I finally realized I was tired of being pigeonholed into one very specific area of technology. Now, as a patent litigator, I get to work with technology that is farther reaching and more interesting.

What is a typical day like and/or what are some common tasks you perform?


Laura: I wouldn’t say that there is a “typical day.” For any particular case, it largely depends on the stage of the case. Early case assessment, fact discovery, expert discovery, pre-trial, and trial each come with their own unique facets that shape the activities you find yourself engaged in on any given day. Another way to look at the “typical day” is really whatever is most urgent and important for your client that day.

Allen: The only thing that’s typical is starting the day with a plan of what you’re going to do that day and before you even get to the first item, having to change your list. Like Laura said, it depends on the stage of the case, and what’s urgent for the client. And some counseling tasks may arise outside of direct work on our pending matters. Those kinds of requests are at the same time less predictable and often more urgent. For example, clients have sought our input on matters in foreign jurisdictions simply because we had substantial knowledge relevant to the technologies at issue.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Laura: I always recommend that law students take classes in deposition skills, trial advocacy, and evidence. And specific to my practice area, I recommend taking whatever patent-specific or even IP survey courses your law school offers.

Allen: Agreed, I would say Depositions is one of the most practical courses I took in law school; I still use what I learned to this day. I would especially recommend taking courses taught by practitioners. Look for litigation and patent litigation classes taught by people at law firms since they can get into the details of recent, relevant cases, and if you do well in that class, you get two for one—a good grade and a professional connection with a practitioner who is in your field of interest.

What is the most challenging aspect of practicing in this area?

Laura: It can be challenging at times to feel comfortable with the substantive technical subject matter at issue in the case. This is compounded at the more junior ranks when you’re also still developing basic practice management and litigation skills—clear, concise, and persuasive writing, oral communication skills, and juggling competing demands for your time, for example.

Allen: I agree with Laura on these points. Additionally, it’s quite a challenge to dive into these new technologies that are still emerging. I still have to study when I take on a new case. I may buy a textbook, find experts to talk to, or do other research. My background in computer science gives me a generalist understanding, which serves as a toolbox that lets me get up to speed more quickly, but it’s still critical to go through the exercise of learning something new.

What do you like best about your practice area?


Laura: I enjoy collaborating with and getting to know the inventors of the patents we’re litigating and the top-notch expert witnesses who help us present the strongest case for our clients. They’re such impressive and interesting people. I also enjoy the challenge of distilling complex concepts into persuasive and digestible arguments, which is rewarding when you’ve done a good job of it.

Allen: In addition to the technology itself and the learning opportunities, I also enjoy getting to meet luminaries in the field. These include industry leaders who have gone into consulting roles, professors who are well published and understand the field, and the engineers, scientists, and other key employees of our clients.

What misconceptions exist about your practice area?


Laura: There’s often a misconception that the life sciences practice areas are not an option for those without a relevant technical degree. But that’s not true. I certainly work with associates and partners without technical degrees, and they bring their own skills to the table that are crucial to our success. It’s just as important to have attorneys with strong legal writing, oral advocacy, and deposition skills on your team, all of which are necessary to effectively advocate for our clients. Where there are gaps in our technical knowledge, we’re fortunate to work with such great expert witnesses who serve as a valuable resource in this regard.

How do you see this practice area evolving in the future?


Allen: Looking retrospectively, there have been various changes in the law that affect patent assertions. For example, the Supreme Court within the last decade issued an opinion that changed the landscape of patent eligibility in relation to abstract ideas. That sparked different patent litigation strategies affecting assertion and defense. We’re always keeping an eye on cases that are foundational to the key arguments that we make and watching as they move up through the appeals process. We may not be able to predict exactly what will happen next, but we can try to formulate a practical explanation of why the Supreme Court or Federal Circuit will go a certain way and prepare to pivot as those changes happen.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Allen: The people who succeed in this practice are good learners, but also good educators. People with the technical background may have some helpful baseline knowledge, but it’s also important to phrase things and communicate ideas in court in a natural way. People who can take the subject material and dial it back in complexity or tweak phrasing to help it make sense to any person from any background are the ones who have the potential to go far.

Laura: Hone those skills that will make you a well-rounded lawyer. Even without a technical or science background, a successful attorney needs to be good in a deposition setting, quick on their feet, and able to express themselves effectively in writing. It’s often these people who are best at making the technical information digestible.

Laura Moran represents clients, primarily in the pharmaceutical and life sciences industries, in patent disputes. She has experience representing clients in complex litigation, including Hatch-Waxman litigation, inter partes review proceedings and arbitration involving patent rights. Laura has also provided support to transactional matters, including by conducting intellectual property portfolio analysis.

Laura maintains an active pro bono practice and has represented victims of domestic violence in both family and matrimonial cases.

Prior to joining Fenwick, Laura was an associate in the IP group of a leading international law firm.

Allen Wang advises on litigation matters, with an emphasis on patent litigation, for clients in the technology and life sciences industries. Allen has significant experience litigating complex intellectual property disputes, including representing clients in proceedings before the U.S. Patent and Trademark Office.

Prior to joining Fenwick, Allen was an associate at a prominent international law firm, where he represented clients in a range of IP litigation and counseling matters. Before becoming an attorney, Allen was a software developer, first with Oracle, and later with Compiere, an open-source enterprise resource planning (ERP) and customer relationship management (CRM) platform provider.

During law school, Allen was an extern to the Honorable Lucy H. Koh of the U.S. District Court for the Northern District of California.

 

Cara Regan, Partner—Mechanical Group • Connie Lee, Associate—Chemical/Met Group
Finnegan

Describe your practice area and what it entails.

Cara: I help clients with IP litigation in district court, at the ITC, before the PTAB, and on appeal. In addition to the litigation itself, I am regularly involved in pre-suit risk evaluation and pre-filing analysis, as well as licensing and settlement negotiations.

Connie: My practice is focused on complex patent litigation. My practice spans all phases of litigation, including pre-litigation counseling, developing infringement and invalidity strategies, fact and expert discovery, claim construction, motions practice, and trial.

What types of clients do you represent?

Cara: A wide range, from small businesses to multinational corporations.

Connie: I have represented a wide variety of clients, from small companies to Fortune 500 companies. I mostly represent branded pharmaceutical companies.

What types of cases/deals do you work on?

Cara: I typically work on non-pharmaceutical patent and trade secret litigation. I have been involved in district court cases, ITC investigations, PTAB proceedings, and appeals on behalf of both IP owners and accused infringers. And I have worked with clients to avoid litigation through freedom to operate analyses and licensing, and to develop pre-suit litigation strategy by evaluating infringement and identifying the strengths and weaknesses of a potential case. I have worked with technology ranging from lip gloss to inhalers to light bulbs to jet engines.

Connie: The focus of my practice is pharmaceutical district court litigation under the BPCIA or Hatch Waxman Act. I have also represented clients in contested PTAB proceedings, the ITC, and in arbitration.

How did you choose this practice area?

Cara: I have always wanted to work in IP law. My grandfather was a patent attorney, and he had wonderful stories about working with brilliant inventors and learning about cutting-edge technology. I majored in physics in college with the goal of going to law school and working in IP. I knew I did not want a research career, but I really enjoy science, and working with IP lets me use that background.

Connie: I have a B.S. in Materials Science Engineering and enjoy working in a variety of technology areas, so I knew I wanted to go into patent law when I entered law school. Practicing patent law was a choice that I felt best leveraged my technical curiosity and expertise. My first case as an associate was an ITC case, and I immediately fell in love with the exciting pace of litigation. I enjoy getting to know my clients and working to protect their IP and their business goals.

What is a typical day like and/or what are some common tasks you perform?

Cara: Every day is different. In an upcoming week, I am scheduled to participate in internal team meetings about case action items and surrounding strategy, join joint defense group and client calls, interview potential experts, and meet and confer with opposing counsel on discovery issues. I will also draft a complaint, write sections of a claim construction brief, and review contention positions prepared by other team members. And I may write discovery letters or a motion to compel, depending on the results of the meet and confer. In some weeks, I might also attend a court hearing or a status conference, or I might travel to meet with a client or an expert.

Connie: I’ve been lucky in that for most of my litigation cases, I’ve had the opportunity to be on them from the very beginning (from pre-litigation analysis) and continue all the way until they’ve settled or gone through trial, which can take years. My daily activities depend on the phase of the cases I’m on. On any given day, I might be developing case strategy, drafting a motion or brief, preparing for document collection, preparing discovery requests, reviewing documents, taking or defending a deposition, or attending client meetings.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Cara: Write as much as possible. A lot of IP work is writing, regardless of whether your primary focus is client counseling, patent and trademark prosecution, or litigation. Being able to communicate clearly to clients, opposing counsel, and the court is a huge advantage.
Take opportunities to be uncomfortable too. In practice, you will often be asked to do things—taking depositions, running portions of a case, speaking in court—before you think you are ready, because more senior members of the team know that you are. Trying things in low-stakes practicums or moot court competitions can help you gain confidence.
Connie: Analytical thinking, oral advocacy, and writing skills are the fundamentals for entering this practice area. I think most courses in law school are directed to developing these skills. I took very few IP classes in law school. Instead, I opted to take a variety of classes that would expose me to areas of the law I might not see in practice. Substantively, mock trial was probably the most useful course I took.


What do you like best about your practice area?

Cara: I love learning about new technology. In litigation, you learn a lot about the specific technology covered by the patents at issue in the case, and you get to spend time with inventors and technical experts who know that technology better than anyone.

I also really enjoy helping clients to develop the strategy that best fits their technology and their business. Even after a litigation starts, there isn’t a one-size-fits-all solution. Knowing what a “win” looks like for the client shapes our approach to every case.

Connie: I like that with each new case I work on, I get to learn about a new technology and develop expertise in a new technical area. As I mentioned above, I’ve been lucky in that I’ve had the opportunity to work on several matters from start to finish. I enjoy the opportunity to form long-lasting relationships with sophisticated colleagues and clients over multi-year projects. I find the variety and challenge of conquering new technology areas and helping to develop legal strategies to achieve success for clients incredibly rewarding.

What is unique about your practice area at your firm?

Cara: Instead of being one small part of a larger firm, the whole firm is IP-focused. Whatever issue comes up in a case, someone here has expertise, and because of the firm’s open-door policy, you can reach out to that person and ask questions.

Our deep IP bench also allows attorneys to try a lot of different work. No one is siloed, and it is not unusual for associates to have a mixed prosecution-litigation-client counseling workload. As a junior associate, I tried just about everything. And though I prefer litigation, having prosecution experience has really helped me in my litigation practice because I understand prosecution files in a way that I might otherwise not.

Connie: Finnegan is unique in that the firm is dedicated to IP law, and almost every attorney has a technical background, providing a deep pool of expertise. This means the firm handles some of the most complex issues for a wide range of sophisticated clients. Although our firm is divided into practice areas based on technical expertise, no one is siloed, and I’ve gotten the opportunity to work on litigation matters with attorneys from different practice groups.

What are some typical tasks that a junior lawyer would perform in this practice area?

Cara: Junior associates often help with discovery, for example, reviewing documents, drafting discovery requests and responses, and writing discovery letters. And junior associates might also help with research or write sections of larger briefs. A junior associate who does well at those tasks is often asked to take on more—maybe leading a discovery meet and confer with opposing counsel or presenting strategy for a brief to a client.

Connie: Junior associates at Finnegan are given meaningful and substantive work. For example, they may help review documents to develop technical and substantive positions, help with legal research, draft pleadings or portions of motions, or provide support for depositions or expert meetings.

What kinds of experience can summer associates gain at this practice area at your firm?

Cara: Summer associates receive both formal training and hands-on experience with real work. The firm generally gives summers training on issues such as patent law, litigation, and writing, but summers also help with projects for real cases. As a summer, I wrote a brief for a pro bono case, helped with invalidity contentions, and did research for several briefs. I’ve given similar assignments to summer associates.

Connie: Summer associates are assigned projects to help with ongoing cases at the firm. For example, they may be assigned legal or fact research for discrete issues for an ongoing matter. Summer associates also often help with article writing and pro bono cases. Additionally, if there is an ongoing trial, deposition, or hearing, summer associates are often given the opportunity to observe.

Cara Regan works on patent and trade secret litigation at every stage, from the strategic decision to file a proceeding through appeal. Her experience includes district court and International Trade Commission (ITC) actions; post-grant challenges at the Patent Trial and Appeal Board (PTAB); and appeals at the U.S. Court of Appeals for the Federal Circuit, where she clerked. She also assists clients in evaluating infringement risks and negotiating license agreements. Her technical expertise encompasses a wide range of technologies, including medical devices, software, mobile phones, laptops, automobiles, and consumer products. Cara maintains a pro bono practice assisting with veterans’ affairs.


Constance (Connie) Lee focuses on patent and trade secret litigation in the chemical and pharmaceutical fields. She represents clients before U.S. district courts, the ITC, in post-grant challenges at the PTAB, and in arbitration proceedings. Connie has experience litigating cases under the Biologics Price Competition and Innovation Act (BPCIA) as well as those arising from the filing of Abbreviated New Drug Applications (ANDAs). Prior to working at Finnegan, Connie worked at Procter & Gamble as a senior engineer, developing packaging for popular brands of household goods such as laundry detergent, oral care, cosmetics, and other products. Her industry experience includes upstream packaging development, including materials assessment and compatibility, with a focus on polymers, blow molding and injection molding technologies, device development, and decoration technologies.

Sabrina Wang, Partner
Knobbe Martens

Describe your practice area and what it entails.

The practice area of intellectual property (IP) encompasses a wide variety of intellectual properties, including patents, copyright, trademarks, and trade secrets. A U.S. IP lawyer may appear in front of administrative agencies, such as the United States Patent and Trademark Office (USPTO) and the United States International Trade Commission (ITC), and/or U.S. courts, typically the federal courts. U.S. IP lawyers also collaborate routinely with attorneys in other jurisdictions to serve each other’s clients’ need for global IP protection.

Broadly speaking, the types of intellectual property practices may be categorized into two areas: litigation and product/brand protection. Litigation can include IP infringement lawsuits and other more specialized practices, such as Hatch-Waxman and “patent dance” litigation, ITC litigation, Patent Trial and Appeal Board (PTAB) litigation, trade secret litigation, and antitrust litigation. When referring to product and brand protection, people tend to think of patent/trademark prosecution or copyright registration, but this area also includes advising and counseling on IP strategy, IP transactions and agreements, data privacy and security matters, and many other issues aimed at protecting client innovation.

What types of clients do you represent?

The types of clients I represent come in different sizes and forms, from multinational companies to startup companies and individual inventors. For example, my clients can be medical device companies needing IP protection for their new products or IP strategy counseling against their competitors, venture capital firms needing IP due diligence service before they invest in a new company, research institutions searching for opportunities to commercialize research efforts, and doctors developing their own surgical implants or tools.

What types of cases/deals do you work on?

A big part of my practice involves managing clients’ global patent portfolios and providing advice to strengthen the clients’ IP positions. My team and I draft patent applications and prosecute patents in front of patent examiners. I also attend oral hearings in front of the PTAB if a client decides to appeal the examiner’s rejections.

Another substantial part of my practice involves pre-litigation counseling and IP due diligence. I get actively involved in my clients’ product development process by performing “freedom-to-operate” analyses and providing design recommendations. I develop IP strategy for seed-stage or startup companies to prepare them for new funding or acquisition opportunities. I also perform diligence on companies on behalf of investors or buyers to identify and resolve IP risks.

As a smaller part of my practice, I work on litigation matters, such as Inter Partes Review proceedings in front of the PTAB. When I was an associate, I also worked on patent infringement and trade secrete misappropriation cases.

As explained in my answer to the first question, the practice of IP law is so diverse that another IP lawyer may work on completely different types of cases or deals.

How did you choose this practice area?

My interest in intellectual property started in my third year of college. In my undergraduate school, the biomedical engineering curriculum includes a course in which the students would develop a new medical device in groups. The project would culminate in a mock pitch to a potential investor. In my year, the assignment was to design a prosthesis for spinal fusion. Although the group came up with the design collectively, each group member also had a different task. I was assigned IP due diligence and wrote my first report on why our new product was clear of infringement risks from the list of relevant patents, which I found using a patent search software developed by the professor who designed this course. I knew before the end of that semester that I wanted to become an IP attorney one day.

What is a typical day like and/or what are some common tasks you perform?

The practice of IP prosecution has numerous statutory deadlines associated with each filing of a patent or trademark application. Therefore, I tend to begin the day with checking my docket, which helps me prioritize my tasks for the next few days.

My typical day would include multiple meetings with clients or coworkers who are on the same team as me for different clients. It is also common that I would have scheduled an interview with a U.S. patent examiner or received a phone call from an examiner about a pending application.

When I am not in meetings, I review work products from associates, respond to client emails, and work on upcoming deadlines on my docket.

On most days, I would also perform non-billable tasks, such as mentoring associates and attending firm committee meetings, recruiting events, and business development activities.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

For someone who has a science or engineering background, I would recommend taking the patent practitioner registration examination (colloquially known as the “patent bar”) before starting at a law firm. It is a no-brainer for anyone interested in practicing before the USPTO. Moreover, understanding how patent examination works always helps in other areas of IP practice.


I would also recommend taking IP-related courses offered by your law school. Even if someone may only be interested in patent practice, it is helpful to have knowledge of other areas of IP, such as trademark and copyright. Clients may ask their IP attorney just about anything related to IP. Another class offered at my law school, which helped my legal career tremendously, was Advanced Legal Research, taught by a senior librarian.


For a patent attorney, knowing how to search for prior art (e.g., on Google Patents) and to check file histories of patent applications in the USPTO database is an indispensable skillset. Similarly, for a trademark attorney, knowing how to conduct searches on the Trademark Electronic Search System (TESS) is invaluable. A firm’s summer program would be a good place to get started on developing these skills.


What do you like best about your practice area?

It takes a lot of work and expertise to turn a great idea into an actual product. Practicing IP law allows me to be a part of the process of commercializing innovation. It was a great feeling when I proudly told a pediatrician that the sensor she was using on my daughter was made by my client and I helped the client protect its IP so that the device could be made commercially available to improve the quality of health care in the U.S.

What are some typical tasks that a junior lawyer would perform in this practice area?

In my experience, a junior (first- or second-year) lawyer practicing IP law may typically start off with: patent or trademark prosecution assignments, such as responding to Office Actions, or drafting patent or trademark applications (including attending invention disclosure meetings); legal research, discovery, and other litigation projects at various stages of the cases; or organizing prior art searches for different purposes and reviewing the search results.

What kinds of experience can summer associates gain at this practice area at your firm?

Knobbe Martens gives our summer associates the autonomy to explore all areas of IP practice, as we expect them to shape their own practice when they come back as associates. The summer associates are encouraged to try different short-term projects from different practice groups throughout the summer program. Those projects not only give the summer associates a glimpse into a certain type of practice, but are also selected to help someone who wants to pursue a career in IP develop the necessary skills. When I was a summer associate, I drafted legal research memos, worked on Office Action responses, created patent family trees for a client’s patent portfolio, and evaluated claim scopes of a target company’s patents for an acquisition deal.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Many aspects of the IP practice do not require a technical or science background. Any lawyer can work on any trademark and copyright matters and most litigation cases except those in front of the PTAB. Knobbe has many brilliant and successful IP lawyers who do not have technical or science backgrounds.

Sabrina Wang, Partner—Medical Device Practice Group (2023)

Sabrina’s practice involves all types of intellectual property issues, including patents, trade secrets, copyright, and trademarks. She is experienced in patent prosecution, IP due diligence, and IP litigation. Sabrina has represented clients based within and outside the United States and provides counseling of IP strategy in the U.S., WIPO (PCT), Europe, Japan, China, and other countries.

Sabrina’s practice extends to a wide variety of technologies, with a focus on medical technology. She has extensive experience drafting patent applications and advising clients on IP strategy for medical devices and health care products, including in the fields of patient monitoring, imaging, treatment, and surgery.

Sabrina received her bachelor’s degree in Bioengineering in 2007 from National University of Singapore and her JD degree in 2015 from the University of Virginia School of Law. Prior to law school, Sabrina worked as a product development engineer in Utah and Singapore specializing in orthopedic products. 

Paige Cloud, Associate—Trial and Appellate Group • Steve Pappas, Associate—Electronics Group
Sterne, Kessler, Goldstein & Fox PLLC

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.

 

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.

Lauren Gallo White, Partner
Wilson Sonsini

Describe your practice area and what it entails.

I represent some of the most innovative internet companies in the world in high-stakes litigation related to whether, where, and how they display content online. Many of my cases involve Section 230 of the Communications Decency Act (which provides immunity to online service providers acting as publishers of third-party content), the Digital Millennium Copyright Act, and/or the First Amendment.

What types of clients do you represent?

The nature of these cases means that most of my practice is for late-stage technology companies that are the subjects of large and complex litigations, such as Google and YouTube.

What types of cases/deals do you work on?

Gonzalez v. Google, which is pending before the Supreme Court, is one of a series of cases brought by victims of terror attacks around the world alleging that content appearing online inspired people to join terrorist groups and allowed those groups to grow in influence, contributing to the attacks. We litigated these cases successfully in district courts and courts of appeals around the country. Gonzalez is the Supreme Court’s first case to consider Section 230, and it will consider whether the statute protects online services that make “targeted recommendations” of content online.

There’s also a series of cases against various online platforms arguing that they censored political speech, and we have successfully defeated several of those cases on behalf of YouTube and Google. In Prager v. Google, the Ninth Circuit held that YouTube is not a public forum and can’t be held liable as a government actor under the First Amendment. Earlier this year, I argued Doe v. Google, where the Ninth Circuit held that YouTube could not be held liable for violating the First Amendment based on a theory that it conspired with government officials. And the First Amendment can be a sword or a shield, either an affirmative claim brought against a service provider or a defense. In NetChoice v. Moody, we successfully argued that Florida’s online content moderation law should be enjoined for violating the First Amendment rights of online platforms to decide what speech to allow on their services.

I’m also working on a copyright case called Schneider v. Google. It’s a class action led by a jazz composer, a Russian audiobook publisher, and a Bollywood movie production company. They are copyright holders who allege that YouTube should be held liable for copyright infringement where YouTube creators used their content.

How did you choose this practice area?

I love the arts, and I am fascinated by the way that the internet facilitates connections, communication, and the creation of new creative works. Section 230 and copyright law are both areas that gravitate around where creativity comes from, how ideas are shared, and how new things come to be, so it was a philosophical interest that led me here. I was a rhetoric and English major, and I wrote my senior thesis in college about the law and language in the DMCA. Then I spent my 1L summer interning at the Electronic Frontier Foundation, and I just was fascinated by all the novel questions that arise in this area—and remain fascinated by them to this day.

What is a typical day like and/or what are some common tasks you perform?

Wilson Sonsini has a nationwide practice, so I go online at 6:30 a.m. to catch up on East Coast colleagues’ emails and look at my agenda for the day. I break to help my kids get dressed and out the door, then settle back into my workday. Days vary, but the kinds of things I do include meeting with clients to talk abut the status of cases and strategic decisions we need to make in litigation; meeting with my internal teams to discuss strategies for dispositive motions; meeting with clients to conduct fact investigations and discuss issues related to civil discovery; meeting with opposing counsel and collaborating with co-counsel; and, hopefully, between all those meetings, finding time to read new cases and to write and revise briefs. Because my practice often involves novel theories of liability, a lot of the cases turn on legal questions that are resolved in briefs and argument as opposed to through discovery and trial, so I do a lot of brief writing. I go offline later in the day to spend time with my kids and put them to bed, and work in the evening to find some concentrated writing time when email is a little slower.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Judicial clerkships offer an invaluable insight into the way judges think, as well as the range of styles that litigators can have and their effectiveness. Writing is incredibly important—take as many opportunities to write as possible, such as courses in legal writing and advanced brief writing.

I believe you can learn the substantive stuff as you go. I don’t subscribe to the belief that you have to take all these law school classes in admin, evidence, and federal courts (though I did learn a lot from those courses)—take classes that sound interesting to you and that will help you find a practice area that keeps you excited and engaged. Beyond the 1L core curriculum, you should be guided when choosing classes much more by what you love.

Part of what drew me to this practice was that it involved services and technology that I actually use, and having that familiarity is a huge advantage in thinking about how to tell stories and frame issues in litigation. Coding fluency and tech degrees are not at all required in my practice, though if you have them, that can be a real asset to teams.

What are some typical tasks that a junior lawyer would perform in this practice area?

Legal research and factual investigations are two incredibly important parts of our practice area that junior lawyers often take a big role in. They are wonderful learning opportunities where newer lawyers can use a specific assignment as an opportunity to learn the substantive law in the area. Factual investigations, where you review internal documents and master the facts underlying the case, make junior associates invaluable litigation team members.

A great thing about our practice group is that we work on cases as small as one individual plaintiff against one defendant and as large as giant multidistrict class actions. That variety of scale affords junior attorneys the opportunity to play different-sized roles in different-sized cases. In smaller cases, they can play a lead role and touch on every aspect of a litigation, which allows them to take on more in bigger cases as they gain more experience. The experience of working with the most innovative companies in the world, as we do, opens all kinds of doors.

How do you see this practice area evolving in the future?

The only constant in this area of law is change. There is constant regulatory, legislative, and judicial interest in online content, and passionate disagreement on how to approach it. The common law is always evolving, and judicial opinions are in constant flux as new tech emerges, as more people use existing tech, and as people find new ways to use and misuse technology. I don’t foresee an end to that.

The Gonzalez case this term is likely going to change the way courts construe Section 230 in the future. The NetChoice cases are likely going to change the way courts think about the First Amendment protections for online service providers. Because the tech is constantly changing, courts are constantly issuing decisions that change our strategies and results. That makes it a wonderful practice area for young lawyers to get into—a constantly clean slate. Law students and young lawyers who are interested in technology can jump head-first into this area and add value quickly; they bring a fresh way of thinking about tech and help develop more effective ways to tell stories through litigation.

What kinds of experience can summer associates gain at this practice area at your firm?

Summer associates can and should do everything our junior associates do. Just like associates, I want them to write a lot and research a lot, and to help me prepare for hearings and arguments. I love having them help moot before an oral argument or a hearing because they often bring the freshest outside perspective—the closest to what a clerk would bring to their judge. I like to bring summer associates into court to watch hearings and into client meetings so they can observe the day to day and ask questions. Summers at Wilson should get a great sense of how entrepreneurial our firm is and how possible it is to carve out your own specialty based on your experience and interests. At our firm, that often means moving around the boundaries of practice areas to work with partners across the litigation department. It’s great for them to experience different styles and different specialties.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Copyright law, while very legally technical, is not necessarily “technically technical,” at least not in cases involving copyrights in music, movies, text, images—the kinds of things I work on. I don’t have a tech degree, but I’ve been interested in these issues for a long time. For Section 230 and First Amendment issues, technical experience and knowledge about how computers and algorithms work can be a great asset, but they’re not required. My advice is just to read a lot and don’t be afraid to ask questions and ask for help and advice when you need it.

Lauren Gallo White, Partner—Litigation (2023)

Lauren Gallo White is a partner in Wilson Sonsini’s internet strategy and litigation group, where she represents internet and digital media companies in complex, high-stakes litigation related to online content hosting, online speech, privacy, and intellectual property. She has significant experience litigating cases in both federal and state courts, frequently authoring successful trial and appellate briefs. Lauren regularly provides guidance on issues related to platform design, marketing, and general operations, including matters relating to content hosting, removal, and filtering, as well as decisions about data use and management.

Lauren is lead counsel for Google and YouTube in a range of cases attacking their decisions about whether and how to display content online. She has secured numerous precedent-setting victories in cases involving Section 230 of the CDA, the First Amendment, federal and state anti-discrimination laws, the DMCA, the Lanham Act, the Video Privacy Protection Act, the Wiretap Act, and the Anti-Terrorism Act.

Lauren maintains an active pro bono practice and regularly authors amicus briefs on behalf of public interest groups in cases addressing important legal and policy issues related to free speech, technology, privacy, and intellectual property.

 

Related Vault Guides
Check out some of Vault's guides that are related to this field.
Top Ranked Firms
Check out the top-ranked law firms in Intellectual Property.