Intellectual Property

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 the 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 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 IP 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 IP 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 also 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 you 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 back-ground—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 Honorable Louis L. Stanton in the U.S. District Court for the Southern District of New York from 1993 to 1995 and then began private practice at Kenyon & Kenyon, where he became a partner in 2001. He was also a partner in Kirkland & Ellis’ New York office from 2004 to 2011.

Joze Welsh’s practice focuses on intellectual property (IP) 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. Joze has also served as pro bono counsel in asylum proceedings at U.S. Citizenship and Immigration Services. During law school, Joze 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, IP issues, commercialization strategies, and operational and employment matters.

Describe your practice area and what it entails.

Jessica: My practice focuses on patent and trade secret litigation. I represent clients in a wide variety of technology and life sciences industries—AI, data analytics, games, cloud computing—and I litigate in federal courts around the country as well as before the PTAB. Additionally, I counsel clients in pre-litigation matters.

Joseph: I am a licensing attorney advising clients on large transactions, such as M&A and financings, from an IP perspective. I also advise on commercial and licensing trans-actions for many clients, primarily in the tech sector, ranging from emerging companies to mature companies.

What types of clients do you represent?

Jessica: My clients range from small emerging companies to large, sophisticated companies, many of which are in the tech and AI space. A few examples are Databricks and FriendliAI. Beyond clients in the tech space, I also represent clients in other fields like consumer goods, medical devices, and other science-related fields.

Joseph: On the M&A side, I represent both large clients, buy-side acquirers like Cisco, and sell-side clients. I also focus on AI-related clients and video game-related clients like Embracer and Gearbox. On the licensing side, I represent a range of companies that are AI vendors or are using AI in their businesses, like those deploying AI in their products and services.

What types of cases/deals do you work on?

Jessica: I handle patent infringement and trade secret cases in federal courts across the United States, representing innovators as plaintiffs in lawsuits against competitors, and on the defense side, defending clients against infringement claims.

Joseph: I work on licensing deals and tech transactions of all sizes. It’s always exciting when you get to see how those deals influence the general public; for example, I worked on the acquisition of Wordle by The New York Times in 2022. That was a high-profile deal given Wordle’s popularity at the time. Additionally, I have been involved in the AI and machine learning space for several years. Working on deals at the forefront of emerging technologies is particularly rewarding, especially seeing the direct impacts on our lives.

How did you choose this practice area?

Jessica: I’ve always liked the intersection of science and law or other humanities concepts. In undergrad, I developed my own major called bioethics, society, and applied genetics, which focused on the intersection of science and social sciences. I loved learning about new technologies and inventions, and I like advocacy and persuasive writing in legal practice. Patent litigation was a great way to combine all of these interests.

Joseph: I have a software engineering background from my previous career. When I decided to pursue a career in law, I liked the idea of bringing my software background into my legal work, which naturally led me to IP and tech law. When I started interviewing with Fenwick, I learned about the firm’s games practice, and as an avid, lifelong gamer, the combination of tech, law, and video games was a natural fit for me.

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

Jessica: There is no typical day in the life of a litigator. My daily activities largely depend on what stage of the litigation life cycle my cases are in. If they are in the early stages, a significant portion of my day involves drafting pleadings and writing briefs, such as motions to dismiss or motions to transfer. As cases progress, my focus shifts to discovery, which includes resolving discovery disputes, writing motions to compel, conducting fact investigations, gathering documents, and working with clients on these tasks. I also spend time conducting depositions or defending them, working with experts to prepare their reports, and preparing for summary judgment, pre-trial, and trial stages. Each stage of litigation brings different tasks, making every day unique.

Joseph: Every day is a balancing act between managing the expected tasks with the unpredictable nature of client needs. While there is a general cadence to larger transactions that lets me know what to expect from a process standpoint, there are always urgent issues from my early-stage clients who may call with real-time risks that they need to manage. Additionally, I work on long-term goals and commercial transactions for our licensing clients, which involves negotiating, drafting, reviewing, and collaborating with team members to make progress on these deals.

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

Jessica: Persuasive writing is crucial in litigation, so any course that allows you to hone advocacy and persuasive writing skills would be very beneficial. Also, business finance courses are helpful for understanding your clients’ business generally and, in a litigation context, calculating damages.

Joseph: I encourage taking separate classes for patents, copyrights, and trademarks—drafting classes, too, if you plan to work on commercial transactions. And if you do work in the tech space, make it a practice to stay on top of the techno-logical advancements that underpin your clients’ technology.

What do you like best about your practice area?

Jessica: I love digging deep into new technologies, exploring the case facts, and crafting the most compelling arguments to win our cases. I also appreciate the teamwork involved in litigation; working closely with colleagues on complex IP disputes at Fenwick allows us to combine our strengths effectively to accomplish a shared goal.

Joseph: The collaboration. It lets me step outside my bubble and touch a lot of different areas, collaborating with corporate and startup attorneys on M&A or litigators on IP transaction litigation. Plus, our clients are always working on novel, cutting-edge projects, meaning we have to think creatively within the legal framework about ways to make the legal rules fit the technology we’re dealing with. It keeps things dynamic, and that’s something I really love.

What is unique about your practice area at your firm?

Jessica: I think our patent litigation practice stands out for our blend of technical prowess and business savvy, especially in tech and life sciences. We really understand our clients’ businesses and work closely with specialists within the firm, many with advanced technical and science degrees, to craft strategies that truly align with our clients’ needs and goals.

Joseph: What sets our practice and Fenwick apart is our strong focus on startups. That focus is the engine that drives much of our work forward, from M&A transactions to licensing, and creates a dynamic and innovative environment that benefits both our practice and our clients.

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

Jessica: At Fenwick, we strive to give our summer associates a true sense of what their work will be like as junior associates. This includes working on substantial tasks such as writing portions of briefs, sitting in on depositions, and helping prepare for those depositions. Essentially, anything that a junior associate may be assigned to do is fair game for our summer associates.

Joseph: To echo Jessica’s response, we want to give them a genuine experience so they know what they are getting themselves into. This means they will be involved in licensing projects and performing due diligence for M&A transactions. Essentially, we want our summer associates to test drive the car before they buy it.

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

Joseph: My advice is to be curious and willing to learn. Many of our successful lawyers and partners do not have life sciences or technical backgrounds but have demonstrated a strong commitment to learning and building on a solid IP foundation. If you’re working in IP support for M&A transactions and licensing, you can thrive with the right attitude and dedication. Ultimately, your success in IP law will be driven by your ability to continuously learn and adapt.

Jessica: As Joseph mentioned, being eager to learn is essential. My background is in life sciences, yet many of my cases involve software and high tech. You learn as you go, and it’s normal to feel uncomfortable at times, which I often have to remind myself. There’s an advantage to approaching technology with fresh eyes. Learning how to understand your clients’ technology helps you simplify complex concepts so that a judge or jury without any background knowledge can understand it too. Staying curious and proactive is key to succeeding in IP law, no matter your background.

Jessica Kaempf is a partner at Fenwick’s Seattle office, specializing in patent and trade secret litigation. With a focus on representing tech and AI clients, including Databricks and FriendliAI, she navigates complex federal court cases and Patent Trial and Appeal Board (PTAB) hearings. Her experience spans pre-litigation, discovery, claim construction, and trial stages, making her a potent advocate and defender for innovators.

Joseph Schenck, a partner in Fenwick’s San Francisco office, guides his software clients through significant intellectual property (IP) transactions such as M&A, stock purchases, and complex licensing transactions. Whether advising on M&A for entities like Cisco or negotiating licensing deals for AI and games clients such as Databricks and Embracer, Joseph’s experience in tech law ensures strategic advantages for his clients. His responsibilities include drafting, reviewing, and negotiating significant agreements while aligning long-term objectives with the evolving demands of the technology sector.

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 United States, our clients apply to register trademarks at the United States Patent and Trademark Office (USPTO). 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 (IP) 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 copy-right 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 USPTO, negotiating with opposing counsel regarding a trade-mark 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 IP 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 trade-marks, 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 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.

Describe your practice area and what it entails.

Laura Ashley: Intellectual property litigation is a diverse practice area, encompassing patents, trade secrets, trademarks, and copyrights. The cases can be litigated in a variety of courts ranging from federal and state courts to proceedings before the USPTO and the ITC. The subject matter of the cases is highly variable and can include hardware, software, consumer electronics, medical devices, and pharmaceuticals.

Yungmoon: Intellectual property litigation at Kirkland broadly encompasses everything from patents and trade secrets to copyright, trademark, false advertising, and ancillary claims that go hand in hand with these assertions. I have been involved in every phase of a dispute, at times even before a dispute has become an official lawsuit filed in court. I’ve also litigated in nearly every type of venue you can think of, and I have even been involved in IP cases in international jurisdictions.

What types of clients do you represent?

Laura Ashley: Our clients range from large brand-name companies such as Samsung and Meta to startup-style companies. Most companies have some form of IP rights that they own or license, and therefore, IP litigation can arise almost anywhere; our clients are not limited to a specific industry.

Yungmoon: I have had the opportunity to represent companies that specialize in a wide swath of technologies, and I really love diving into the tech in every case. I have worked with clients that specialize in semiconductor fabrication, high-speed seed-planting technology, foot and ankle plates and screws, pharmaceutical medicines, video games, automobile grills, and spinal implants, among others.

What types of cases/deals do you work on?

Laura Ashley: I work primarily on patent and trade secret litigation in federal district court, although I have also worked on inter partes reviews before the PTAB and 337 investigations before the ITC. Because of Kirkland’s depth and breadth of cases across practice groups, I’ve also had the opportunity to work on cases outside IP litigation that have science or technology components. For example, I have worked on corporate investigations involving claims of scientific fraud and an antitrust matter arising out of an earlier patent case.

Yungmoon: I have represented both plaintiffs and defendants in all types of IP cases, and a big focus of my work is trial. For example, I have been on teams representing Motorola before the ITC in a patent infringement investigation, LivePerson in an AI chat software trade secret case, and Take-Two Interactive in copyright lawsuits brought by tattoo artists for tattoos shown on athletes in video games.

How did you choose this practice area?

Laura Ashley: During law school, I interviewed with a variety of firms across a broad range of practice areas. Ultimately, I landed on IP litigation because of the variety and complexity of the work. Mostly, I thought it would be a role that would introduce me to something new every day—whether a new issue of law, new field of science, or new case or client strategy—and that has turned out to be true.

Yungmoon: Prior to law school, I obtained a master’s in civil engineering and worked in structural engineering. When I enrolled in law school, IP law seemed like a natural path given my technical background. As soon as I started learning about patents, trade secrets, and copyright law, I knew it was the right fit.

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

Laura Ashley: With litigation, a “typical” day doesn’t really exist. Rather, my day-to-day activities depend mostly on the stage of the case. Prior to filing a complaint, a typical day might involve investigating and strategizing how to build your client’s case as well as documenting available evidence and drafting the complaint itself. During fact discovery, tasks can range from drafting written discovery requests and responses, resolving disputes with opposing counsel, preparing for and taking depositions, and generally building the factual record of the case. Expert discovery involves working closely with experts, assisting with drafting reports, and preparing them for and taking their depositions. Once discovery concludes, dispositive motion practice becomes the focus and involves a lot of legal research and writing. Pre-trial work includes preparing jury instructions, verdict forms, and deposition designations to be played at trial and preparing various other pre-trial materials under the court’s local rules. The life cycle of litigation requires attorneys to be adaptable and develop a variety of skill sets.

Yungmoon: No two days are alike. I could be on the road for a court hearing or a deposition, in which case I might work remotely out of a different Kirkland office or from a hotel conference room with a team or witness. If I’m not traveling, my day could consist of revising motions, strategizing with a team about upcoming discovery deadlines, or collaborating across practice groups to offer input as part of a global strategy. Trial requires court attendance followed by preparation in the evening for the next day of trial. It’s very demanding, but that’s part of the fun.

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

Laura Ashley: I would recommend anything that gives you an opportunity to develop critical writing and oral advocacy skills. Writing classes, substantive journal editing roles, clinics, and moot/mock court competitions are all excellent ways to practice skills that will translate to your role as a litigator. In terms of specific classes, Evidence and Administrative Law are very practical classes for litigation purposes generally, and—perhaps unsurprisingly—Patent, Trade Secret, and other IP classes are also helpful.

Yungmoon: Civil Procedure, Evidence, Trial Advocacy, Legal Writing, and moot court were valuable to me. Aside from having to know the Federal Rules of Civil Procedure and Federal Rules of Evidence inside and out, Trial Advocacy and moot court were great opportunities to practice thinking and speaking on your feet. Of course, a huge part of what we do as trial lawyers is write; whether it’s discovery, motion practice, or pre-trial submissions, you must be able to communicate your position clearly and persuasively.

What is unique about your practice area at your firm?

Laura Ashley: One unique aspect of IP litigation at Kirkland is how often we go to trial. Our clients are hiring us for high-stakes, complex disputes, and while some cases do settle, many go all the way to trial. If you are looking for a place to get trial experience, Kirkland certainly offers that. Kirkland also offers its unique Kirkland Institute for Trial Advocacy pro-gram, where associates participate in a full mock trial. Actors are hired to play the witnesses, juries are brought in to give a verdict, and partners play the role of judge.

Yungmoon: Because of the breadth of practice groups at Kirkland, we can collaborate and offer full-service solutions to clients. For example, if a firm client is about to be acquired but is also a defendant in a pending patent litigation, we could work with the transactional team to evaluate the merits of the litigation and assist the client in framing the potential expo-sure for buyers. It’s an asset to have so many deep pockets of knowledge just a phone call away.

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

Laura Ashley: Generally, junior lawyers can expect to be involved in legal research, drafting briefs, drafting discovery requests and responses, preparing contentions, assisting with meet-and-confers, preparing witness outlines, and much more; it depends on the stage of the case and the team’s needs at that time. At Kirkland, most second- and third-year associates are also taking depositions and perhaps getting their first stand-up opportunities in court. Kirkland does not restrict experience or certain tasks by class year but rather gives opportunities based on what the firm feels each associate is ready and willing to take on.

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

Yungmoon: We give summer associates a real dose of assignments, which could involve things such as drafting portions of motions or deposition outlines. A focus for us is to make sure summer associates get to attend outward-facing events. We’ve recently brought summer associates to trial, where they help with witness preparation, research issues that arise at the trial site, and of course, attend trial. We also look for opportunities to attend hearings, depositions, and client meetings. Responsibility starts early at Kirkland, and there’s no better time to start diving in than as a summer associate.

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

Laura Ashley: I don’t think you need a technical or science background to practice IP litigation. It may help on some cases, but in most situations, you are going to be exposed to science and technology that you don’t have experience with even with a technical background. Instead, it’s important to demonstrate a willingness and capacity to learn. If you are in law school, maybe this means joining a technology-centric journal, taking IP classes, or writing a law school note on an IP-related subject. In practice, ask to work on cases that sound interesting to you and volunteer to help with tasks even if it feels uncomfortable. I have found most people are willing to explain the subject matter and give people opportunities if you’re willing to put in the work to help yourself master the material over time.

Yungmoon Chang is an intellectual property (IP) litigation partner in Kirkland’s Los Angeles office. Her practice covers a wide breadth of patent, trade secret, trademark, and copyright issues that span a variety of industries and technologies, including electronics, construction, cosmetics, gaming, automobiles, pharmaceuticals, and medical devices. Yungmoon has played an integral role on case teams in both federal and state courts, as well as before the United States Patent and Trade Office (USPTO) and International Trade Commission (ITC). She has achieved numerous favorable outcomes for clients at all stages of litigation, including multiple trial victories, successful dispositive motions (including at the pleading stage), and early resolution of cases. She has experience in witness examination, oral argument, and all aspects of discovery.

Laura Ashley Harris is an IP litigation partner in Kirkland’s Bay Area office. Laura Ashley focuses on complex patent and trade secret litigation as well as white collar investigations. With a bachelor’s and master’s in engineering, she has represented clients in industries ranging from immunotherapies, biotech, and medical devices to computer software and hardware, cellular and wireless networks, and consumer products. Laura Ashley has experience with all stages of litigation, including pre-suit investigations, trials, and appeals, and her experience includes the Federal Circuit, federal district court, ITC, and Patent Trial and Appeal Board (PTAB) proceedings.

Describe your practice area and what it entails.

At its core, my role as an IP litigator is a storyteller. Whether my team is presenting a closing argument to a jury or writing a brief, I always strive to tell a compelling story of why my client should prevail from a legal perspective and to ensure fundamental fairness.

One of the most interesting things about being a litigator is that, on a day-to-day basis and on a case-by-case basis, what is required to accomplish the goal varies. You start a case by learning as much as you can about your client, their story, and their technology. As the case progresses, you sharpen your understanding of the technology as well as the key legal issues, eventually becoming an expert on both. Then, as a case nears summary judgment or trial, you fit the facts into the relevant legal framework in as compelling of a way as you can.

What types of clients do you represent?

I represent clients primarily in the medical device and electronics fields. My clients range from Fortune 500 companies to local businesses. Exemplary representations include Masimo, Amazon, Applied Medical Resources, Panasonic Avionics, Sigray, and Advanced Cluster Systems. Regardless of their size, however, I understand the importance of every case to my clients and treat their cases as if they were my own.

What types of cases/deals do you work on?

I primarily represent clients in district court patent and trade secret litigations. I also assist with parallel litigations before the PTAB, which commonly arise in the context of district court litigation. A few representative matters from the past year include Masimo Corp. v. Apple, Inc. and Carl Zeiss X-Ray Microscopy, Inc. v. Sigray, Inc.

How did you choose this practice area?

I decided to be a patent and trade secret litigator because I thoroughly enjoy both the technical aspects of my cases as well as the litigation process. After attending law school, I knew I wanted to be a litigator. In addition, as someone with a background in electrical engineering, patent and trade secret litigation was a way to stay connected with the technical world while still practicing as a litigator.

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

One of my favorite parts of my job as a litigator is that my day-to-day changes constantly and no two days are exactly alike. Litigation is a long and varied process. I spend some days with my clients, learning their backgrounds and how they found themselves in litigation. I spend other days discussing my clients’ technologies with leading experts to better understand what a patent term may mean and why my clients’ technologies do or do not meet the claims of an asserted patent. I spend other days resolving discovery disputes with opposing counsel. Finally, if a case gets that far, some of my days (and nights) are spent preparing for trial with my team.

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

My main advice to anyone who wants to become a patent or trade secret litigator is to take as many IP classes as possible in law school, including Trademark and Copyright Law. Knowing the specialized terminology and doctrinal frameworks will allow you to hit the ground running during your summer associateship or first year. Although your real cases will surely raise issues beyond what you read in law school, having a strong subject matter baseline will allow you to begin thinking about finer points faster than you would be able to do if you were simultaneously trying to learn the basics.

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

A particularly challenging and engaging area of patent and trade secret litigation is damages. For some other areas of law, damages analysis might consist solely of business or economic analysis. Not so for patent and trade secret law. For patent infringement claims, damages are required to be tied to the value of the claimed invention itself and are sometimes closely tied to the technical analysis. Therefore, effective damages analysis requires one to be familiar with relevant technical, economic, and legal principles. This makes damages one of the most challenging and rewarding areas of patent and trade secret law.

What is unique about your practice area at your firm?

One of the unique things about Knobbe Martens’ patent and trade secret litigation practice group is its incredibly deep bench of experienced litigators. Knobbe Martens is an IP-focused law firm. Accordingly, Knobbe Martens’ patent and trade secret litigation practice has tried dozens of patent and trade secret trials over the span of decades. Because of this, it is likely that one or more of our litigators have firsthand experience with any given IP law issue you might encounter in a case. I am lucky and privileged to work with such a knowledgeable and talented practice group, and I learn something new from them every day.

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

In Knobbe Martens’ summer program, summer associates frequently assist with real legal or factual research projects related to ongoing matters under the supervision of an associate and partner. This allows summer associates to get a sense of what litigation is like and whether they are interested in litigation long-term. Some summer associate projects can even include drafting portions of briefs or other submissions.

Just as valuably, summer associates are encouraged to work on patent or trademark prosecution projects as well. By being exposed to both the process of acquiring IP as well as litigating over it, summer associates are given a broader picture of how IP fits into clients’ overall business strategies.

Knobbe Martens similarly allows junior associates to maintain both litigation and prosecution dockets while they explore the direction they want to take their career.

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

Do not be afraid of the technology and do not be afraid to get your hands dirty and dig in. Patented inventions are generally novel and non-obvious. Trade secrets are usually not generally known. The technology at issue in a case generally is not what even attorneys with technical backgrounds studied in college or graduate school. Even people with technical backgrounds need to learn the technology in a case. It might take more work on your part to learn the technology, but it is certainly possible. In fact, your process of internalization and learning the technology may even be an asset. Jurors rarely have technical backgrounds let alone in the relevant field. You may be better suited than someone with a technical background to know what facts need to be broken down and taught more expressly to a jury.

Ben K. Shiroma represents both plaintiffs and defendants in high-stakes intellectual property (IP) disputes with a focus on patent and trade secret litigation. Ben has been part of multiple jury trial teams and has also assisted with client matters before the Patent Trial and Appeal Board (PTAB) and U.S. Patent and Trademark Office. He advises clients in disputes involving medical devices, computing, and electronics, as well as copyright and trademark litigation matters. Ben is an active bar member, serves on the board of the Los Angeles Intellectual Property Association, and is a member of the Association of Business Trial Lawyers. He earned his B.S. in electrical engineering summa cum laude from the University of Southern California and his J.D. cum laude from Harvard Law School, where he served as an editor of the Journal of Law and Technology.

Describe your practice area and what it entails.

Shannon: I focus on patent law, helping life sciences and pharmaceutical companies protect their scientific breakthroughs. My work includes developing patent strategies, managing global portfolios, and guiding clients through licensing, acquisitions, and due diligence. I collaborate closely with scientists and business leaders to give complex innovations strong legal protections, ensuring that new discoveries can reach the market responsibly and successfully in a rapidly evolving scientific landscape.

Quinn: Intellectual property litigation involves drafting com-plaints, conducting discovery, drafting expert reports, and filing motions. We work with clients from the first point they believe they have a claim all the way through trial. I work directly with clients on case strategy, briefs, and investigations.

What types of clients do you represent?

Shannon: I represent a wide range of clients in the life sciences and pharmaceutical industries, from early-stage startups to established global companies. My clients include innovators developing novel therapeutics, diagnostics, and genetic technologies to treat a wide variety of diseases, as well as investors and research institutions advancing scientific discovery. I enjoy partnering with teams at every stage of growth to help them protect their IP, build strategic portfolios, and bring transformative scientific ideas to patients and markets worldwide.

Quinn: I represent a wide spectrum of clients: life sciences (on the originator and generic side), AI, software, and hardware companies. We work on national and international litigation.

What types of cases/deals do you work on?

Shannon: I help life sciences and pharmaceutical clients protect and maximize the value of their innovative technologies and therapeutic assets. My work includes drafting and prosecuting patent applications, managing global patent portfolios, and conducting due diligence for investments, licensing, and M&A. I also advise on licensing and collaboration agreements, helping clients align their IP strategies with their business objectives. My goal is to ensure that their technologies are positioned for long-term success in competitive scientific markets.

Quinn: Intellectual property litigation can cover anything from trade secrets training and AI copyright to biosimilar cases. I worked on an opposition to a preliminary injunction in a Biologics Price Competition and Innovation Act case for Novartis, and our team achieved a finding that Biogen failed to show irreparable harm or a likelihood of success on the merits. I’ve also gone to arbitration with vaccine manufacturers and in disputes over collaboration agreements.

How did you choose this practice area?

Shannon: During graduate school, I realized I didn’t want to spend my career at the lab bench. I saw an ad in Chemical & Engineering News for a patent agent, something I’d never heard of before. It sounded like the perfect blend of science and strategy, and it sparked my interest.

Quinn: I got interested in IP litigation after Myriad v. AMP Genetics in the Supreme Court! I kept pursuing it because you get to learn new things all the time, and the better you understand the subject area, the better set up you are for litigation.

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

Shannon: For me, as the Chair of the patent strategy and prosecution group, no two days are the same. I meet with partners and business professionals supporting our practice to manage the patent group. I guide my team on complex patent matters, offer strategic advice, and stay connected with clients. I also attend industry events and stay active in the community to ensure our group remains engaged, collaborative, and at the forefront of innovation.

Quinn: On a typical day, I am usually handling three or four cases in different stages. I may be drafting a complaint, reviewing discovery, and responding to motions from the other side. I speak with clients, opposing counsel, and our forensics vendors and juggle these calls and meetings with legal writing. I have a lot of work that is filed in court or arbitration and a lot for internal or client-only use. I get to learn from great senior associates and partners and help guide and give feedback for junior associates. All experience levels work together on filings and projects every day, and our teams have super-fun people to hang out with.

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

Shannon: Make sure your technical background qualifies you to take the United States Patent and Trademark Office exam. Get familiar with the patent bar study materials early, as it shows initiative and gives you a head start on the rules and procedures you’ll use every day. Just as important, build strong client service skills in any environment that is available to you. Experience in restaurants, retail, or other service jobs teaches you how to listen, communicate, and problem solve. My years waiting tables prepared me for client work more than any class ever could.

Quinn: Honestly, a love of learning—curiosity for new subjects—will serve you well in IP, because you’re constantly switching topics. Philosophy and English classes help for writing and building your arguments. A Patent Prosecution class can help you see what a process is like from the other side.

What do you like best about your practice area?

Shannon: What I love most about my practice is that it never stands still. Technology and science evolve every day, and the law has to keep pace. I’m constantly learning, whether it’s new patent rules, emerging technologies, or insights from new hires who are just starting their careers. Everyone on the team brings something valuable to the table. No matter how long you have been in the field, there is always something new to discover and someone new to learn from.

Quinn: We get the best of science and the law. You’re constantly getting to see new innovations and be on the cutting edge, but you’re also working to be the best litigator you can be.

What is unique about your practice area at your firm?

Shannon: What makes our practice unique is our combination of creativity and technical depth. We work on our clients’ most valuable technologies and assets, and there’s an expectation that we can handle any challenge that comes our way. Our team is composed of exceptionally talented professionals who began their careers as scientists or engineers, many with a Ph.D. or other advanced degree in their technical field. This deep technical foundation allows us to excel across scientific disciplines, including those with emerging and rapidly evolving technologies.

For example, we work at the intersection of life sciences and high tech, and both fields are being transformed by AI. Our team thrives in this space because we understand the underlying technology at a fundamental level, providing an advantage that’s critical for companies seeking robust, forward-looking IP strategies. We draft patents designed to stand the test of time, collaborate closely with our world-class litigators, and deliver strategic, top-tier service to every client.

Quinn: We get to go to trial a lot. There’s a ton of real-world litigation experience.

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

Shannon: Junior lawyers in our group dive right in. They draft patent applications, respond to office actions, conduct legal research, and assist with due diligence, patentability, and freedom-to-operate analyses. It’s meaningful work from day one. We follow an apprenticeship model through which associates learn by doing, gaining hands-on experience with real clients and real technologies. The more projects they take on, the faster they build the skills and confidence needed to excel in this fast-moving practice.

Quinn: As a junior, I was drafting briefs, prepping witnesses for their depositions, and writing invalidity and noninfringement contentions, really anything a mid-level or senior would be doing. There’s huge opportunity for people who are looking for it, and partners are always looking for ways to put juniors forward. When I work with juniors, they’ll take the first crack at a lot of the work we do—motions, deposition outlines, and discovery responses. They are then participating in the next steps for each of these, including second-chairing or taking depositions.

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

Shannon: Technology is transforming how we practice. New AI and tech tools are emerging to streamline workflows and enhance efficiency. While many of these tools are still evolving, progress is rapid. The real opportunity lies in adopting technology that enhances our practice and doing so responsibly and securely, in line with client expectations and guidelines, to organize information, uncover insights, and strengthen patent strategy without compromising the creativity and strategic judgment that define our work.

Quinn: I have no idea! Things are always changing; that’s the beauty of it. For instance, the rise of litigation around large language models is a brand-new phenomenon. Technology will always surprise you. I do think that we’re about to see a very different breakdown between district court and the Patent Trial and Appeal Board, so the strategy for patent litigation will likely change.

Shannon Reaney chairs Morrison Foerster’s patent strategy and prosecution group, where she helps life sciences and pharmaceutical companies protect and grow their innovations. She advises both startups and global enterprises on strategic counseling, patent prosecution, and business transactions. Known for translating complex research into practical legal strategies, Shannon bridges the worlds of technology and law, helping move ideas from the lab to the marketplace.

Quinn Walker is an associate in intellectual property (IP) litigation at Morrison Foerster’s Washington, DC, office. Her practice covers contractual disputes, patent litigation, and trade secrets for both life sciences and tech clients at all stages of litigation. She has worked on district court, appellate, and state court litigation, as well as arbitration matters. Previously, she clerked in the Delaware Supreme Court and Federal Circuit.

Describe your practice area and what it entails.

My practice focuses on patent appellate work, either from district courts or the USPTO. It also includes matters and disputes involving unsettled patent law issues or questions likely to come up on appeal. It’s a mix of being an appellate authority while also covering whatever novel or unusual issues could emerge at any stage of the patent acquisition or enforcement process.

What types of clients do you represent?

Because appellate work can arise in any case, I represent a broad range of clients, including individual patent holders, midsize companies, and even large corporations in the tech and pharmaceutical fields. The clients I work with are a cross-section of all the firm’s clients.

What types of cases/deals do you work on?

The best part of my practice is its variety. While patent law is the common thread, I handle a wide range of cases, from appeals involving pharmaceuticals and Internet-based services to disputes over musical instruments, drones, and wireless speakers. My work spans everything from assisting individual inventors with patent application appeals to litigating major cases involving portfolios of patents for blockbuster drugs. I am involved at every stage, whether advising clients before a lawsuit is filed or working to preserve or overturn decisions on appeal.

How did you choose this practice area?

My undergraduate degree is in electrical engineering. I began my career working as a patent examiner before even thinking about law school, so patent law was a natural fit. I chose to focus my career on patent appeals in law school after realizing that I was more interested in legal issues than the technical aspects I encountered as a patent examiner.

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

My typical day depends on what stage of a case I’m working on. Appeals are much more compact than full litigations, but they move just as slowly. When I first get a case, there’s always a busy stretch where I dig into the record, looking for anything that might help us build a strong appeal. This involves a lot of reading and trying to get a feel for what went on at trial. Sometimes I’ll spend a full day or more just reading a trial transcript. Other days are spent writing and revising our own briefs, and then much later, I’ll have to learn the case all over again when it comes time to argue it in court. I usually have several appeals moving forward at once, each at a different stage, so sometimes I get to choose which task I want to tackle on any given day.

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

The key to being a good appellate attorney is having a strong command of the full legal landscape in your field. There is obviously value in specialization, but appellate lawyers, even those who focus on patent appeals, tend to be generalists in their fields. This is because judges are generalists, and much of the work is translating and condensing a dispute in a way that convinces an appellate court that the trial court made a mistake (or not). Writing is obviously important, but so is exposure to many different areas and issues. Being active in an inn of court, or other organization that regularly discusses emerging legal issues helps, but so does opening yourself up to as many different assignments as possible. Because all patent appeals go to the U.S. Court of Appeals for the Federal Circuit, a specific focus on this court’s jurisdiction and practices is especially helpful. For law students, consider participating in the AIPLA Giles Sutherland Rich Memorial Moot Court competition, a yearly event in which law students draft and argue a mock Federal Circuit patent appeal.

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

The hardest part of being a good appellate attorney is translating complicated technical, legal, or procedural issues into simple and persuasive explanations. Lawyers want to be thorough and address every possible issue, but appellate judges and law clerks have only a limited amount of time to consider each case. Appellate briefs that get bogged down in the facts or history of the case usually aren’t very persuasive. It’s important to present the story in a way that’s both engaging and true to the facts while also making a compelling case. You’ll often have only a few pages to tell a story about an invention or product that was discussed for hours at trial. It’s also essential—and sometimes challenging—to stay objective. If you oversell your argument or ignore the weaknesses in your case, the court may become skeptical of everything you say.

What misconceptions exist about your practice area?

The idea that a successful appellate attorney needs to have exceptional oral argument skills is a huge misconception. People tend to judge appellate lawyers by how well they argue in court, but the truth is that cases are won or lost on the briefs, so being a good writer is 90% of the job. While it’s important for an appellate advocate to listen carefully to the court’s questions and clearly explain their position, success often comes down to how compelling their written arguments are. That’s especially true for patent appeals, which often involve complicated technical issues. Many people underestimate how much time and effort goes into drafting an appellate brief, which is actually the heart of the job and requires weeks of careful writing and editing. Patent appeals demand even more attention to detail to make sure the technical background is both accurate and useful.

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

Obvious assignments for junior appellate attorneys include mapping out individual arguments or researching specific legal questions, but it’s also common for them to handle a full district court brief on a particular legal issue. Big trial teams are often very busy, so large firms usually assign a junior appellate lawyer to help with legal research, spotting issues, and quickly drafting filings during the trial when needed. It’s a great way to get trial exposure while also adding real value and building trust between the trial and appellate teams. In appeals involving complex technical issues, which are common in patent cases, junior lawyers are often expected to quickly learn and understand the technical aspects of a case.

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

One way to develop an IP practice without a technical background is to focus on an area of IP law that doesn’t involve technology, like trademark, copyright, or design patent law; however, even technical patent cases are often staffed by lawyers without a technical background, which is only required to practice before the USPTO. If an attorney has an aptitude for understanding technological issues, they should be able to work on any district court patent litigation. Strong general litigation experience at a firm that handles patent cases makes it easier to volunteer for patent litigation work. Skilled junior litigators are always in demand at top firms. One of the benefits of working at a firm with a wide range of practice areas is that it provides a natural opportunity to move among specific areas. I worked with an associate who did IP litigation but was interested in antitrust law, and he successfully moved from one area to the other without much trouble. One of the best patent appellate attorneys I’ve worked with started with a liberal arts degree and nonpatent appeals.

Nathan Kelley assists clients with patent appeals from district courts and from United States Patent and Trademark Office (USPTO) inter partes reviews. He has argued more than 40 Federal Circuit appeals involving a full range of technologies, including pharmaceuticals, medical devices, software, and computer networking, as well as an equally broad range of legal issues. Beyond litigation, Nate’s experience includes helping develop USPTO rules and guidelines, shaping federal policy on various intellectual property (IP) matters, and internally counseling the USPTO on its implementation of trial proceedings under the America Invents Act (AIA).

As its solicitor and deputy general counsel for IP law, Nate managed all IP litigation for the USPTO and participated in many of the most significant patent and trademark cases in recent years. Nate also acted as the agency’s chief administrative patent judge, leading the Patent Trial and Appeal Board (PTAB) during a critical period as it was coming up to speed with its jurisdiction over inter partes reviews under the AIA. Before his time in the solicitor’s office and PTAB, Nate worked for six years at the Federal Circuit, including as a judicial law clerk. His career in IP law began more than 25 years ago as a patent examiner in the semiconductor field.

Describe your practice area and what it entails.

As an IP litigation associate, I primarily focus on representing clients in patent infringement and trade secret cases. My practice entails representation in district courts as well as administrative bodies, such as the PTAB. 

What types of clients do you represent? 

I have had the opportunity to represent an extensive array of clients who offer technologies ranging from communications, networking, and gaming to medical devices and plant breeding. I also represent generic and brand pharmaceutical companies.

What types of cases/deals do you work on? 

I have worked on patent infringement cases, Hatch-Waxman, and BPCIA cases in federal district courts, as well as administrative proceedings before the PTAB and appeals in the Court of Appeals for the Federal Circuit. 

How did you choose this practice area?

IP litigation was a somewhat obvious choice for me. With a background in science, I knew that I wanted to continue to be involved in the space. I was attracted by the collaborative aspect of litigation practice and by the fact that I could focus on one area of law and learn it deeply. 

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

My day typically includes “familiar” tasks, such as conducting legal research or drafting briefs or answers. However, I learned that the tasks that we, as IP litigation associates, perform are significantly more diverse than what we learned in law school. During fact discovery, for example, I spend my day reviewing documents, drafting discovery requests or responses to said requests, or drafting outlines for depositions. During expert discovery, I spend my days working with experts and preparing for expert depositions. Some days, I am doing online shopping to acquire prior art systems. 

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

I would say to take at least an introduction to IP. Also, if your school has a trial advocacy-based class specifically for IP, I highly recommend taking that class. Whether or not you end up in IP practice, evidence is a must for a litigator.

What do you like best about your practice area?

While patent law land is extremely vast, the best part of my practice is that I get to focus exclusively on one area of law early in my career. I get to learn to do all the things that any litigation associate needs to know while being able to really discover and understand the intricacies and complexities of patent law.

What misconceptions exist about your practice area?

One question I always get when I interact with law school students is whether this practice requires a background in science. While having some background in science can be helpful, it is absolutely not a requirement. There are so many people on my team without a science background who mentor me and teach me all the substantive law I need to know. In terms of the technology, whether you have a background or not, you need to learn each client’s technology as you delve into the case in order to best represent the client. Even if you do have a background in science, you still may have to learn a field that is outside of what you already know. What is important is a willingness to learn and curiosity. 

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

As a junior lawyer, you would most likely start with a lot of legal research assignments. Slowly, but sooner than you think, you will get more unfamiliar and challenging tasks, such as drafting answers, discovery requests, or even small portions of a motion. It all depends on how your case team operates, but if you show your willingness, most teams will be very happy to give you extremely substantive work early. 

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

With rapid new developments of innovative technologies such as AI, I can see the emergence of new, unanswered legal questions that involve various areas of law, including privacy, copyright, and patent. And collaborations with different practice teams is and will become increasingly important.

HanByul Chang is a litigation associate in Cooley’s intellectual property (IP) group. She represents clients in an eclectic range of industries—from pharmaceutical and software to chemical and medical devices—in patent infringement, Hatch-Waxman, Biologics Price Competition and Innovation Act (BPCIA), and trade secret cases.

HanByul earned both a Ph.D. in chemistry and a J.D. from Northwestern University. At the Northwestern Pritzker School of Law, HanByul served as the senior online editor for the Northwestern University Law Review.

Describe your practice area and what it entails.

Jessica: My practice focuses on patent and trade secret litigation. I represent clients in a wide variety of technology and life sciences industries—AI, data analytics, games, cloud computing—and I litigate in federal courts around the country as well as before the PTAB. Additionally, I counsel clients in pre-litigation matters.

Joseph: I am a licensing attorney advising clients on large transactions, such as M&A and financings, from an IP perspective. I also advise on commercial and licensing transactions for many clients, primarily in the tech sector, ranging from emerging companies to mature companies.

What types of clients do you represent? 

Jessica: My clients range from small emerging companies to large, sophisticated companies, many of which are in the tech and AI space. A few examples are Databricks and FriendliAI. Beyond clients in the tech space, I also represent clients in other fields like consumer goods, medical devices, and other science-related fields.

Joseph: On the M&A side, I represent both large clients, buy-side acquirers like Cisco, and sell-side clients. I also focus on AI-related clients and video game-related clients like Embracer and Gearbox. On the licensing side, I represent a range of companies that are AI vendors or using AI in their businesses, like those deploying AI in their products and services.

What types of cases/deals do you work on? 

Jessica: I handle patent infringement and trade secret cases in federal courts across the United States, representing innovators as plaintiffs in lawsuits against competitors, and on the defense side, defending clients against infringement claims.

Joseph: I work on licensing deals and tech transactions of all sizes. It’s always exciting when you get to see how those deals influence the general public; for example, I worked on the acquisition of Wordle by The New York Times in 2022. That was a high-profile deal given Wordle's popularity at the time. Additionally, I have been involved in the AI and machine learning space for several years. Working on deals at the forefront of emerging technologies is particularly rewarding, especially seeing the direct impacts on our lives.

How did you choose this practice area?

Jessica: I've always liked the intersection of science and law or other humanities concepts. In undergrad, I developed my own major called bioethics, society, and applied genetics, which focused on the intersection of science and social sciences. I loved learning about new technologies and inventions, and I like advocacy and persuasive writing in legal practice. Patent litigation was a great way to combine all of these interests.

Joseph: I have a software engineering background from my previous career. When I decided to pursue a career in law, I liked the idea of bringing my software background into my legal work, which naturally led me to IP and tech law. When I started interviewing with Fenwick, I learned about the firm’s games practice, and as an avid, lifelong gamer, the combination of tech, law, and video games was a natural fit for me.

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

Jessica: There is no typical day in the life of a litigator. My daily activities largely depend on what stage of the litigation life cycle my cases are in. If they are in the early stages, a significant portion of my day involves drafting pleadings and writing briefs, such as motions to dismiss or motions to transfer. As cases progress, my focus shifts to discovery, which includes resolving discovery disputes, writing motions to compel, conducting fact investigations, gathering documents, and working with clients on these tasks. I also spend time conducting depositions or defending them, working with experts to prepare their reports, and preparing for summary judgment, pre-trial, and trial stages. Each stage of litigation brings different tasks, making every day unique. 

Joseph: Every day is a balancing act between managing the expected tasks with the unpredictable nature of client needs. While there is a general cadence to larger transactions that lets me know what to expect from a process standpoint, there are always urgent issues from my early-stage clients who may call with real-time risks that they need to manage. Additionally, I work on long-term goals and commercial transactions for our licensing clients, which involves negotiating, drafting, reviewing, and collaborating with team members to make progress on these deals. 

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

Jessica: Persuasive writing is crucial in litigation, so any course that allows you to hone advocacy and persuasive writing skills would be very beneficial. Also, business finance courses are helpful for understanding your clients’ business generally and, in a litigation context, calculating damages.

Joseph: I encourage taking separate classes for patents, copyrights, and trademarks—drafting classes, too, if you plan to work on commercial transactions. And if you do work in the tech space, make it a practice to stay on top of the technological advancements that underpin your clients’ technology.

What do you like best about your practice area?

Jessica: I love digging deep into new technologies, exploring the case facts, and crafting the most compelling arguments to win our cases. I also appreciate the teamwork involved in litigation; working closely with colleagues on complex IP disputes at Fenwick allows us to combine our strengths effectively to accomplish a shared goal.

Joseph: The collaboration. It lets me step outside my bubble and touch a lot of different areas, collaborating with corporate and startup attorneys on M&A or litigators on IP transaction litigation. Plus, our clients are always working on novel, cutting-edge projects, meaning we have to think creatively within the legal framework about ways to make the legal rules fit the technology we're dealing with. It keeps things dynamic, and that's something I really love.

What is unique about your practice area at your firm?

Jessica: I think our patent litigation practice stands out for our blend of technical prowess and business savvy, especially in tech and life sciences. We really understand our clients' businesses and work closely with specialists within the firm, many with advanced technical and science degrees, to craft strategies that truly align with our clients' needs and goals.

Joseph: What sets our practice and Fenwick apart is our strong focus on startups. That focus is the engine that drives much of our work forward, from M&A transactions to licensing, and creates a dynamic and innovative environment that benefits both our practice and our clients.

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

Jessica: At Fenwick, we strive to give our summer associates a true sense of what their work will be like as junior associates. This includes working on substantial tasks such as writing portions of briefs, sitting in on depositions, and helping prepare for those depositions. Essentially, anything that a junior associate may be assigned to do is fair game for our summer associates. 

Joseph: To echo Jessica’s response, we want to give them a genuine experience so they know what they are getting themselves into. This means they will be involved in licensing projects and performing due diligence for M&A transactions. Essentially, we want our summer associates to test drive the car before they buy it. 

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

Joseph: My advice is to be curious and willing to learn. Many of our successful lawyers and partners do not have life sciences or technical backgrounds but have demonstrated a strong commitment to learning and building on a solid IP foundation. If you’re working in IP support for M&A transactions and licensing, you can thrive with the right attitude and dedication. Ultimately, your success in IP law will be driven by your ability to continuously learn and adapt.

Jessica: As Joseph mentioned, being eager to learn is essential. My background is in life sciences, yet many of my cases involve software and high tech. You learn as you go, and it’s normal to feel uncomfortable at times, which I often have to remind myself. There's an advantage to approaching technology with fresh eyes. Learning how to understand your clients’ technology helps you simplify complex concepts so that a judge or jury without any background knowledge can understand it too. Staying curious and proactive is key to succeeding in IP law, no matter your background.

Jessica Kaempf is a partner at Fenwick’s Seattle office, specializing in patent and trade secret litigation. With a focus on representing tech and AI clients, including Databricks and FriendliAI, she navigates complex federal court cases and Patent Trial and Appeal Board (PTAB) hearings. Her experience spans pre-litigation, discovery, claim construction, and trial stages, making her a potent advocate and defender for innovators.

Joseph Schenck, a partner in Fenwick’s San Francisco office, guides his software clients through significant intellectual property (IP) transactions such as M&A, stock purchases, and complex licensing transactions. Whether advising on M&A for entities like Cisco or negotiating licensing deals for AI and games clients such as Databricks and Embracer, Joseph’s experience in tech law ensures strategic advantages for his clients. His responsibilities include drafting, reviewing, and negotiating significant agreements while aligning long-term objectives with the evolving demands of the technology sector.

Describe your practice area and what it entails.

Nishla: I focus on patent strategy, prosecution, and transactions in the life sciences space. I work with biotech and pharmaceutical companies to develop their patent portfolios, conduct diligence analyses to support business decisions and various types of transactions, assess third party portfolios for litigation risks, and prepare IP-related contracts. 

Patrick: My practice is primarily litigation-focused, with the bulk of my work on federal trademark, trade dress, and false advertising litigation. I litigate in federal district courts around the country, as well as before the TTAB of the USPTO. My litigation practice entails both trial and appellate work. In addition to litigation, I also assist with trademark prosecution and manage the trademark portfolios for several international brands.

What types of clients do you represent? 

Nishla: I represent companies from startups to global pharmaceutical companies. Most of my clients focus on developing human therapeutics and have large, complex patent portfolios. I also work with some nontherapeutic companies involved in life sciences research, including consumer products, agriculture, and analytics.

Patrick: I represent a wide array of clients in a broad range of industries, including sports and fitness (e.g., Under Armour and Bauer Hockey), health and wellness (e.g., GOLO), transportation (e.g., Subaru), heavy machinery (e.g., Caterpillar), food and beverage (e.g., Sweet Grace Distilling), firearms (e.g., Ruger), and hospitality (e.g., Marriott).

What types of cases/deals do you work on? 

Nishla: For transactions and diligence, I work on license agreements, collaboration agreements, and M&A. On the patent side, I represent clients before the USPTO and also work with counsel worldwide to develop patent portfolios globally. When I litigated, I primarily focused on abbreviated new drug application (ANDA) litigation for branded pharmaceutical companies.

Patrick: Most of my work is on federal trademark litigation, both for the plaintiff and defendant, involving federal and state claims of trademark infringement, trademark dilution, and unfair competition. For example, I currently represent Ruger in a federal trademark infringement litigation brought by FN Herstal over Ruger’s use of the mark “SFAR” based on FN’s asserted rights to the trademark “SCAR.” I also currently represent GOLO in federal trademark infringement and false advertising litigation against Amazon over the sale of unauthorized GOLO-branded books on Amazon, among other things. I also currently represent Under Armour in two proceedings before the TTAB that have proceeded to trial: One involves a petition to cancel the trademark “KINGS ARMOR,” and the other opposes an application to register “OUTERARMOUR.” 

How did you choose this practice area?

Nishla: I started out in the sciences but knew I didn’t want to stay in academia or perform lab work long term. I considered venture capital or business development paths in biotech, but one of my professors suggested I look into patent law because I particularly enjoyed writing and learning about new scientific developments. I worked with patents as a searcher and technical consultant before going to law school, which was a great way to test the field before committing to becoming an attorney.

Patrick: During my undergraduate studies, I was required to take various business law courses as part of my work in the business school. One of those courses was an IP survey course covering trademarks, patents, and copyrights. From that course, I became interested in pursuing a career in IP. After beginning law school, I realized that I was better suited for a career focusing on trademark and copyright law because I had no technical or science background. From there, I focused my courseload on trademarks and copyrights, which reaffirmed my interest in those subject areas. 

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

Nishla: I have very few “typical” days. Because I have a mix of work, some days, I’m knee-deep in a diligence project for an M&A transaction, and the next day, I’m catching up on patent prosecution deadlines. On the prosecution side, I’m in a review role, so I’m often discussing strategy with my team or clients, providing training, or reviewing work product. I do more hands-on analysis on diligence and transactions projects, where I read a lot of patents, literature, and business documents. As part of the projects, I prepare a lot of slide decks or reports to help clients present our advice to their management.  

Patrick: A typical day for me varies depending on the stages of my cases. For example, if a case is in its infancy, I could be working on drafting a complaint or preparing an answer, affirmative defenses, and counterclaims. I could also be drafting a motion to dismiss or an opposition to the same. If the case is entering discovery, tasks include preparing and responding to discovery, taking and defending depositions, drafting discovery deficiency letters, leading discovery meet-and-confers, and drafting motions to compel. In addition, I regularly communicate with clients on all aspects of a case to align on strategy.

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

Nishla: Besides technical courses and traditional IP courses, regulatory and administrative law classes are particularly helpful. For any IP area, learning about how businesses operate, make money, and compete with each other is extremely important, as these directly impact the value of IP. For example, pharmaceutical companies handle IP very differently than software companies because their business models are not the same.

Patrick: Seek out courses on the topics you are most interested in. If you are interested in trademarks, take as many trademark courses as your school offers. The same goes for those interested in patents and copyrights. Get involved in your school’s IP society and, if possible, take a leadership role. Seek out practicum courses, clinics, or other hands-on opportunities in your topic of interest. And attend as many events related to your area of interest as you can. Networking with those with the same interests goes a long way.

What do you like best about your practice area?

Nishla: I like working with a lot of different technologies, as well as having clients at different stages of their business. I’m constantly learning new aspects of science, business, and law. 

Patrick: I enjoy the variety in my practice. Representing so many different clients in such a broad range of industries makes for fresh work every day that challenges me to apply the same legal concepts in new ways for each client.

What is unique about your practice area at your firm?

Patrick: My practice area is unique because I am part of  a niche focus on trademark and false advertising litigation, something that not many do. Our group is also very collegial and collaborative, something that can also be difficult to find in BigLaw.

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

Nishla: A new associate might manage a patent prosecution docket where they take the first pass at reviewing communications from the patent office and developing a strategy for responding. They will typically review a lot of literature or patents for relevance to a client’s technology. When necessary, they perform legal research and prepare summaries or memos for the client.

Patrick: A junior lawyer could perform a multitude of tasks in this practice area. Most common is case law and other research as needed for various cases. Junior lawyers are also likely to be asked to prepare discovery objections and responses, review documents, and be familiar with all of the discovery served by both parties, often making the junior lawyer the most knowledgeable about various facts of the case. Depending on the size of the team, junior lawyers could also be asked to assist with writing first drafts of briefs, assisting with deposition preparation, and drafting correspondence to clients.

What are some typical career paths for lawyers in this practice area?

Nishla: Most IP lawyers in the life sciences space have some type of science background, and many did not plan to be lawyers! While many life science lawyers have long, successful careers at law firms, there are a lot of in-house opportunities for patent attorneys. Sometimes lawyers go directly into in-house roles, but most often, they spend at least several years at a firm learning the details of patent prosecution or litigation before they are capable of advising business colleagues effectively. There is so much to learn as a life sciences lawyer, it takes many years of training even after law school.

Nishla Keiser’s current practice focuses on patent strategy, prosecution, and transactions in life sciences, including both biotechnology and pharmaceuticals. After graduate school and before joining Finnegan as a technical specialist in 2007, Nishla worked at a patent search and consulting firm. She attended law school while at Finnegan, developing a mixed litigation and counseling practice. In 2015, Nishla moved to a biotech startup, starting out in intellectual property (IP) and eventually moving into the chief legal officer role at a second startup company. In 2023, she returned to Finnegan’s Boston office. 

Patrick Rodgers attended the University of Miami, receiving a B.B.A. in 2015, and the Georgetown University Law Center, graduating in 2018. Patrick is a member of both the Florida and DC bars. Since graduating law school, Patrick has focused his practice on IP, specifically, federal trademark and false advertising litigation. Patrick’s practice includes both trial and appellate work, as well as work before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO).

Describe your practice area and what it entails.

I am a senior patent litigation associate within the Jones Day IP group. I am involved in all phases of litigation, from complaint to resolution. I practice primarily in federal district court, but I also have experience in the ITC, the PTAB, and JAMS arbitration.

What types of clients do you represent?

I represent both plaintiffs and defendants. The clients I work with are typically large, multinational companies from various technological sectors. In recent years, these clients have included NXP Semiconductors, DePuy Spine (a Johnson & Johnson subsidiary), and Google.

What types of cases/deals do you work on?

One of the great things about working for Jones Day is that I get to work on complex patent litigation matters that are high-stakes and often span multiple forums. My cases can range anywhere from a single-patent lawsuit in one federal district to litigation campaigns between competitors that involve dozens of patents and products across multiple federal districts and before the PTAB. For example, I recently represented NXP Semiconductors in a dispute that spanned three federal district courts, initiated dozens of PTAB proceedings, and involved additional related patent disputes in China. This dispute started with a 26-patent complaint, and by the time the case settled four and a half years and three trials later, more than 40 patents had been asserted by one party or the other.

In terms of subject matter, my practice at Jones Day involves work on a wide range of technologies, which I really enjoy. For example, my cases have involved semiconductors used for ultra-high-frequency RFID applications, the internal composition of lithium-ion batteries for electric vehicles and the process for producing them, streaming media like YouTube, medical devices for the correction of numerous spinal conditions, biotechnology, and pharmaceuticals, among other products.

How did you choose this practice area?

I have always found the idea of owning intangible property fascinating and have always enjoyed science, so there was a natural draw. I took several IP courses and really enjoyed them. As a summer associate and then again as a new lawyer, I sought out IP assignments. Both the law school courses, work assignments, and the attorneys in the Jones Day IP group cemented my interest in joining the IP group with a focus on patent law. Jones Day really invests a lot of time and resources, including training and mentorship programs, and the IP group is no exception. From the very beginning, I was able to start forming good relationships with associates and partners in the group.

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

A “typical” day depends on the stage of litigation I’m in. I often draft motions and opposition briefs at all stages of the case; during the discovery phase, I manage the day-to-day written discovery and take and defend depositions; leading up to trial, I manage pre-trial exchanges, draft witness examination outlines, and prepare witnesses for testimony. My “typical” day has, perhaps unsurprisingly, evolved over the course of my time at Jones Day. Over the past several years, I have been afforded many opportunities to develop my legal skills, including significant on-my-feet experiences such as taking depositions, making oral arguments, and directing and cross examining witnesses at trial. Not only do Jones Day lawyers take the time to mentor, the varied expertise and styles of the lawyers who I work with have also made me realize that there is not just one right way or one right style. I have been able to craft and develop my own style.

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

Taking at least an introductory IP course is helpful for getting the lay of the land when it comes to the major forms of IP, including patents. I would also recommend taking one or two additional IP courses, depending on where your interest lies, as well as practical courses that target advocacy skills. If you do have a technical or scientific degree, I recommend taking the patent bar, even if you are not interested in prosecuting patents. District court patent litigation is often accompanied by parallel inter partes review proceedings before the PTAB. These proceedings are often the source of early argument experience for junior attorneys but require you to be admitted. Jones Day and the IP group take great interest in helping associates develop legal skills and assisting associates to find their voice and develop confidence in their skills.

What do you like best about your practice area?

One aspect I really like about my practice area is how intellectually stimulating it is. Not only do I grapple with nuanced areas of the law, I also do deep dives into new technological areas, some of which I have prior familiarity and some of which I have no relevant background. On top of the legal and technological issues, Jones Day is also helping its clients resolve these disputes within their business frameworks, which often have overarching goals that extend beyond the present IP dispute. We therefore have to take a global view of the disputes and help clients work toward a disposition that balances the complex legal, technological, and business concerns.

Another thing I really like is the seamless, cross-office nature of most of the cases I have been staffed on. The IP group at Jones Day often leverages attorneys from several offices when staffing a litigation team, and everybody rows in the same direction toward the same goal. This has allowed me to work with, learn from, and form relationships with many of my colleagues both inside my own office and across the firm. While U.S. litigation is staffed with U.S. lawyers, if a client’s dispute has companion litigation or patent office proceedings or otherwise implicates potential legal issues in other countries, Jones Day lawyers across the world—IP or not—are quick to become part of the team, seamlessly working to handle the client’s global needs and allowing us to get the right lawyer handling the right issue.

What misconceptions exist about your practice area?

The most common misconception about patent litigation is that you have to have a science degree to be a patent litigator. That is not true. While many of us do have a technical back-ground, a trial lawyer is still a trial lawyer, and the advocacy skills are equally applicable to patent litigation. The Jones Day IP practice is primarily composed of lawyers with technical degrees, but it welcomes lawyers of all backgrounds. Some of the most talented IP lawyers who I have had the opportunity to work with do not have technical backgrounds. I often tell people that I might as well not have had a technical background as the vast majority of my cases have been rooted in technologies for which my technical undergraduate degree (chemistry) has no direct applicability. Yet, I am just as capable of understanding and litigating the issues in the case, which extend far beyond the technical minutiae.

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

There is a variety of tasks that a junior patent litigation lawyer might perform. There will, of course, be document review, which includes reviewing clients’ documents for relevance, confidentiality, and privilege before producing them to the other side and then reviewing the incoming production to identify relevant evidence. It may also include supervising other document reviewers if the client chooses to contract out the document review for cost-saving purposes. Junior attorneys often take the first pass at drafting responses and objections to discovery requests. You can expect to do a lot of legal research both to inform case strategy and to support arguments to be briefed. You may do first drafts of pleadings and briefs. And you will assist with identifying key documents to use to depose the other side’s witnesses as well as prepare sets of documents to use to prepare your own witnesses for deposition.

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

My advice would be to try to just forget about the fact that your undergraduate background is not in a technical or scientific field. As I mentioned above, the need for a technical background to do patent litigation is a total misconception. True, in some particularly complex technology spaces, having a related technical background is helpful. In my experience, that includes pharmaceuticals and electrical engineering spaces. But for many, they will be starting from the same position as the other associates on the team with technical backgrounds or not. Everybody will have the same learning curve on the particular patents and technology at issue. And even on cases where having a related technical background is a real leg up, there are still crucial roles to be played that do not require you to be so in the weeds on the technical aspects.

Kaitlin Crowder’s practice focuses on intellectual property (IP), with a primary focus on patent litigation. She assists clients with defense and with protection and enforcement of IP rights through court and administrative actions. She represents domestic and international clients in federal courts throughout the United States, before the International Trade Commission (ITC), and at in inter partes review proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office.

In the past two years, Kait has tried four cases for clients such as Johnson & Johnson and NXP in which she directed and cross-examined fact and expert witnesses. Kait has significant experience in all other stages of litigation in both offensive and defensive cases, including motion practice and argument for dispositive and non-dispositive motions, depositions, Markman proceedings, discovery, and strategic case development. She has played central roles in achieving case-dispositive indefiniteness rulings during Markman proceedings and has been a key contributor in other successful invalidity challenges, noninfringement defenses, and the preservation and limitation on the scope of liability and damages claims.

Kait has experience in a wide variety of technologies, including semiconductors, lithium-ion batteries for electric vehicles, streaming media, medical devices, biotechnology, and pharmaceuticals.

The views and opinions set forth herein are the personal views or opinions of the authors; they do not necessarily reflect views or opinions of the law firm with which they are associated.

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.

Describe your practice area and what it entails.

Emily: My practice is primarily centered on biotechnology patent prosecution, focusing on securing patent protection for biotechnology inventions in the United States and globally. Additionally, I work on patentability, invalidity, and non-infringement analyses and occasionally assist with post-grant proceedings, including inter partes review.

Wenhao: My practice includes patent preparation and prosecution both in the United States and in foreign countries. I draft and file new patent applications and respond to office actions issued by the USPTO. In addition, I work on patent litigation projects including post-grant proceedings before the PTAB, patent litigation in U.S. district courts, and Section 337 investigations at the ITC.

What types of clients do you represent?

Emily: I represent a variety of clients—both big and small—in the biotechnology field. For example, I represent pharmaceutical companies, cell therapy companies, biotechnology companies, and universities, as well as newer companies that are not yet public.

Wenhao: I work with clients from different parts of the world. For example, I represent companies in the wireless communication, software, and media streaming industries.

What types of cases/deals do you work on?

Emily: I primarily focus on prosecuting patents both in the United States and internationally. This focus involves closely collaborating with inventors to strategically draft both patent applications and responses to office actions from patent examiners worldwide. It also involves managing patent portfolios and working with clients to carefully develop global patent strategy.

Wenhao: I work on patent applications, discussing the innovation with the inventors in a disclosure call. I then convert the innovation into a new patent application with text descriptions and drawings to be submitted to the USPTO. I also work on patent litigation projects on both the plaintiff side enforcing patent rights and the defendant side advocating for patent invalidity and non-infringement.

How did you choose this practice area?

Emily: I knew that clinical medicine and laboratory work weren’t the right fit for me, but I wanted a career that would allow me to pursue my passion for science. Patent law proved to be the perfect fit as it offers the opportunity to work in an innovative and rapidly growing field and engage with cutting-edge technologies. I also find it rewarding to contribute to the commercialization of life-changing technologies, playing a key role in bringing groundbreaking innovations to the market.

Wenhao: My first job after receiving my engineering degree was a research position. My four-year career as a research scientist led to an increasingly specialized field, but I wanted to explore a broader range of science and technology. A friend told me that is exactly what his job does—he was a patent lawyer.

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

Emily: Every day is different, but a typical day can involve meeting with scientists to discuss a new invention for a patent application, collaborating with foreign counsel to respond to an office action from a foreign examiner, meeting with clients to discuss patent portfolio management strategies, conducting freedom-to-operate searches, and drafting patentability analyses.

Wenhao: I would start my day by deciding the tasks to do for the day, which involves going through a list of matters and picking up ones with closer deadlines. The tasks include drafting patent applications, investigating strategy, drafting responses to office actions, and filing documents with the USPTO. Throughout the day, I also monitor emails and act accordingly when receiving urgent requests from clients or colleagues.

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

Emily: A strong foundation in science is essential. I recommend taking a broad range of science courses across various fields. For example, my work has involved microbiology, cell biology, gene-editing technologies, pharmacology, immunology, sequencing technologies, and devices. Having a comprehensive and deep understanding of different fields within biotechnology is incredibly beneficial. Additionally, staying current with emerging technologies by reading scientific journals, attending conferences, and networking with scientists will enhance your knowledge and keep you informed about the latest developments.

Wenhao: Practicing patent law requires both a technical background and a legal background. Thus, it would be essential to first obtain a technical degree, such as a STEM degree, to be able to take the patent bar and understand the client’s technology. I would also recommend taking any Patent Law class in law school to get familiar with the area because the learning curve can be steep.

What misconceptions exist about your practice area?

Emily: In law school, I was often told that I would be reading and writing all day as a lawyer. While there is certainly a lot of both, patent law is much more dynamic than that. It requires constant collaboration with attorneys, scientists, and business leaders. A large part of my day is spent learning about new technologies, strategizing internally and with clients, and engaging in creative problem-solving to find the best solutions for patent protection and commercialization.

What is unique about your practice area at your firm?

Wenhao: At Sterne Kessler, there are opportunities to do both patent prosecution and patent litigation. People can do both at the same time or switch gears between the two according to their interests and situations. Here, we have various types of work, and the firm encourages people to work on things that interest them. I personally found it to be beneficial because skills in one practice can benefit the other. In addition, a combination of both patent prosecution and patent litigation can provide a steady workflow.

What are some typical career paths for lawyers in this practice area?

Wenhao: My path, like many other colleagues here, includes transitions in the order of (1) technical specialist, (2) patent agent, (3) student associate, and (4) associate. I joined as a technical specialist, which is a starting position for people who have technical backgrounds but no legal experience. When passing the patent bar, I became a patent agent, after which I applied and attended law school as a part-time law student while working full-time as a student associate. I became an associate after graduating law school and passing the bar. This path is desirable for people with advanced degrees and/or working experience. When I started law school, I transitioned into a student associate role, alleviating my concerns about job hunting and tuition, as I was already employed at the firm.

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

Emily: I recommend immersing yourself in relevant technologies and developing the ability to quickly understand complex concepts as this skill is crucial in intellectual property (IP) law, regardless of having a technical background. It also may be beneficial to explore other areas of IP law, such as trademark, copyright, and design patent law, which may be more accessible without a technical background. Alternatively, you could focus on developing a niche within IP law, such as licensing agreements and negotiations.

Emily Tkac is an associate in the biotechnology and chemical practice group, where she prepares and prosecutes U.S. and foreign patent applications and prepares opinions of counsel on patentability, non-infringement, invalidity, and freedom-to-operate, among other analyses. Her areas of technical expertise include molecular biology, biochemistry, genetics, cancer biology, and therapeutic antibodies. Emily received her J.D. from the University of Connecticut School of Law and her M.S. in medical science from Boston University. Emily received bachelor’s degrees in molecular and cellular biology and history from the University of Connecticut.

Wenhao Xiong, Ph.D. is an associate in Sterne Kessler’s electronics practice group. His practice includes preparation and prosecution of patent applications in the United States and abroad, post-grant proceedings before the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), patent litigation in U.S. District Courts, and Section 337 investigations at the U.S. International Trade Commission (ITC). His technical areas of expertise include wireless communications, digital signal processing, computer networking, software, analog/digital circuits, and AI. Wenhao received his J.D. from The George Washington University Law School and his Ph.D. and master’s degrees in electrical engineering from Wichita State University.