Moderated by Nicholas Gaffney
Nicholas Gaffney (NG) – member of the Law Practice Today Board and veteran public relations practitioner, asked three accomplished lawyers to discuss their experiences as women working as patent litigators. These seasoned attorneys share their personal insights into patent litigation, discuss career advice, examine changes needed in the patent system, debate patent trolls, plus elaborate on the advantages and disadvantages of being women in this high-profile arena.
Our Panelists
Kara R. Fussner (KF) – Principal at the St. Louis office of Harness Dickey, Ms. Fussner’s practice focuses on litigation in the areas of patents, trademarks, copyrights, rights of publicity, trade secrets and unfair competition. She is involved in all aspects of litigation, at the trial and appellate levels.
Patricia Ho (PH) – An associate at Sheridan Ross, P.C., Ms. Ho focuses her practice on intellectual property litigation and counseling. She has represented clients in a variety of cases in federal court involving issues of patent and trademark infringement, copyright infringement, false advertising, unfair competition, and trade secrets.
Annie Rogaski (AR) – Now a founding partner at HIPLegal LLP, Ms. Rogaski, for two decades, advocated for clients in intellectual property and complex business litigation, including as a first-chair trial attorney. Her litigation and trial experience enabled her to provide strategic advice and counseling across all forms of IP (patent, trademark, copyright, trade secrets and contracts) and a variety of industries.
NG: What drew you to patent litigation? What are some of the challenges you faced breaking into the practice area?
KF: If there is such a thing as an accidental patent litigator, then that would be me. I started my career doing shareholder derivative suits and merger-related litigation. I ended up specializing in patent litigation after a more junior associate that had worked for me moved to an intellectual property law firm, and several months later advocated for my hire.
PH: After law school, I clerked for a judge and found the trials really interesting and exciting. In law school, I had taken IP courses and the patent bar exam, but I wasn’t drawn to patent litigation until I clerked for a judge after law school. I found the story telling of jury trials really interesting and exciting, and I thought that pursuing patent litigation was a way to combine two interests.
AR: I went to law school with the idea of combining my undergraduate education in chemistry with the law. I had planned to practice environmental law, but environmental law jobs dried up when I graduated, so I fell into IP litigation instead. For my first couple years as a lawyer, I practiced “soft IP” litigation – trademark, trade secret, and copyright litigation. I later transitioned into patent litigation, which I found to be intellectually challenging and stimulating, and constantly changing, which keeps things fresh and interesting. I did not face any particular challenges in breaking into patent litigation – actually it was the opposite. Those with technical degrees tend to gravitate to or be tapped for patent litigation. I always wanted a broader practice mix, so faced more challenges in keeping my practice varied across IP.
NG: Have you ever been drawn into a matter for the sake of diversity?
KF: Not drawn into, though I don’t think my colleagues mind having a woman at counsel table when we are in front of a jury.
PH: Not that I know of.
AR: To my knowledge, I was never staffed on a case because I am female. Generally, my background and experience was a good fit for the cases I worked on, so I think I was there because of my talent and experience, not my gender. But, I suspect having me on a team made things easier for those in charge of staffing the case because it made gender diversity a non-issue for those leading the litigation.
There were a few times as a partner when I was asked to join client pitches specifically because the team needed some gender diversity. While that request always brought with it an initial tinge of irritation, I took those opportunities as another chance to meet and work with great clients. Looking back, though, I don’t think any of those pitches resulted in us being hired. It could have been that the group dynamic made the apparent team diversity seem artificial to the potential client. I do think you can sense if a team truly sees the women on it as valuable members or if women are there just to check off the diversity line item.
NG: Have you found it difficult to find a mentor?
KF: Yes, if what is meant by a mentor is a woman I have modeled myself upon, or sought career advice from. However, many more senior attorneys whom I worked for over the years – both men and women – provided valuable feedback on my work product and helped me to become the attorney I am today.
PH: No. I think most experienced lawyers are more than willing to pass on their knowledge and lessons learned, if you ask. I’ve found this is especially true with other women lawyers. Also, I’ve been incredibly lucky to work with great lawyers at my firm who have always supported me and spent the effort to discuss their experiences with me.
AR: Not at all. I was very fortunate throughout my career to have amazing mentors, only one of which was a formal mentor assignment – the rest developed because I sought out their advice along the way or worked closely with them. My first mentor in general IP litigation, Kim Donovan, really taught me the ropes of litigating when I was thrown into the deep end of case management as a first year associate. Susan Spaeth was my first mentor in patent litigation and became a strong, powerful sponsor for me. I had several male mentors as well – Jim Gilliland and Dan Furniss (now deceased), who both served as vocal sponsors within my firm as well as mentors with respect to trial advocacy. Dan (many years my senior) second-chaired the first jury trial I first-chaired – his on-the-fly mentoring during trial was an incredible gift to me. I also had a strong mentor who was not in my firm, Phil Rovner. Phil was our local Delaware co-counsel in my first trial, and he became a great mentor and resource who could provide a unique perspective from outside my firm, but who was familiar enough with the firm to understand its environment and politics. I think it’s useful to have a mix of mentors – male and female, within your firm and outside your firm. Also leveraging lateral mentors (others at the same level, but perhaps in different fields or environments) is beneficial.
NG: What advice offered early in your career helped you get where you are today?
KF: Take ownership of your work product and do your best work, no matter what. Do not hand any work product to a more senior attorney that is not your best effort, and reflective of a finished product that you would be comfortable putting your own name on and filing with the Court. Treat the more senior attorney as the client. If a project is taking longer than expected, go back to the senior attorney, explain the status and ask for additional time. Do not turn in sub-par work product.
Also, be direct, and correct any misunderstandings or misimpressions about your work product or performance.
PH: Don’t be afraid to ask for what you need, and take it one day at a time.
AR: Represent clients with the highest of professionalism and don’t engage in the sandbox play that often occurs in high-stakes litigation. I struggled throughout my career with the sense that, by playing fair when my opponent did not, it would put my client at a disadvantage. Eventually, I asked one client how she felt about having an attorney play fair even if it meant she could lose the case. Her response often echoes in my mind. She said that she hires outside counsel who reflect her reputation. She would not want to cheat to win, so would not want her counsel to approach her case that way. If she played fair but lost, so be it. She believed in the long view – whether for the case or her career – that taking the high road would pay off in the end. That gave me a strong client justification for sticking to the professional high road.
NG: Are there any areas of patent litigation where you think women have an advantage over men?
KF: It is a fact of life thatmen and women are different and people sometimes respond differently to a woman versus a man. There are pros and cons to this. In patent litigation we are dealing with inventors, witnesses and in-house IP counsel that, more often than not, are men. Sometimes it is an advantage to be a woman, if, for example, it puts a deponent more at ease. Other times it can be a disadvantage, where, for example, a client-witness assumes a woman cannot understand the technology, or has difficulty working with women.
PH: Not particularly. There are always cases where the lawyers will be unreasonable or overly adversarial, but I’ve found that it is not dependent on gender – for better or worse.
AR: In my experience, expert work gave me the best advantage. I think every single opposing technical expert in the cases I litigated were men. For the most part, they underestimated me – my technical understanding, my tenacity, my stamina. My favorite part of expert depositions was early in the day when the expert wanted to help me understand the very difficult concepts he dealt with in his job. By assuming I wouldn’t understand, he would “dumb it down” for me, in the process making statements he hadn’t carefully thought out that could help me later.
Cross examination of those experts at trial is also a place where I had an advantage. They had eventually seen (by the end of the deposition), how I could handle them and the technology, so at trial they knew I was ready to jump on any inconsistency in their testimony. They saw me through a different lens than the jury did based on our history in deposition. So, I could be outwardly pleasant while the expert was tied in knots waiting for me to impeach him. That was my favorite part of patent litigation.
NG: What is the most high-stakes matter you’ve worked on to date?
KF: Most recently I led the brief writing efforts in the Octane v. Icon patent fee-shifting case decided by the U.S. Supreme Court. We successfully advocated for a change in the legal standard for awarding fees, and I had the honor to “second-chair” the oral argument in the U.S. Supreme Court.
Before that, a case that made national news was C.B.C Distribution & Marketing, Inc. v. Major League Baseball Players Association and MLBAM. In that case the Eighth Circuit Court of Appeals decided that fantasy baseball providers could use the names and statistics of players without a license; a victory for our fantasy baseball-provider client, C.B.C.
PH: That depends on your definition of “high-stakes”. All client matters are high-stakes when it involves their ability to operate their businesses freely.
AR: The most high-stakes matter for me was high-stakes not because of the dollar amount involved but because of the personal impact of the case. I was a senior associate at the time and we filed a case in Delaware Chancery Court for specific enforcement of the supply portion of a settlement agreement from an earlier patent case. The supply agreement addressed the supply of a biologic that provided treatment for those who suffer from hemophilia. Because the supply of this life-saving treatment was dwindling, we needed to move fast. We asked the court for a trial date just three months after we filed the complaint – and he granted it. So we worked every day of those three months, with the sole exceptions of Thanksgiving Day and Christmas Day. Because of the pace of the case, both sides’ attorneys had to work together to get the case worked up. We had no discovery disputes, no motion practice, and the trial ran very smoothly because both sides helped each other find exhibits and shared equipment. For me, this was the epitome of how litigation should occur – no sideshow or posturing – both sides collaborating and laser-focused on putting on their best case as efficiently as possible. No other litigation measured up to that.
NG: What do you like about being a litigator?
KF: There is an energy and vibrancy to litigation that is different from other types of legal practice. Litigation is not a desirable event for most clients, but it is sometimes necessary to resolve disputes. I find it rewarding to work passionately and strategically in a litigation on behalf of my clients to get them a successful outcome.
PH: Thinking strategically about a case and coming up with ways to produce the best possible outcome for the client. I also like writing briefs and coming up with the arguments for the briefs.
AR: This is a tough question for me, as I just transitioned out of litigation into counseling and strategic advice, but many of the things I enjoyed about being a litigator I still use in my counseling practice. As I litigator, I liked fighting for my clients, but in a way that was collaborative and efficient. The waste and disruption of patent litigation was one of the key drivers for me moving to a more proactive, productive role, to help clients position themselves to more effectively withstand or pursue litigation.
As a litigator, I enjoyed crafting arguments and reading the room during an argument to adjust to the moment – I could never manage to stick to an outline if I saw a better way on the fly. Trials were the height of my enjoyment as a litigator. They are a unique event where a team comes together – often holed up in a hotel and war room together – working ungodly hours to present a cohesive, engaging, persuasive story to a judge and jury. Building a team that worked well together, was organized and efficient, and presented well in the courtroom was a challenge worth its weight in gold when it was successfully executed. Trials are a shared experience under unusual and difficult circumstances that can create very strong bonds with your team.
Being a litigator develops key skills that translate well to any other practice throughout your career – skills like team-building, collaboration, reading an opponent, persuasive communication, strategic advice and partnering with clients to solve challenging problems. Having spent decades in the trenches of litigation now gives me unique insight into helping clients avoid or withstand litigation as cost-effectively as possible.
NG: What is one aspect of the patent system you would tweak?
KF: Often when presented with a fee motion at the conclusion of a litigation, I see district court judges characterize it as the “tail wagging the dog.” I hope that the Supreme Court’s decision in Octane will encourage district courts to devote reasonable time and resources to fee motions, and to treat these motions as an important and integral part of the proceeding. If fees are awarded in appropriate cases (i.e., not simply loser pays, but cases in which the merits were exceptionally weak or other conduct, as a whole, made the case stand out), then over time the award of fees will alter patent litigant in positive ways.
PH: A majority of the work I do is IP litigation, so my wish would be uniform patent rules for each of the federal district courts that could streamline the discovery process. The other most common suggestion I hear is that the USPTO should require examiners to take the patent bar exam.
AR: I would move all patent litigation to patent courts (with judges trained in patent law who are also either technically trained or have a demonstrated interest in technology) within our district courts and make all patent trials bench trials. The beauty of patents is the technology, the innovation. All of that is lost in a jury trial when the parties fight over high-level analogies and the technology itself takes a back seat. The patent laws are also so complex to learn that juries, as well as judges who do not deal in patent law on a daily basis, are making decisions that often do not apply the law properly. While the appellate process is supposed to right those wrongs, the Federal Circuit is not yet at a point of providing consistent application of laws (decisions vary depending on the particular panel drawn), and many companies do not have the resources to see a case all the way through the appellate process. Those cases end up with a settlement driven by a result that likely has nothing to do with the patent laws.
NG: What are your feelings about the term “troll?”
KF: I associate the term “troll” with a business model in which an entity leverages the high cost of patent litigation to extract nuisance-value settlements. Definitions in some of the proposed legislation that would broadly encompass non-practicing entities go, in my opinion, too far. Non-practicing entities have a role in our patent system, and are not necessarily trolls. Conversely, practicing entities can engage in “troll-like” conduct when they assert patents in overly broad and unreasonable ways to harm competition or, as a defendant, to drive up the costs of litigation to avoid paying licensing fees they know are due.
PH: I think it’s unnecessarily derogative. While I can understand that to some the idea of an individual or entity making a business of enforcing patents is distasteful, I think this aspect of patent enforcement is overly emphasized in the media and leads to the implication that patents on the whole are bad. A patent is a legal property right that a patent owner may choose to enforce, for a limited amount of time. This is regardless of whether the patent owner is actually practicing the invention disclosed in the patent. The specific issue of non-practicing entities, or “trolls”, shouldn’t be used to make conclusions about the patent system as a whole, i.e. whether the patent system actually encourages innovation or is bad for society. There are bad patents and bad actors that have taken advantage of the patent system and the lack of procedural safeguards in the courts. But I think these issues have started to be addressed through the AIA, recent court decisions, and changes to the patent examination process. I expect that this process will be ongoing and I expect that patent litigation will evolve along with this process.
AR: Love it … when applied to a true patent troll. The term is getting a bit murky as different people and companies try to get in on the action. I consider “troll” to describe those individuals or companies who do not conduct research and development that is advancing science and do not sell products or services – their business is leveraging patents simply to make money. This does not include the solo inventor who cannot commercialize her invention and so shops her patent out to someone who can. It does not include universities who are creating new things every day and licensing those who can bring those things to market. A disappointing trend is seeing technology companies building a new strategy of acquiring patents simply to monetize them – while they don’t fit my current definition of a patent troll because they also innovate and make products or offer services, there is troll-like behavior growing as a side business. We have a long way to go before our legislation and courts can effectively curb abuses in patent assertions, which I’ve seen most often in troll cases. And, I think it will become even more difficult to rein in troll behavior as the definitions continue to blur.
NG: What would you say to a recent (female) law school graduate considering practicing patent litigation?
KF: Patent litigation is a great field of law, but your planning for that career needs to begin before law school. An undergraduate degree in engineering, computer science or bio-chem, though not strictly required for patent litigation, greatly improves your chances for employment in the field.
Also, patent litigation is still litigation. If litigation is not your cup of tea, then neither is patent litigation. On the other hand, if you like writing and have a knack for understanding complex technology and explaining it in a simple way, then patent litigation may be a great fit for you.
PH: That there will always be situations in practicing law where people will have preconceived perceptions –which may be negative– of your abilities or competency. I wouldn’t spend time trying to change or disprove these perceptions. Instead, it’s important to focus on your belief in your abilities and do the best work you can. There can be a lot of gamesmanship in this area of law and you can’t let such perceptions change the way you practice. In other words, haters gonna hate.
AR: A few things. First, become an expert in some segment of patent law. As you start practicing, spend extra time (yes, it will be non-billable, but it will help your career) developing your knowledge and expertise in that segment and speak up when someone has a question about it. This gives you credibility as a subject matter expert.
Second, stay away from roles and administrative contributions that pigeonhole women. Rather than volunteer for an e-discovery task force, volunteer for the emerging PGR / IPR task force. Cut your teeth managing a case and then immediately train up those coming after you to do it. Women tend to get stuck as case managers because we often are naturally good at (and feel confident in) that role. But if you want to be a first-chair trial attorney, staying too long in the case manager role will delay or prevent you from getting there.
Learning to say no in a constructive way to administrative roles that won’t advance your career is critical – “Thanks for the opportunity to be on the e-discovery task force, but I’ve spent two years developing expertise in PGR / IPR practice – this expertise would be very valuable for the PGR / IPR team. Who should I talk to about helping out that committee?” The more you can tie a “no” to your business plan (preferably approved by your firm in your annual review process), the easier it becomes to get opportunities that advance you toward your end goal. This requires, of course, that you know what your end goal is.
Finally, network from day one. Build time into your week to reach out to contacts – whether sending LinkedIn invites, sending an article to someone, commenting on a blog, grabbing coffee or lunch or a drink after work – make it a habit early. The only road to independence is having your own business, and your network is what will get you there. Your litigation skills have wide application and will be transferable into whatever practice you seek out – mine now serve me well counseling clients to protect and position their IP – but it is the clients who will help you succeed in whatever platform you choose.