The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Susan Y. Tull, Partner — Patent Litigation, and Shawn S. Chang, Associate — Electrical Practice Group
Susan Tull is a partner in Finnegan’s Washington, DC, office. With years of particular focus on patent litigation, Susan Tull has been involved in all phases and forums of litigation. Her patent litigation, appeals, and post-grant proceedings practices focus on technologies related to consumer products, medical devices, automotive, and other mechanical and electrical systems. Susan represents clients before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit. Susan has actively participated in several trials, where she has examined witnesses and has managed every phase of patent litigation.
Shawn S. Chang focuses his practice on district court patent litigation, post-grant proceedings at the U.S. Patent and Trademark Office, and strategic patent counseling. He also advises clients on their U.S. and international patent portfolios, provides opinions of counsel, assists in licensing negotiations, and advises clients on IP business strategies, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms. He has represented clients in all aspects of electrical and computer technologies, including communications systems, wireless communications, data and signal processing, optical systems, computer and network architecture, semiconductor devices, unmanned aerial systems, and mobile devices.
Describe your practice area and what it entails.
Susan: My practice focuses on guiding my clients to the best possible resolution when involved in a patent litigation, from forum selection, to case and settlement strategy, and through trial and appeal. I manage all aspects of litigation, including pre-suit diligence, discovery, motions practice, trial, and appeals.
Shawn: My practice primarily focuses on assisting our clients in patent litigation in U.S. federal district courts and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). I also maintain a robust transactional practice, including evaluating client’s technologies and advising on IP strategies, preparing and prosecuting U.S. and foreign patent applications, and assisting in licensing negotiations.
What types of clients do you represent?
Susan: I represent the full spectrum of clients, from small startup companies to large established industry players and multinational organizations.
Shawn: I represent a range of clients, including small start-up companies, large U.S. corporations, and multinational technology companies. These companies innovate in a wide range of industries, including in consumer products, electronic devices and components, electric and computer technology, artificial intelligence, nanotechnology, unmanned aerial systems, and financial services.
What types of cases/deals do you work on?
Susan: I work on contentious proceedings, predominantly on patents or trade secrets in the mechanical, electrical, and computer science fields. Often, this work includes pre-suit client counseling followed by a district court or ITC litigation if early resolution cannot be reached. My cases often involve co-pending challenges to the validity of the patents-in-suit in post-grant proceedings at the Patent Office. I also handle the appeals of those cases.
Shawn: My practice primarily consists of contentious disputes involving patents. Typically, these disputes involve district court patent litigation, but I have also represented clients in contractual disputes involving patent issues.
How did you choose this practice area?
Susan: I knew from the start that I wanted to be a litigator, so the question for me was: In what field did I wish to practice? Patent litigation provided me with the full scope of litigation activities, including discovery, oral argument, and jury trials, while allowing me to pursue my interest in engineering and science.
Shawn: I always had a love for science and technology. While I was studying electrical engineering as an undergraduate, I had the opportunity to explore a broad set of intellectual areas within the field. I knew when I was considering an advanced degree that I wanted to remain in the forefront of science and technology, and patent law is the intersection of technology and law. Thus, I went into law school knowing that I wanted to be an intellectual property attorney.
What is a typical day like and/or what are some common tasks you perform?
Susan: There is no one “typical day” in patent litigation, and that is one of the things I enjoy so much about my work. On any given day, I may be meeting with an inventor to learn about a new technology, taking a deposition, arguing in court, or cross-examining a witness at trial. As a patent litigator, I see the full gamut of litigation activities, from the work put in before filing a complaint through appeal of a verdict, in a broad range of technologies and fields of innovation. I have clambered over fire trucks, played video games, and met the pioneers of life-saving technologies as part of my practice.
Shawn: My days vary greatly. Some days, I may be developing technical and legal positions, drafting a motion or responsive paper, or preparing for a deposition or hearing. Other days, I may be involved with teleconferences with experts and internal meetings to strategize and coordinate with other team members.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Susan: I would highly recommend any class that allows you to experience litigation firsthand, whether trial advocacy, a clinic, or—if offered at your school—patent litigation. Any class that allows you time to argue/advocate on your feet is invaluable.
Shawn: Courses and trainings that provide practical experiences in drafting legal documents, such as litigation documents and contracts, would be useful. Strong persuasive writing skills are also essential.
What do you like best about your practice area?
Susan: Finding the evidence or argument that turns the tide in your client’s favor. For every case, we are striving to get the best possible outcome for a given client, whether that means pursuing a case all the way through trial or reaching a pre-suit resolution. And you dedicate yourself to that goal, looking to get the maximum impact from every deposition, argument, or even discussion with opposing counsel. I love the moments where the work, the strategies, and the constant focus come together so that you can obtain that desired outcome. Sometimes, this takes the form of uncovering previously undisclosed information in a deposition, it may be the day you argue a case-dispositive claim construction to the judge and prevail, or it may be the moment you see a line of questioning resonate with the jury. Any given moment in a litigation can turn the tide of the case, and those are the moments when all of the work pays off.
Shawn: Patent law is a dynamic and evolving area of law. With the passage of the America Invents Act in 2011, significant changes were introduced to the U.S. patent system. New patent office rules and policies have created an entirely new arena of practice. The Supreme Court and Federal Circuit have also reshaped all aspects of patent law, including patent eligibility and patentability, patent infringement, standards of review, damages, and patent defenses. And the development of science and technology is also constantly evolving. To me, these constant changes keep life interesting and force you to continually develop as an attorney.
What is unique about your practice area at your firm?
Susan: I think the people we work with are a unique aspect of patent litigation. We work with and for some of the best scientific and technical minds in the world, whether they are clients or experts. Day to day, I get to work with the inventors of revolutionary technology, while still participating in all aspects of litigation.
Shawn: Finnegan is unique both in its breadth and depth of technical and IP-related legal knowledge. Our professionals have technical experience in almost every industry and technology, and our practice includes all aspects of IP. The firm also values high-quality legal work while fostering a culture of collegiality within the firm and civility and professionalism outside the firm. This ethos results in a firm full of top IP attorneys.
What are some typical tasks that a junior lawyer would perform in this practice area?
Susan: At Finnegan, we encourage our junior associates to jump into a case and continuously volunteer for the next level of responsibility. As an example, if you are asked to work on a document review, do it, but then offer to assist in preparing for a deposition using your knowledge of the documents, second-chair that deposition, and then ask to first-chair the next deposition. We try to get our junior attorneys as much time on their feet as possible, whether that is arguing motions before a court, taking depositions, or examining a witness at trial.
Shawn: The firm provides many fulfilling opportunities for a junior attorney depending on the specific practice area. For litigation, for example, the junior attorney may be assisting with discovery, preparing motions and papers, as well as developing technical and legal positions for the case. For contentious disputes before the PTAB, the junior attorney often has additional opportunities to work with experts and help prepare for depositions and hearings.
What kinds of experience can summer associates gain in this practice area at your firm?
Susan: Our summer associates gain real-world experiences in all aspects of intellectual property and do the same work that our junior associates do. With respect to patent litigation, summer associates will perform legal research, write briefs, attend depositions, and go to trial, in addition to training in all aspects of intellectual property law and attending social outings.
Shawn: Our summer program is designed to expose our summer associates to a range of substantive legal experiences. We understand that most of our summer associates have not selected a specific IP practice area, so we try to assign them real work involving the various areas within IP, including litigation, licensing, prosecution, opinion writing, IP management, and other legal issues. The firm also provides training programs that complement these substantive areas of law.