Top 10 Mistakes Intellectual Property Attorneys Should Avoid
Joshua L. Simmons
Kirkland & Ellis LLP
Joshua Simmons is a well-established and nationally recognized appellate and trial court litigator, who has been lauded as an “exceptional,” “forceful,” and “creative” “brainiac” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR).
Kirkland & Ellis LLP
Leslie Schmidt is a partner in Kirkland’s New York office. Her practice focuses on intellectual property litigation, and she has also been active in pro bono matters.
On-Demand:March 30, 2023
$95.001 hour CLE
Please Select Class Format
Receive access to recorded class and earn self-study credit. Recording is made available 5 business days after live broadcast.
This presentation will consider different pitfalls that arise during IP litigation and how to avoid them. What seem like small decisions at the time can have an enormous impact on the success of your case. For example, one mistake in the chain of title for an IP asset can impact your client’s standing to sue and potential for damages. Likewise, raising claim construction disputes that have a low likelihood of success can diminish the credibility of “must win” claim construction arguments. It also is important to recognize that trying to be a “jack of all IP trades” can deprive you and your client of critical advice and input from a subject-matter “master.” And, when it comes to trial, IP lawyers must be cognizant of effective ways to balance scoring thematic points with introducing evidence and argument you need for appeal. Joshua Simmons and Leslie Schmidt have litigated cases from the district courts to the Supreme Court, and will share their practical tips for how to avoid these and other common mistakes.
This course is co-sponsored with myLawCLE.
Key topics to be discussed:
Preparing the IP chain of title for litigation
Claim construction pitfalls
Approaching discovery and trial with an eye toward future appeals
Date: June 27, 2023
Joshua L. Simmons | Kirkland & Ellis LLP
Joshua Simmons is a well-established and nationally recognized appellate and trial court litigator, who has been lauded as an “exceptional,” “forceful,” and “creative” “brainiac” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR). This “Intellectual Property Superhero” (CLS) has been named one of the “500 leading litigators in America” (Lawdragon) for his wins in copyright, patent, right of publicity, trademark, trade secret, and unfair competition litigations, as well as contract, licensing, and domain name disputes. As a “Power Lawyer” (THR) and “Trailblazer” (NLJ), he is sought after for complex cases and those of first impression; IP counseling; strategic portfolio management; as well as regulatory and legislative policy advice. His eye-catching litigations involve a range of media (film, news, publishing, social media, sports, television, theatre, and video games) and technologies (artificial intelligence, computer software and services, circuitry and semiconductors, Internet-based systems, medical devices, and telecommunications).
Josh routinely is recognized for his high-profile appellate, IP, media, entertainment, and technology representations, including by Chambers & Partners, World Trademark Review, Legal 500, and Benchmark Litigation. Numerous publications also have honored Josh for his ground-breaking achievements, including The Hollywood Reporter, National Law Journal, Columbia Law News, American Lawyer, Managing Intellectual Property, and Law360.
In addition to his full-time litigation practice, Josh hosts PLI’s IP Discussions with Joshua Simmons, and frequently speaks and authors numerous articles on emerging IP trends. He is an active member of the IP bar, serving as an officer and Council member for the ABA Intellectual Property Law Section; chairing various copyright, trademark, Internet, social media, and software committees and task forces; and liaising to organizations on copyright and right of publicity issues. And he is an advisor to Columbia Law School’s Kernochan Center.
Leslie Schmidt | Kirkland & Ellis LLP
Leslie Schmidt is a partner in Kirkland’s New York office. Her practice focuses on intellectual property litigation, and she has also been active in pro bono matters. Leslie has represented clients in patent infringement litigations involving a variety of technologies including pharmaceuticals, medical devices, software, batteries, and marine-seismic technology. Leslie also has experience with appellate litigation before the Federal Circuit and has argued before the Seventh Circuit. Leslie is a consistent recipient of Kirkland’s Pro Bono Service Award, and currently supervises the veterans benefits program in the New York office.
Leslie was named to “40 & Under Hot List” by Benchmark Litigation in 2020–2022. She was recognized as a 2019 “Rising Star” in Intellectual Property Litigation by Law360. She was also included in Law360’s “Legal Lions” feature in February 2020 for her work for Motorola Solutions.
I. Preparing the IP chain of title for litigation | 2:00pm – 2:20pm
II. Claim construction pitfalls | 2:20pm – 2:40pm
III. Approaching discovery and trial with an eye toward future appeals | 2:40pm – 3:00pm