As an intellectual property boutique, it’s not unusual for Lerner, David, Littenberg, Krumholz & Mentlik to handle numerous complex and high-stakes IP disputes over the course of a year, and that remained true in 2017. Aside from successfully representing New York University in a research and license agreement dispute with Pfizer, the firm’s litigators successfully represented clients on both sides of patent-review proceedings: Lerner David prevailed at the Federal Circuit defending generic drugmaker Dr. Reddy’s Laboratories, and at the trial court level won invalidation on behalf of Amneal, another generic drugmaker.
** The responses were provided by co-managing partner William Mentlik, and litigation partners Bruce Sales, Tedd Van Buskirk, Roy Wepner, Greg Gewirtz and Stephen Roth. **
What were some of the department’s most satisfying successes of 2017, and why?
Sales: IP boutiques like ours face even more competition from full-service firms in the trademark arena than with patent litigation. So it was particularly gratifying that we notched two preliminary injunction victories in trademark cases in 2017: one on behalf of Bed Bath & Beyond and one on behalf of Rutgers.
Van Buskirk: In the few years since Congress created Inter Partes reviews at the Patent Office as a vehicle to challenge the validity of patents, IPRs have become an enormously important feature of the IP litigation landscape in general, and our practice in particular. So we were especially pleased that we succeeded in invalidating a key patent related to the drug OXYCONTIN on three separate grounds in two IPRs. And another of our victories was the successful defense on appeal to the Federal Circuit of a prior victory in two separate IPR proceedings.
Wepner: For a litigation team that has practiced almost exclusively in federal courts for decades, it was hugely satisfying for us to win an appeal on behalf of NYU at the New York Appellate Division, First Department, in a suit alleging breach of a license agreement relating to cancer treatment technology.
Being a Litigation Department of the Year means more than providing good counsel. How does your group go a step further for clients?
Mentlik: A large percentage of IP litigation takes place between direct competitors, so it can get surprisingly heated. Some clients take such disputes personally, which can lead to escalating rhetoric at best and unnecessary sideshows at worst. We consider it part of our job to help our clients rise above the noise and keep a laser-like focus on winning the case on the merits.
In an era of increasing law practice portability, what does it mean to be an effective litigator in New Jersey?
Sales: As we observe IP groups moving from one general practice firm to another, we are thankful that our firm has shown incredible stability over its five decades. Our only U.S. office is in Westfield, New Jersey. So we know the strengths of our colleagues because we have been working together for such a long time. When a second set of eyes would benefit an analysis, I never have to go further than across a hallway or down one flight of stairs.
Is it true that clients now more than ever wish to avoid litigation, and if so, how do law firms manage the business of operating a litigation department in the new marketplace?
Gewirtz: Our clients wish to avoid litigation as much as they ever did. And when they can’t avoid litigation, they want the best possible service at the lowest possible price. If there is a way for the client to achieve its objectives without litigation, we will always explore and encourage a business solution. But when litigation can’t be avoided, we work closely with our clients to manage the risks and expenses without compromising on what it takes to win.
Litigators are extraordinarily busy people. What does the firm do to ensure that they remain engaged with pro bono work, their communities and their families?
Roth: Of course, litigators are busy people. But so are most of us, and we all need time to refresh and renew outside of the office. At Lerner David, we encourage our attorneys to not only rest, but to give back. For example, our firm helped found one of the first intellectual property Inns of Court in the country and has fielded directors to serve for over half of that Inn’s tenure. Our attorneys volunteer in pro bono activities ranging from helping makers and artists to sitting on the boards of places of worship. The firm is especially warm and welcoming to families, with many a deposition having been interrupted by trick-or-treating children at our yearly open-house Halloween. And whether during a lull in trial, or just taking breaks from the hectic life of a litigator, our attorneys pursue active hobbies ranging from furniture making and fly fishing to playing in a rock band or craft brewing.
Technology and other factors have changed work capabilities and habits. How do you offer flexibility while also effectively managing attorneys and others professionals?
Mentlik: Old habits die hard. For some litigators in my generation, the fastest route to a legal brief is to dictate it for transcription by our secretarial staff. Our younger colleagues wouldn’t dream of working that way. They can do the job at home with not a single piece of paper being touched, while others need to be ensconced in an office with books and files. But we all realize that there is no single correct way to reach a destination, so long as we get there with top-notch work product. Within the last year, one of our attorneys moved to Israel. But he telecommutes, and that is working out just fine. We’re not big on making rules for their own sake. Our one rule turns out to be three: do the job; do it on time and within budget; and—for heaven’s sake—do it well.