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Meet the President

A Question & Answer with AIPLA 2016-2017 President Mark L. Whitaker

Please share a bit about your life…growing up, your military career, your family…

Most of my childhood was spent in the Boston, Massachusetts area.  I was one of four boys.  My dad was an ordained 
Baptist minister, and later a professor at Harvard Divinity School.  My mom worked from home and did a wonderful job corralling the five of us.  I received a B.S. from Northeastern University in Boston, and later my J.D. from the Georgetown University Law Center.

Just prior to starting my legal career, I served as a Surface Warfare Officer aboard a United States Navy warship, where I spent many months at sea in the North Atlantic and Mediterranean. Later, I became a member of the Navy Judge Advocate General’s Corps, during which time I prosecuted and defended more than 30 trials. The skills that I gained during my JAG and early commercial litigation experience I still use today in complex patent and trade secret litigation in district courts and proceedings before the U.S. International Trade Commission.

I met my wife Aileen on the first day of U.S. Navy Officer Candidate School (OCS) in February 1983.  We have two children – Sandra and Mark – both of whom have completed post-graduate work in their fields.  Even though both kids live away from home, we are very close and get together often throughout each year.

Please provide a brief overview of your career background.

In March, I joined Morrison & Foerster’s Intellectual Property Litigation Practice Group in Washington, D.C. from Baker Botts, where I led the International Trade Commission practice. My practice is devoted to patent and trade secret litigation and counseling. I also represent clients in fast-track IP litigation before the International Trade Commission under Section 337. I have successfully represented clients in the medical device, electronics, telecommunications, chemical, and software industries in patent disputes and licensing initiatives.

It was a circuitous and enlightening path that led me to where I am, and while not always easy, it has given me a well-rounded background in the law, management, and in interpersonal relationships that have made me a better lawyer and person.

What interested you most about a career in IP law?

During my military tenure, I was engaged in naval engineering in both electrical and mechanical arts.  So, I had a great grounding in and love of technology. Upon entering civilian practice, I handled several commercial matters involving business torts, government contracts bid protests, financial institution disputes, employment discrimination, and others before focusing on IP matters exclusively.  That exposure to myriad legal issues allows me to think more broadly about my approach to IP cases that often involve more than merely comparing patent claims to an alleged infringing product. That I get deeply immersed in fascinating technology is a bonus; I’m never bored. 

Did a special individual influence or mentor you in your career?

There are so many people who have graciously taken time to mentor me and facilitate my career that it is difficult to single one out.  However, I can point to one who perhaps rises above the many.  The late Cecilia Gonzalez was one of the foremost practitioners before the U.S. International Trade Commission.  Cecilia hired me as a counsel at Howrey, and later strongly supported my elevation to partner at the firm.  She taught me the ins and outs of the practice of law, how to maneuver and make my way as an attorney of color within a “big law” law firm, and how to maintain a sense of humility and not take myself too seriously.  Cecilia is missed by many in the profession – none more than me.

What are the most rewarding aspects of your work?

The intellectual exercise of solving seemingly unsolvable problems for a client, whether that means winning a dispositive motion or at trial, or settling a very contentious case so the client can move forward with a competing in the marketplace rather than through litigation.

Describe a typical day…routine tasks that you perform.

A typical day for me begins with reading multiple publications and RSS feeds about the day’s news and the business activities of clients and prospective clients.  I then review various docket navigation tools and peruse patent case filings in district courts and the ITC.  Daily work includes reviewing and revising draft motions/claim construction/discovery responses/correspondence, meeting with fact witnesses and expert witnesses, preparing/reviewing business development presentations with our marketing folks, mentoring/advising associates, and working with AIPLA staff on various issues that arise.

What significant challenges do you face in your work today and what strategy/strategies do you utilize to achieve success?

Patent litigation, by definition, is complex due to the subject matter and management of the litigation itself.  Over the years, I have developed a case management tool that attempts to anticipate every issue that may arise in a case.  The tool allows me to manage each issue and assign responsibility to team attorneys, incorporate interim and final due dates, and aid with tracking relative case fees and costs for budgeting purposes.  I have found that this manner of managing cases allows my teams to more effectively marshal facts/evidence, manage time more efficiently, respond to client questions more rapidly, and to better manage and achieve client expectations. 

If you were not an IP practitioner, what would you be?

Throughout my career, I have always held a keen interest in protecting the constitutional rights of the disadvantaged and minorities in our country.  To that end, my pro bono work has included trying and winning a Title VII employment discrimination class action case on behalf of a group of African-American employees, obtaining a vacation and remand from the Supreme Court in a case involving the improper striking of African-American jurors from the jury pool in a death penalty case, and several appeals involving the rights of military veterans.  I suspect that my work in the law would have included these kinds of cases even if not an IP practitioner.

How have you benefitted from your membership in AIPLA?

I joined AIPLA to broaden my knowledge of IP, meet like-minded legal professionals, and foster opportunities to write and speak on hot topics in the law.  Soon after immersing myself in various committees and their work, leadership opportunities came to me – I never really had to seek them out.  So, simply getting involved and volunteering for projects opened significant doors.

What areas of the association have you engaged…i.e. committee work, meetings, author, advocacy? What have you learned? How have your grown through your experience(s)?

In more than 17 years as an AIPLA member, I have served as chair of several committees, served on the board of directors and the executive committee, and now I serve as the AIPLA President. I would like to see AIPLA become more proactive in identifying important IP issues, framing policy and related objectives, and proposing legislative initiatives and regulatory changes.

I have two key platforms for the year, as well as one additional aspirational goal.  The first key platform is internally focused – working with the Board, Staff, and Committees to seek ways to make our work (operational and strategic) more efficient and focused on achievable objectives and goals (e.g. sustainable fiscal health, cost effectiveness, better communications between Board/Staff/Committee, greater responsiveness to policy inquiries).  

The second platform is externally focused – encourage the Committees to place greater emphasis on AIPLA’s leadership role in the IP community by being a more proactive thought-leader.  Our Committees and Board do a tremendous job responding to external requests for information (e.g. proposed legislation and rulemaking by administrative bodies), which should continue in earnest.  But I would like to see the Association do more out in front by identifying issues in the law, and procedural/administrative/legislative policies to facilitate constructive change to advance IP and ensure that innovation continues to grow.  This educational push can be accomplished through our established platforms of Advocacy, Global Outreach and Membership Services. 

The third goal is aspirational. As I look at the diversity of the membership of AIPLA, I note with great admiration and pride in the advances of women within the Association.  Women are in leadership roles throughout the Association, with a steady pipeline of those behind them to lead one day themselves.  Not that there isn’t more work to do, but they provide an excellent template to follow.  As the second African American in the history of AIPLA to assume the position of President, it is not lost on me that as I look at our great strides with respect to gender diversity, we are lagging with respect to attorneys of color.  AIPLA is certainly not alone in this regard.  The legal profession in general (law firms, corporations, and to a lesser extent government) has not been entirely successful when it comes to sponsoring, mentoring, and engaging underrepresented minorities.  It is my hope that during my tenure our Association and all of its individual members will make best efforts to seek out and encourage attorneys of color to join the Association and become involved in the many committee and leadership opportunities available.

What career advice would you offer a new member, a new IP practitioner, a peer, or potential member prospect?

Don’t be an island.  Find one or two substantive law committees that form the basis of your passion for IP.  Engage in committee by volunteering to be a sub-committee chair or working on a project or resolution being advanced by your committee.  Additionally, you should consider joining a non-substantive committee (e.g., Women in IP Law, Diversity Committee, Education, etc.) to obtain more opportunities for networking and creating better business and mentoring opportunities.

Outside of your career, what are you most passionate about?

I am most passionate about my family who provide a wonderful center for me.  But I also have a great passion for the ocean and its environs.  For many years as a youth, I seriously considered applying to attend the Woods Hole Oceanographic Institute to study oceans and climate change.  I now satisfy my passion by sailing, boating, and periodically reading marine science articles.