State of Minnesota
    Minnesota State Courts
Federal Courts
    United States Supreme Court
    Eighth Circuit Court of Appeals
    Seventh Circuit Court of Appeals
    Federal Circuit Court of Appeals
    Minnesota Federal Courts
    Colorado Federal Courts

Professional Affiliations

Hennepin County Bar Association
   Board of Directors, 2018-Present
Federal Bar Association
Federal Circuit Bar Association
   Amicus Committee Co-Vice Chair
Minnesota Women Lawyers
MWL Master Lawyer
The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court
    Co-Founder and Secretary

Awards & Recognition

Selected by Intellectual Asset Management (IAM) to the Patent 1000: The World’s Leading Patent Practitioners, 2018, 2019 (“Rachel Hughey, for example, has been diligently boosting the set’s profile in the appellate space – an endeavour in which she has succeeded, judging by the increasing volume of appeal instructions arising out of cases handled elsewhere. The former Court of Appeals for the Federal Circuit clerk is a rising star with all the ingredients for effective appellate advocacy at her fingertips.”).

Selected by Minnesota Lawyer as one of its Attorneys of the Year - Groups (2017).

Selected as a member of The Fellows of the American Bar Foundation (2017). The Fellows is a global honorary society of attorneys who have demonstrated outstanding leadership in the profession and service to society. Membership is limited to one percent of attorneys admitted to practice in the United States and a limited number of attorneys in international jurisdictions.

Recognized by The Best Lawyers in America© (2017-2019)

Recognized by Minnesota Monthly magazine in its 2017 list of Best Lawyers (2017).

Selected by Intellectual Asset Management (IAM) to the Patent 1000: The World’s Leading Patent Practitioners, 2017 (“newly featured pharmaceuticals ace and ‘excellent appellate lawyer’ Rachel Hughey is a dexterous trial lawyer who delivers winning arguments with great lucidity”).

Selected by Minneapolis St. Paul Business Journal as a 40 Under 40 honoree (2016).

Selected by Mpls.St.Paul Magazine for inclusion in The Top Women Attorneys in Minnesota (2012-2017).

Selected by Mpls.St.Paul Magazine for inclusion in Minnesota Rising Stars (2009-2018). Fewer than 2.5 percent of attorneys in any state are selected for this honor.

Selected by Minnesota Lawyer as one of twenty-five Up & Coming Attorneys (2008). This honor is given to attorneys in practice ten years or less who are accomplished in the areas of leadership, professional accomplishment, and service to the legal community.

Publications & Speaking

Patent Litigation Update: Venue, Appeals, Estoppel Issues, and Managing Co-Pending District Court/IPR proceedings, AIPLA ECLC Summit 2019, Minneapolis, MN (forthcoming June 11, 2019) (with David Swenson)

A Conversation with the Federal Circuit, FCBA Bench & Bar in Dialogue, Minneapolis, MN (April 2, 2019) (with Derek Vandenburgh, featuring Judge Prost, Judge Reyna, and Judge Stoll)

Venue Decisions and Trends Post-TC Heartland, MN CLE, Minneapolis, MN (March 28, 2019) (with Ian McFarland)

Some Judges Attempt to Remove Barriers to Junior Attorney Participation, 66 The Federal Lawyer 5 (March/April 2019)

Mastering the Art of Writing Persuasive Appellate Briefs: Practical Tips from Past Appellate Law Clerks, Clear Law Institute (February 28, 2019) (with Benjamin Cooper)

Venue In Patent Cases In The Year Since The Supreme Court’s Tc Heartland Decision, 65 The Federal Lawyer 21 (December 2018) (Co- Authored with Zach Kachmer)

Hot Topics, Trends, & Updates: 3-Minute Case Summaries: What Every In-House Lawyer Needs to Know, Nashville, TN (November 8, 2018)

Venue Decisions and Trends Post-TC Heartland, 2018 Midwest IP Institute, Minneapolis, MN (September 27, 2018)

Mastering the Art of Writing Persuasive Appellate Briefs: Practical Tips from Past Appellate Law Clerks, Strafford Live CLE Webinar (September 13, 2018) (with Benjamin Cooper)

Exceptions to and Waiver of Privilege, Attorney-Client Privilege: What Every Attorney Needs to Know, Minneapolis, MN (with Rachhana T. Srey, Reena I. Desai, and Karen L. Beckman) (August 30, 2018)

3-Minute Case Summaries: What Every Patent Lawyer Needs to Know, Hot Topics, Trends, & Updates: Cybersecurity, Patent Litigation Decisions, and the Implications, Cleveland, OH (July 11, 2018)

District Court Practice: Developments and Challenges, 2018 Federal Circuit Bar Association Bench & Bar Conference, San Diego, CA (June 22, 2018) (with Sonal N. Mehta, Jim Sherwood, Victoria Maroulis, and Vaishali Udupa)

Oil States and the Future of Inter Partes Reviews, Mitchell Hamline Patent Law Symposium, St. Paul, MN (April 6, 2018) (with James Smith and Cyrus Morton)

3-Minute Case Summaries: What Every Patent Lawyer Needs to Know, Oil States, WesternGeco, and More CLE, Minneapolis, MN (February 15, 2018) (with Rachel Zimmerman Scobie)

Latest Update on USPTO Inter Partes Review Proceedings, The Federal Lawyer 48 (January/February 2018)

What In-House Counsel Should Know about PTO Post-Grant Proceedings, 2017 Midwest IP Institute, Minneapolis, MN (September 28, 2017) (with Brian Jarrells) PowerPoint

Navigating Post-Grant Proceedings: What Two Years Of Federal Circuit Decisions and the Supreme Court’s Cuozzo Decision Tell Us About Post-Grant Proceedings Before The PTAB, 64 The Federal Lawyer 1 (January 2017) (with Joseph W. Dubis) PDF of Article

New PTAB Rules, New Key Cases & Emerging Trends – Strategic Implications for PTAB Proceedings and Appeals, 2016 Midwest IP Institute, Minneapolis, MN (September 22-23, 2016) (with Andrew Lagatta) PowerPoint | Article

Mastering the Art of Writing Persuasive Appellate Briefs: Practical Tips from Past Appellate Law Clerks, Strafford Live CLE Webinar (September 7, 2016)

Diversity Matters, The Federal Lawyer 4 (May 2016)

Patent Infringement Investigations, I Feel Conflicted: Managing Potential Conflicts Issues Surrounding Noninfringement Investigations, Minnesota CLE, Minneapolis, MN (April 26, 2016)

Exceptions To Prosecution History Estoppel Are Hardly A Dime A Dozen: An Analysis Of The Federal Circuit’s Application Of The Narrow Exceptions To Prosecution History Estoppel Twelve Years After Festo, 7 Cybaris Intellectual Property Law Rev. (William Mitchell College of Law) (2016) (with Linhda Nguyen)

Tips for PTAB Appeals Before the Federal Circuit, Atlanta, GA (February 22, 2016)

A Checklist Approach to Successful Motion Practice: Motions to Compel: 10 Tips & Techniques for Getting What You Need Without Annoying the Judge, Minnesota CLE, Minneapolis, MN (December 9, 2015) (with Nicole Moen) PowerPoint | Article

IP CLE: Practice tips before the CAFC, Minnesota CLE, Minneapolis, MN (November 10, 2015) (with the Honorable Jimmie V. Reyna, the Honorable Richard Linn, and Kevin Rhodes)

Computer & Technology Law Institute: ePlus v. Lawson Up Close: Software Patent Litigation, a Tale of Two Worlds, and Lessons for Handling Your Next “Tech IP” Litigation, Minnesota CLE, Minneapolis, MN (October 29, 2015) (with Bruce McPheeters)

Panelist, Sharing of Judicial Experiences: Intellectual Property Rights, United States District Court for the District of Minnesota, Minneapolis, MN (August 10, 2015)

How to Get to Federal Circuit Rule 36, IP Law360 and Appellate Law360 (July 29, 2015)

Intellectual Property Series: Effective Appellate Advocacy before the Federal Circuit, Minnesota CLE, Minneapolis, MN (March 6, 2015) (with Tim Grimsrud)

Inter Partes Review CLE, Minneapolis, MN (October 1, 2014)

Mentoring and Sponsorship: The Difference Between Success and Failure, The Federal Lawyer 4 (July 2014)

3 Tips For Any Fed. Circ. Appeal, Law360 (August 23, 2013)

The 75 Keys to Winning Your Next Patent Case, Minneapolis, MN (July 18, 2013)

Federal Circuit Oral Argument Post-Panel Discussion, U.S. Federal District Courthouse, Denver CO (October 2, 2012)

Patent Damages: Are There No More "Rules of Thumb"?, 2012 Midwest IP Institute, Minneapolis, MN (September 20, 2012)

Age-Old ABCs of Writing Applied to the Law, The Federal Lawyer 59 (June 2012)

The Ultimate Guide to Your Next Federal Circuit Brief, Patent Enforcement and Defense 2012, Minneapolis, MN (May 11, 2012)

Patent Damages: Are There No More 'Rules of Thumb'?, Patent Enforcement and Defense 2012, Minneapolis, MN (May 11, 2012)

Annual Review of Developments in Business and Corporate Litigation, Chapter 20.13 Federal Circuit Decisions, ABA Business Law Section (2011) (with William Burgess)

Assessing Reasonable Royalty Damages for Patent Infringement in a Changing Legal Landscape, The IP Legal Browser (Winter 2011)

Effective Appellate Advocacy Before The Federal Circuit: A Former Law Clerk's Perspective, 11 J. of Appellate Prac. and Pro. 401 (2010)

Evaluating Reasonable Royalties After ResQNet, IP Law360 (October 14, 2010) (with Phil Green)

Supersize Me: Damages Claims in Patent Litigation, Patent Enforcement and Defense 2010 CLE, Minneapolis, MN (April 28, 2010)

Annual Review of Developments in Business and Corporate Litigation, ABA Business Law Section (2010)

Avoiding Patent Claim Construction Errors After Phillips, The Federal Lawyer 50 (November 2009) (with Anthony R. Zeuli)

The Three Year Anniversary of eBay v. MercExchange: A Statistical Analysis of Permanent Injunctions, IP Today 25 (November 2009) (with Ernest Grumbles and Susan Perera)

Abbott Laboratories v. Sandoz, Inc.: The Federal Circuit Finally Aligns Its Precedent On Product-By-Process Claims, IP Today 1 (November 2009)

Exergen Corp. v. Wal-Mart Stores, Inc.: Heightened Pleading Standard for Inequitable Conduct, IP Law360 (September 2009)

First–Sale Doctrine – Absolute or Conditional Under Quanta v. LG Electronics?, American Intellectual Property Law Association, Miami, FL (January 28, 2009)

A Review of the Supreme Court's Decision in Quanta v LG Electronics, Minnesota Intellectual Property Law Association, Minneapolis, MN (June 26, 2008)

First–sale doctrine: absolute or conditional?, Minn. Lawyer In–House Counsel Q. (June 12, 2008)

Avoiding Claim Construction Errors by Determining the Ordinary and Customary Meaning, Advanced Patent Litigation Seminar, American Intellectual Property Law Association, New York City, NY (June 24, 2005)

R.F. Delaware, Inc. v. Pacific Keystone Technologies, Inc.: The Federal Circuit Has Finally Spoken on Collateral Estoppel of Claim Interpretation, 20 Santa Clara Computer and High Tech. L. J. 293 (2004)

The District of Columbia's Decision in Pro–Football v. Harjo and Its Effect on Trademark Protection of Other Marks, 14 Fordham Intellectual Prop., Media & Entertainment L. J. 327 (2004)

Avoiding Patent Claim Construction Errors: Determining the Ordinary and Customary Meaning Before Reading the Written Description, The Federal Lawyer 29 (June 2004) (with Tony Zeuli)

Implied Licenses by Legal Estoppel, 14 Albany Law J. Sci. & Tech. 53 (2003)

Trademark Protection for Native American Team Names and Mascots and the Impact of the Harjo Decision, XVI Sovereignty Symposium 81 (2003)

Collateral Estoppel of Claim Interpretation After Markman, 86 Minn. L. Rev. 1581 (2002)

Teaching

University of Minnesota Law School, Legal Writing Instructor, 2003-2005, 2006-2007

University of Minnesota Law School, Intellectual Property Moot Court Instructor, 2003-2005, 2006-2007

University of St. Thomas, Communications Law Instructor, 2004-2005

Board Service

ACLU-MN, Board Member, 2017-present

Hennepin County Bar Association, Board Member, 2018-present

Minnesota Law Review Alumni Advisory Board, Board Member, 2010-2015; President, 2011-2015

The Federal Bar Association, Editorial Board for The Federal Lawyer, 2011-present

Federal Circuit Bar Association, Amicus Committee, Vice-Chair, 2016-present

The American Intellectual Property Law Association, Editorial Board for the AIPLA Quarterly Journal, 2011-2014

University of Minnesota Law School Board of Advisors, Board Member, 2014-present; Executive Committee, 2017-Present

Volunteer Lawyers Network, Board Member, 2013-present, Executive Committee, 2017-present

YouthCARE, Alumni Advisory Board Member, 2013-present

YouthCARE, Board Member, 2010-2012

Judicial Clerkships

Law clerk for the Honorable Alvin A. Schall of the United States Court of Appeals for the Federal Circuit

Extern for the Honorable James M. Rosenbaum of the United States District Court for the District of Minnesota

Quoted

Choosing a Complete Life, 2018 Women In Law, Minnesota Lawyer, November 2018

Times are a Changin’: Patent Law in U.S. is Undergoing a Massive Revision, Den. Bus. J. at 88, April 7, 2017

U Law School Launches Patent Masters, Minnesota Lawyer, April 4, 2014

ITC Claims Authority To Fast-Track Patent Cases, Law360, August 7, 2013

Fed. Circ. Tosses $31.6M Patent Judgment For Metso Minerals, Law360, May 16, 2013

As a litigator, Rachel uses her quick thinking skills in the courtroom to process and respond rapidly to events happening in real time. She’s also spent years honing her writing, focusing on clarity and the craft of distilling complex legal issues into articulate, persuasive briefs. She cares deeply about her clients and makes it her goal to understand what’s important to them so she can pursue the right strategy to meet their goals.

Rachel practices intellectual property law with an emphasis on patent litigation and appellate level disputes. Rachel is a key team member involved in all elements of trial, including formulating strategy, preparing briefs and pleadings, handling discovery matters, engaging in oral arguments, managing trial issues, and examining witnesses at trial. Rachel has a technical background in Chemical Engineering, and has experience in a wide variety of fields, including chemical technologies, medical devices, pharmaceuticals, mechanical devices, and software.

As a co-chair of the firm’s appellate practice, Rachel is one of the firm’s appellate specialists. She is a former Federal Circuit law clerk, has handled dozens of appeals, and has argued before the Federal Circuit both as the appellant and the appellee. In addition, Rachel leverages her appellate experience by consulting on appellate cases throughout the firm, for other firms, and for her clients. She is often in charge of strategic planning at the trial level for a possible appeal. As a thought leader, Rachel writes extensively on current legal issues and is the author of a law review article on effective appellate advocacy before the Federal Circuit. This thoughtful and informative article has been re-published in a prestigious legal treatise on appellate advocacy and is assigned reading in law school classes on appellate advocacy.

Rachel is also an active pro bono volunteer. As a volunteer attorney for the Advocates for Human Rights, Rachel represents asylum seekers in their appeals to Federal Circuit Courts. In her pro bono representation, she successfully obtained a remand of her client’s immigration case from the Eighth Circuit Court of Appeals and obtained his legal status in the United States. In another matter, her team obtained asylum for her client before the Immigration Judge, and they were honored as 2017 Attorneys of the Year by Minnesota Lawyer. Rachel also volunteers as a pro bono attorney through Volunteer Lawyer's Network and Children's Law Center.

In her spare time, Rachel serves on a variety of nonprofit boards. She also runs, swims, bikes, rows, and practices yoga.

Representative Cases

Representative Appellate Matters

Novartis v. Breckenridge, No. 17-2173 (Fed. Cir.) - lead counsel for Appellee in patent case

Ahmed v. Ahmed, No. 16-142 (6th Cir.) – counsel for Appellant in Hague Convention case

Arrow Electronics v. Arrow Partnership, No. 17-1062 (10th Cir.) – counsel for Appellee in trademark case

TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341 (Sup. Ct.) – lead counsel for amici curiae Professors of Patent Law and Civil Procedure

Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (Sup. Ct.) – lead counsel for amicus curiae Plantronics, Inc.

Metalcraft of Mayville, Inc. v. The Toro Company, Nos. 16-2433, 16-2514 (Fed. Cir.) – lead counsel for Appellant in patent case

Rembrandt Gaming Techs. v. Boyd Gaming Corp., Nos. 16-2002, 16-2249 (Fed. Cir.) – counsel for Appellant in patent case

Millennium Pharmaceuticals v. Sandoz Inc., Nos. 16-1010, 15-2066 (Fed. Cir.) – counsel for Appellee in Hatch-Waxman case

International Controls and Measurements Corp. v. Honeywell International Inc., No. 2015-1724 (Fed. Cir.) – counsel for Appellant in PTO appeal

August Tech. Corp. v. Camtek, Ltd., Nos. 15-1434 (Fed. Cir.) – counsel for Appellee in patent case

Rudolph Technologies, Inc. v. Camtek, Ltd., No. 15-1418 (Fed. Cir.) – counsel for Appellant in PTO appeal; Court reversed the Board's rejection of claims as obvious

Stephenson v. Game Show Network, LLC, No. 15-1359 (Fed. Cir.) – counsel for Appellant in PTO appeal

Radio Systems Corporation v. Lalor, No. 15-1311 (Fed. Cir.) – counsel for Appellee in appeal to the Federal Circuit;

Integrated Technology Corp. v. Rudolph Technologies, Inc., No. 14-1820 (Fed. Cir.) – counsel for Appellant in appeal to the Federal Circuit

Health Grades, Inc. v. MDx Medical, Inc., No. 15-1230 (Fed. Cir.) – lead counsel for Appellee in patent case before Federal Circuit

Wright Manufacturing, Inc. v. The Toro Company, No. 14-1534 (Fed. Cir.) – lead counsel for Appellee in PTO appeal to Federal Circuit

Ferring B.V. v. Watson Labs., Inc., No. 14-1416 (Fed. Cir.) – counsel for Appellant in Hatch-Waxman case

Phil-Insul Corp. v. Reward Wall Systems, Inc., No. 14-1078 (Fed. Cir.) – lead counsel for Appellee in patent case before Federal Circuit

Lamina Packaging Innovations v. ITC, No. 14-1013 (Fed. Cir.) – counsel for Intervener in ITC appeal

Sieben v. United States, No. 13-5091 (Fed. Cir.) – lead counsel for Appellee

August Tech. Corp. v. Camtek, Ltd., Nos. 12-1681, 13-1023 (Fed. Cir.) – lead counsel for Appellee in patent case

Integrated Tech. Corp. v. Rudolph Techs., Inc., Nos. 12-1593, 12-1618 (Fed. Cir.) – counsel for Appellant in patent case

W.L. Gore & Associates, Inc., v. Medtronic, Inc., Medtronic USA, Inc., and Medtronic Vascular, Inc., No. 12-1538 (Fed. Cir.) – counsel for Appellee in patent case

Reese v. Verizon Cal., Inc., No. 12-1048 (Fed. Cir.) – lead counsel for Appellee in patent case

Metso Minerals, Inc. v. Powerscreen Int’l Distrib., Nos. 11-1572, 12-1168, 12-1169 (Fed. Cir.) – counsel for Appellant in patent case

AstraZeneca Pharms. LP v. Apotex Corp., Nos. 11-1182, 11-1183, 11-1184, 11-1185, 11-1186, 11-1187, 11-1188, 11-1189, 11-1190 (Fed. Cir.) – counsel for Appellant in patent case

August Tech. Corp. v. Camtek, Ltd., No. 10-1458 (Fed. Cir.) – counsel for Appellee in patent case

Bowling v. Hasbro, Inc., No. 09-1039 (Fed. Cir.) – counsel for Appellee in patent case

Khan v. Mukasey, No. 07-3908 (8th Cir.) – lead counsel for Appellee in immigration case

Fargo Elecs. Inc. v. Iris, Ltd., No. 07-1523 (Fed. Cir.) – counsel for Appellee

Manchak v. U.S. Ecology, Inc., No. 04-1341 (Fed. Cir.) – counsel for Appellee in patent case before Federal Circuit

Phillips v. AWH Corp., No. 03-1269 (Fed. Cir.) – counsel for Amicus Association of Patent Law Firms in patent case before Federal Circuit

Representative Trial Matters

Carlson Pet Products, Inc. v. North States Indus., Inc., No. 17-2529 (D. Minn.) - co-lead counsel for defendant in patent case

Rudolph Technologes, Inc. v. Camtek Ltd., No. 15-1246 (D. Minn.) - counsel for plaintiff in patent case

Camtek Ltd. v. Rudolph Technologies, Inc., No. 17-11127 (D. Mass.) - counsel for defendant in patent case

Rudolph Technologies, Inc. v. Camtek, Ltd., No. 11-3707 (D. Minn.) – counsel for plaintiff in patent case

Ferring B.V. v. Actavis, Inc. et al, No. 15-4222 (D.N.J.) – counsel for defendant in Hatch-Waxman case; court dismissed 271(e) claim with prejudice

Recro Gainesville LLC v. Actavis Laboratories FL Inc., No. 14-1118 (D. Del.) – counsel for defendant in Hatch-Waxman case

Otsuka v. Actavis Elizabeth, No. 14-7016 (D.N.J.) – counsel for defendant in Hatch-Waxman case

Supernus Pharmaceuticals, Inc. v. Actavis, Inc. et al, No. 14-6102 (D.N.J.) – counsel for defendant in Hatch-Waxman case

Novartis Pharmaceuticals v. Breckenridge Pharmaceutical, No. 14-1043 (D. Del.) – counsel for defendant in Hatch-Waxman case

Daravita Limited v. Actavis Laboratories, FL Inc., No. 14-1118 (D. Del.) – counsel for defendant in Hatch-Waxman case

Horizon Pharma v. Actavis Laboratories, FL Inc., No. 13-5124 (D.N.J.) – counsel for defendant in Hatch-Waxman case

Ferring B.V. v. Actavis, Inc. et al, No. 3:13-477 (D. Nev.) – counsel for defendant in Hatch-Waxman case

G.D. Searle LLC et al v. Lupin Pharmaceuticals, Inc. et al, No. 2:13-121 (E.D. Va.) – counsel for defendant in Hatch-Waxman case

Ferring B.V. v. Watson Labs., Inc., Nos. 3:11-481, 3:11-485, 3:11-853, 3:11-854, 2:12-1941 (D. Nev.) – counsel for defendant in Hatch-Waxman case

Lamina Packaging Innovations v. Champagne Louis Roederer, No. 13-CV-00171 (E.D. Tex.) – counsel for defendant in patent case

Lamina Packaging Innovations v. Champagne Louis Roederer, No. 337-TA-874 (ITC) –counsel for respondant in patent case

W.L. Gore & Assocs. v. Medtronic, Inc., No. 2:10-441 (E.D. Va.) – counsel for defendant in patent case

August Tech. Corp. v. Camtek, Ltd., No. 05-1396 (D. Minn.) – counsel for plantiff in patent case

AmTab Mfg. Corp. v. SICO Inc., No. 11 C 2692 (N.D. Ill.) – counsel for defendant in patent case

Integrated Tech. Corp. v. Rudolph Techs., Inc., No. 06-2182 (D. Ariz.) – counsel for defendant in patent case

ePlus Inc. v. Lawson Software, Inc., No. 3:09-620 (E.D. Va.) – counsel for defendant in patent case

TriStar Metals Inc. v. Groomers Best, No. 4:10-508-Y (N.D. Tex.) – lead counsel for defendant in patent case

Kelora Sys., LLC v. Target Corp., No. C 11-1548 (N.D. Cal.) – counsel for defendant in patent case

Khan v. D.O.J. (B.I.A.) – Counsel for petitioner in Immigration case

Larson v. AluminArt, No. 4:2003-04244 (D.S.D.) – counsel for plaintiff in patent case; case settled

Anagram Int’l, Inc. v. Mayflower Distrib. Co., No. 07-1142 (D. Minn.) – counsel for defendant in patent case

MEDIA CENTER

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Events

11/8/18

Hot Topics, Trends, & Updates

Join ACC Tennessee and Merchant & Gould for an informative panel presentation! Merchant & Gould attorneys from across the country are converging on Nashville to present 3-Minute Case Summaries: What Every In-House Lawyer Needs to Know, with a ...