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LEGAL RESOuRCE GuIDE
Technologically Speaking
Local law firms discuss how and why the bustling tech and
biotech industries are good for their business, but also
the legal challenges and pitfalls that these companies face
By Shannon Rose Hard economic times? Skyrocketing their offices have the technological
gas and food prices? A burst real estate and scientific savvy to shepherd
bubble? No problem—at least for San Diego entrepreneurial and creative companies
legal firms that have their finger on the through the arduous patent process,
tech pulse of the area. as well as patent litigation, is key to
While no one is immune to the their success.
economic downturn, firms such as Knobbe Ned Israelsen, managing partner
Martens Olson & Bear LLP, Morrison of the Knobbe Martens San Diego
Foerster, Townsend and Townsend and office, advises startup companies and
Crew LLP, and DLA Piper are well situated established biotech and pharmaceutical
to soar above the bumpy economic terrain. companies, such as Isis Pharmaceuticals,
By focusing on the high-tech, biotech Orexigen Therapeutics Inc., Genentech
and cleantech companies and institutes and Qualcomm. With more than 200
that dot the San Diego landscape, these lawyers in offices throughout the
legal eagles can fly high. Ensuring that country, Knobbe is one of the largest
59
LEGAL RESOuRCE GuIDE
intellectual property law firms in the Israelsen. “They had a great drug—
united States. KW-3902 for treatment of acute congestive
Israelsen laughs now when he recalls heart failure—but the patent term was
setting up the San Diego office in 1987 limited. We put together new patent
with three lawyers. Today, the office has applications covering the drug and the way
45 intellectual property lawyers—all the company intended to use the drug, and
with tech backgrounds. And 14 of the this was instrumental in getting a good
45 hold doctorates in molecular biology, price from Merck.”
immunology, physics and optics, to name Each new patent has a 20-year term, so
a few. In addition, there are five patent the exclusivity of the drug was extended—
agents in the office, staff members who are meaning that NovaCardia had exclusive
not lawyers but who have taken and passed rights to the drug, and generic drugs at
the patent bar exam. Israelsen himself, a cheaper price could not be issued.
53, graduated magna cum laude with his
bachelor’s in chemistry and biochemistry. Understanding tHe
In the fall, the firm expects to add a dozen compLexities of BiotecH
more attorneys. Townsend has also evolved into one of
Since San Diego is a hub for biotech- the largest and most well-established
nology, it made sense for Knobbe to bring intellectual property law firms in the
attorneys on board who had scientific united States, with more than 215 lawyers
expertise. For example, there are some and offices in San Francisco, Palo Alto,
“ these companies chemists on staff, and Israelson says Walnut Creek, San Diego, Seattle, Denver,
that there will likely be a need for more Washington, D.C., and Tokyo, Japan.
need someone scientific minds at the law firm in the Fifteen attorneys and four technical
near future. advisers work out of the San Diego office,
to coordinate the To be patentable, an invention or which was formed in 2003. Its clients
product needs to be new and what is include the university of California, San
realities of the termed non-obvious—it cannot be an Diego; Biogen Idec; Quidel Corporation;
obvious combination or modification and newcomer San Diego Antibody,
business with the of something that previously existed. It a prefunded company.
takes a minimum of three years to obtain “As San Diego became a hotbed of tech
realities of the a patent, and often that stretches to five, activity, a lot of legal firms opened an office
according to Israelsen. “We need to be able here,” says Special Counsel Ken Jenkins,
patent office.” to formulate a good patent strategy,” he who also has a Ph.D. in chemistry and
says. “These companies need someone to biochemistry. “There was a real growth of
—ned Israelsen, coordinate the realities of business with firms practicing here from 2000 to 2004.
managing partner of Knobbe martens the realities of the patent office.” At Townsend, we try to match the local
San Diego office While he can’t talk about the firm’s work tech growth with the growth in our office.”
with new inventions just yet, Israelsen The firm has attorneys who are
holds up NovaCardia, Inc. as an example nationally recognized experts in areas
of what his firm can accomplish for bold such as engineering, organic chemistry,
thinkers. The company, a privately held molecular biology and immunology. “We
clinical-stage pharmaceutical company are able to help our clients transform their
focused on cardiovascular diseases, sold theoretical possibilities into economic
its lead product candidate to Merck & Co., realties,” says Jenkins, 36.
Inc., one of the world’s leading research- Townsend focuses on three areas:
based pharmaceutical companies, in 2007 patent procurement, patent litigation,
for a whopping $350 million. and trademarks and copyrights. Jenkins
“We worked with NovaCardia from has a wide array of extensive patent
the day they were formed so they would counseling experience in bioscience and
eventually be attractive to buyers,” says chemical technologies, including small
60 bizSanDiego | Autumn 2008
molecule modulators, medical diagnostics, the global maze of requirements and
antibodies, micro and interfering customs,” says Brownlie, 46. “On a smaller
RNA technologies and pharmaceutical scale, we also advise local companies on
formulations, and also represents how to maneuver on a national level.”
generic pharmaceutical companies The firm counts among its clients
in high-stakes litigations. Qualcomm and Invitrogen Corporation,
“The passage of the Hatch-Waxman which counted on DLA Piper to help
Act [in 1984] allowed generic firms to broker its recently announced $6.7 billion
challenge the validity of the weaker merger with the Connecticut-based
patents held by pharmaceutical Applera Corporation. The deal will create
companies,” explains Jenkins. The act one of the world’s largest biotechnology
was instituted by the federal government companies, to be named Applied
to prevent the innovator pharmaceutical Biosystems, with expected sales
companies from holding a monopoly on of $3.5 billion this year.
drugs and therapies and to help keep the One of the most unique offerings “ on a smaller
cost of drugs down by allowing generics of the company is the Venture Pipeline,
to hit the market sooner. a business unit of the firm formed 10 scale, we also
The firm also watches out for its clients’ years ago to help startup companies raise
bottom line by hiring technical advisers, money. Led by business professionals with advise local
who are billed at a lower rate than the experience in technology, startups and
attorneys, to research the technical capital markets, Venture Pipeline advises companies on
landscape. Jenkins doesn’t see the entrepreneurs and inventors on business
economy affecting Townsend’s practice matters and ultimately connects selected how to maneuver
right now, although he maintains that the startups with targeted financing sources.
firm is keeping an eye on how the market “Venture Pipeline makes us unique on a national
might affect the amount of money available as a law firm,” says Brownlie. The group
to their private clients. has linked San Diego firm Veoh, an level.”
internet TV service that gives viewers —Robert Brownlie,
a gLoBaL footprint power to personalize their online viewing managing partner of DLA Piper’s
As one of the highest-grossing law firms experience, with Shelter Capital, resulting San Diego office
in the world, DLA Piper had more than in a $2.25 million investment. The group
$2.1 billion in revenue in 2007. There are also landed two syndicate partners,
31 corporate attorneys and 43 intellectual Alloy Ventures and Innocal Venture
property attorneys in the combined Golden Capital, for Carlsbad company SynergEyes,
Triangle and downtown offices. which develops, manufactures and sells
Robert Brownlie, the managing contact lenses.
partner of DLA Piper’s San Diego offices
and co-chair of the Securities Litigation new indUstry strategies
Group, maintains that DLA Piper’s success Morrison Foerster’s San Diego office
is based on its global footprint, its ability to boasts 70 lawyers and 15 patent attorneys.
advise clients on corporate governance and Its Cleantech Group, formed a year ago,
its intellectual property focus. A member integrates practitioners across the
of the firm since 1995, Brownlie says that firm to offer broad-based services to
all businesses, including those in San Diego, cleantech clients.
are competing in an increasingly global According to Jay de Groot, partner at
market. With more than 3,700 lawyers in Morrison Foerster and a member of the
25 countries, DLA Piper is uniquely poised executive committee of the Cleantech
to help its San Diego clients launch into Group, the firm has been advising on
the global and national arenas. cleantech issues for the past 20 years.
“We have been advising leaders in the While figures aren’t available, de Groot
community on how to maneuver through says growth and revenue for cleantech
61
LEGAL RESOuRCE GuIDE
has more than doubled in the past year and high-tech clients. Morrison’s cleantech genomics to make energy and create
and a half. clients include Energy Works, LLC; Photon alternative fuels.
“We have a 20-year head start on most Energy Systems; the Energy Biosciences “The challenge for these companies
firms when it comes to cleantech,” says Institute; and San Diego’s own Envision is how they are going to get ahold of
de Groot, 52. “We have a vast knowledge Solar International, Inc. on the tech side, the huge amounts of money they will
of so many different areas of this sector, and Synthetic Genomics, Inc. on the life need, and how to commercialize and
from biofuels to solar energy. We are in sciences side. find distribution for their technology or
the forefront of cleantech because we Envision Solar designs structures product,” says Mullen, 43. “We can help
are in the forefront of life sciences and that use solar power, including parking make sure they follow the fundamentals
high tech. It’s a natural fit for us.” lots. De Groot advises the company on of good business so they don’t bust like
(See sidebar on page 65.) corporate matters and plans to introduce many of the dot.coms, and also we can
According to de Groot, the firm’s the principals to potential investors. make sure their patents are in order.”
expertise and insights in various areas Jim Mullen, of counsel, provides general With their sharp eyes and finely honed
of law, such as corporate, technology corporate advice to Synthetic Genomics, legal senses, San Diego’s law firms are
transactions, intellectual property and a private company founded by J. Craig not about to fall to the ground anytime
environmental law, serves its cleantech Venter (the scientist who mapped the soon. Look up and you might just catch
clients as well as it has served its biotech human genome) that is harnessing a glimpse of their tail feathers.
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62 bizSanDiego | Autumn 2008
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LEGAL RESOuRCE GuIDE
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64 bizSanDiego | Autumn 2008
Accountants & Consultants
The skills you need.
The service you expect.
Transaction Advisory Services
Defining Cleantech
Assurance & Advisory
Litigation Support
Forensic Accounting
What is cleantech—besides the subject of heated debate among environmentalists, Business Valuation
entrepreneurs and policy-makers? As the new buzzword, the term is fuzzy at best Tax
for many, most often being defined as sustainability.
Enterprise Risk Management
Management Consulting
According to morrison Foerster, the term can be defined as “technologies that
harness renewable materials and energy sources, dramatically reduce the use
In San Diego,
of natural resources, and significantly cut or eliminate emissions and wastes.”
contact Risto Mitrovich
According to Knobbe, it is an “industry classification that has arisen as a function for more information.
of consumer, government and investor interest in green technologies and products
that have a positive impact on the environment.”
858.496.0400
However it is defined, it is evidently an emerging industry that is here to stay. www.SingerLewak.com
According to moneytree, cleantech investing continues to grow, with $761 million
invested across 76 companies in the first half of 2007. much of the time the multi- Los Angeles
disciplinary field involves new technologies and cutting-edge science, which makes Orange County
intellectual property protection a must. As with any invention, companies want to Woodland Hills
be the first to develop a new, potentially lucrative product or technology, and these Monterey Park
properties need to be protected, just as they do in biotech or high-tech companies. Inland Empire
Some cleantech areas are biofuels, renewable liquid fuels from plant matter; San Diego
green building, creating healthier building designs; energy efficiency, waste
Silicon Valley
reduction, water technology, carbon markets and tracking, and renewable energy.
formerly known as
Singer Lewak Greenbaum & Goldstein LLP
