Technologically Speaking by jennyyingdi


									                                                                     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


                                            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


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.  

Law firm directory Listing

Barker olmsted & Barnier apLc                  2341 Jefferson Street, Suite 200        (619) 682-4040 phone   Areas of Specialty:
managing Partner: Christopher W. Olmsted       San Diego, CA 92110                     (619) 220-7056 fax     Employment Law Practice

Burdman & ward                                 12555 High Bluff Drive, Suite 380       (858) 350-4040 phone   Areas of Specialty: Construction
managing Partners: Scott Burdman               San Diego, CA 92130                     (858) 350-4041 fax     Defect Litigation for Homeowners
and Robert Ward                                                                   and Homeowner Associations

Butterfield schechter LLp                      10616 Scripps Summit Court, Suite 200   (858) 444-2300 phone   Areas of Specialty:
managing Partners: Robert K. Butterfield       San Diego, CA 92131-3961                (858) 444-2345 fax     Employee Benefits and ERISA
and marc S. Schechter                

due process                                    10391-A Friars Road                     (619) 280-5444 phone   Areas of Specialty: Bankruptcy
managing Partner: Brian Whitaker               San Diego, CA 92120                     (619) 280-5546 fax

fish & richardson pc                           12390 El Camino Real                    (858) 678-5070 phone   Areas of Specialty: Intellectual
managing Partner: John Phillips                San Diego, CA 92130                     (858) 678-5099 fax     Property, Business Litigation

goodwin procter LLp                            4365 Executive Drive, Suite 300         (858) 202-2700 phone   Areas of Specialty: Full Service Law
managing Partner: Stephen C. Fuerruolo,        San Diego, CA 92121                     (858) 457-1255 fax     Firm with Specialty in Corporate,
Partner and San Diego Office Chair                                            Litigation and Real Estate

gordon & rees LLp                              101 West Broadway                       (619) 696-6700 phone   Areas of Specialty: Commercial
managing Partner: Kevin Alexander              San Diego, CA 92101                     (619) 696-7124 fax     Litigation, Employment, Intellectual
                                                                                  Property, Environmental, Business
                                                                                                              transactions, tort, Real Estate

Hecht solberg robinson                         600 West Broadway, Suite 800            (619) 239-3444 phone   Areas of Specialty: Real Estate,
goldberg & Bagley LLp                          San Diego, CA 92101                     (619) 232-6828 fax     Land use, Business and Financing
managing Partner: Darryl O. Solberg  

62     bizSanDiego | Autumn 2008
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   Representing individuals and businesses in civil litigation, workers’ compensation
defense, and corporate and small business services since 1987. For a consultation, please
    contact attorney Jill Dickerson at (619) 233-1150 or

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  w w · 225 Broadway, Suite 20 0 0 · San Diego, CA 92101 · (619) 233 -1150

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Law firm directory Listing

Kimball, tirey & st. John LLp               1202 Kettner Blvd., 5th Floor     (619) 234-1690 phone     Areas of Specialty: Real Estate and
managing Partners: ted Kimball,             San Diego, CA 92101               (619) 237-0457 fax       Business Litigation and transactions
Patricia tirey, Wendy St. John    

Lincoln, gustafson & cercos                 225 Broadway, Suite 2000          (619) 233-1150 phone     Areas of Specialty: Civil Litigation,
managing Partners: thomas Lincoln,          San Diego, CA 92101               (619) 233-6949 fax       Construction, Product Liability,
Randall Gustafson & ted Cercos                                           Premises Liability, municipality
                                                                                                       Liability, motor Vehicle, Employment,
                                                                                                       Environmental, Business Litigation,
                                                                                                       Insurance and Surety, Workers’
                                                                                                       Compensation Defense, Corporate
                                                                                                       and Small Business Services,
                                                                                                       Contracts, Incorporation, Dissolution

Luce forward                                Rancho Santa Fe Office            (858) 756-4410 phone     Areas of Practice: trust & Estates
managing Partner: Robert J. Bell            PO Box 2329, 6050 El tordo        (858) 756-4386 fax
                                            Rancho Santa Fe, CA 92067

Luce, forward, Hamilton & scripps LLp       Carmel Valley / Del mar Office    (858) 720-6300 phone     Areas of Practice: Intellectual
managing Partner: Robert J. Bell            11988 El Camino Real, Suite 200   (858) 720-6306 fax       Property, Corporate, tax, Labor and
                                            San Diego, CA 92130                                        Employment, Business Litigation,
                                                                                 mergers and Acquisitions, trusts
                                                                                                       and Estates, technology

Luce, forward, Hamilton & scripps LLp       San Diego Office                  (619) 236-1414   phone   Areas of Specialty: Real Estate
managing Partner: Robert J. Bell            600 West Broadway, Suite 2600     (619) 232-8311   fax     Business, Real Estate and Insurance
                                            San Diego, CA 92101-3372                                   Litigation, Real Estate Finance and
                                                                                 Syndication, Corporate and
                                                                                                       Intellectual Property, Labor and
                                                                                                       Employment, Family Wealth and
                                                                                                       Exempt Organizations

mintz, Levin, cohn, ferris,                  9255 towne Center Drive          (858) 320-3000 phone     Areas of Specialty: Intellectual
glovsky and popeo, pc                        San Diego, CA 92121              (858) 320-3001 fax       Property, Real Estate, Corporate,
managing Partner: Craig Hunsaker (San Diego)                                             Bankruptcy and Employment

neil, dymott, frank,                        1010 Second Avenue, Suite 2500    (619) 238-1712 phone     Areas of Specialty: Civil Litigation,
mcfall & trexler apLc                       San Diego, CA 92101               (619) 238-1562 fax       Employment Law, Business Law,
managing Partners: Executive Committee                                         Professional Liability, Estate Planning,
                                                                                                       Real Estate, Premises Liability,
                                                                                                       trucking and transportation,
                                                                                                       and Personal Injury

sheppard, mullin, richter & Hampton LLp 12275 El Camino Real, Suite 200       (858) 720-8900 phone     Areas of Specialty: Full Service
managing Partner: Richard Kintz         San Diego, CA 92130                   (858) 509-3691 fax       Business Law Firm with emphasis
                                                                       in Intellectual Property

sheppard, mullin, richter & Hampton LLp 501 West Broadway, 19th Floor         (619) 338-6500 phone     Areas of Specialty: Full Service
managing Partner: Dana Dunwoody         San Diego, CA 92101                   (619) 234-3815 fax       Business Law Firm

wilson petty Kosmo & turner LLp             550 West C Street, Suite 105      (619) 236-9600 phone     Areas of Specialty: Class Action,
                                            San Diego, CA 92101-3532          (619) 236-9669 fax       Employment Law, Business
                                                                                 Litigation, Products Liability

64    bizSanDiego | Autumn 2008
                                                                                                        Accountants & Consultants

                                                                                          The skills you need.
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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.”
  However it is defined, it is evidently an emerging industry that is here to stay.
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

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