Antitrust & Trade Reg.
Jun. 25, 2002
Under One Roof
DiscoVision Associates had little luck hiring legal counsel that could adequately represent the Irvine-based technology licensing company in its intellectual property and antitrust matters. Frustrated, the management of DiscoVision burned through numerous law firms, finding that none had the depth and skill to carry both practice areas.
DiscoVision Associates had little luck hiring legal counsel that could adequately represent the Irvine-based technology licensing company in its intellectual property and antitrust matters. Frustrated, the management of DiscoVision burned through numerous law firms, finding that none had the depth and skill to carry both practice areas.
The company finally settled on two boutique firms: Washington, D.C.'s Howrey & Simon for antitrust matters and Houston-based Arnold White & Durkee for its patent licensing expertise.
When the two firms announced their merger in January 2000, the executives at DiscoVision were delighted.
"When they merged, it was perfect for us," DiscoVision vice president David White says. "It brought them all under one roof."
The merger was "strength on strength," according to Thomas Nolan, the managing partner of Howrey Simon Arnold & White's Los Angeles office.
"Many of our clients were very much in favor of combining the two practice areas," he says.
The marriage between Howrey & Simon and Arnold White & Durkee positioned the new firm as a leader in both antitrust and intellectual property law, a coveted combination at the time.
The merger accomplished Howrey Simon's goal to position itself as a single firm with depth in the areas of both antitrust and intellectual property.
"We were one of the early firms that had it committed to our strategic vision," Nolan says. "And there's been a very significant cross-selling between our IP and antitrust people."
While one of the first firms to meld together its intellectual property and antitrust practices, Howrey Simon is no longer alone.
In recent years, law firms have responded to the intersection of intellectual property and antitrust laws and the increased client demand for sophisticated lawyers knowledgeable in both practice areas.
Many firms have brought their intellectual property and antitrust groups under one department, or are at least making a concerted effort to do so.
As the economy continues on its sluggish path, more businesses are protecting their moneymaking patents and other intellectual property assets from infringement by competitors. Just as many of these companies are defending counterclaims that their patents restrain trade.
As a result, more than ever before, corporations like DiscoVision are seeking lawyers versed in both intellectual property and antitrust law.
"There's an increasing amount of antitrust attorneys that are handling IP and IP attorneys who are handling antitrust," recruiter Larry Watanabe of San Diego's Watanabe Nason & Seltzer says. "I would say in the past 12 months, there's been a definite surge in demand for patent litigators, in particular, and antitrust lawyers."
It's no easy endeavor, however, for a law firm to acquire depth in both practice areas, according to San Francisco antitrust and intellectual property litigator Bill Jaeger.
Like Howrey Simon, Jaeger's firm acquired that depth through a merger.
In the early 1990s, San Francisco intellectual property and business firm Townsend and Townsend acquired Khourie Crew & Jaeger, a local litigation boutique with antitrust expertise where Jaeger was a name partner. Today, Jaeger co-chairs Townsend and Townsend and Crew's litigation department. The firm has 95 attorneys. A litigation case with both intellectual property and antitrust components led to the merger, Jaeger reports. The firms both represented Texas Instruments Inc. in a patent and antitrust suit brought by Grid Systems Corp. Grid Systems Corp. v. Texas Instruments Inc. 771 F. Supp. 1033 (N.D. Cal. 1991).
During the case, which settled before trial, Khourie Crew oversaw patent issues and Townsend handled antitrust issues. It occurred to the two sets of lawyers that they would pack a powerful punch if they'd join forces.
"The basic tension is that patents are lawful monopolies and the antitrust laws frequently challenge monopolies," Jaeger says. "It takes a certain level of expertise and sophistication to understand some of these patents, so you have to have high-quality patent people, and it's important to have high-quality antitrust people."
While most firms have their antitrust and intellectual property lawyers work in tandem, there are a select number of lawyers who have substantial expertise in both specialties.
Robert Taylor is one of them.
In 1996, before its merger with Arnold White & Durkee, Howrey & Simon recruited Taylor, head of the intellectual property practice at Pillsbury Madison & Sutro (now Pillsbury Winthrop).
Before joining Pillsbury Madison, which at the time had a strong antitrust practice, Taylor was an examiner with the U.S. Patent Office from 1966 to 1968. It was while working for the government that Taylor's fascination with the intersection of intellectual property and antitrust law began.
"Early in my career, I was intrigued with the idea that both patent law and antitrust law reconcile around some basic principles of competition and consumer welfare," he says.
His interest in the two areas has led to a lucrative practice. Taylor, who is based in the Silicon Valley, generates between $5 million and $10 million in business annually and tackles some of his firm's most high-profile cases. He represents, for instance, semiconductor equipment maker Tokyo Seimitsu Co. in its antitrust counterclaim against San Jose-based KLA-Tencor Corp., which is suing Tokyo Seimitsu for patent infringement. KLA-Tencor Corp. v. Tokyo Seimitsu Co. Ltd., CU 012489 (N.D. Cal., filed June 2001).
While it's not easy to find a lawyer versed in both intellectual property and antitrust law, many firms find that having both practice groups work closely together meets client needs.
Getting the two groups working together is often facilitated by a senior partner with expertise in both intellectual property and antitrust.
For example, Howrey Simon gave Washington, D.C.-based antitrust and intellectual property partner Joseph Lavelle the task of coordinating the interface between the firm's intellectual property and antitrust practices, which have a joint book of business worth $230 million.
Firms like San Francisco's Brobeck Phleger & Harrison also have their two departments work together.
Brobeck Phleger also continues to hire and loan attorneys on a per-task basis to the antitrust divisions of the U. S. Justice Department and Federal Trade Commission, according to San Diego partner John Benassi.
For example, Benassi says that partners James Miller and George Cumming both served as special trial counsel in the antitrust division of the Justice Department, working with the department to investigate mergers and price-fixing conspiracies.
Cumming, who was at the Justice Department in the late 1990s, led the review of the $23 billion merger of telecommunications companies Bell Atlantic and NYNEX in 1997.
These days, Brobeck Phleger markets the two practice areas under the same umbrella.
"We do a lot of general, patent and antitrust litigation using litigation teams made up from all groups," Benassi says. "The key is combining superb litigation skills with the right legal, industry and technical expertise."
Some firms are taking it a step further by creating new practice groups altogether.
For instance, New York's Kaye Scholer has responded to client demand by creating a technology and competition department, which focuses solely on intellectual property and antitrust matters.
Founded two years ago by Washington, D.C., partner Mark Popofsky, the technology and competition group has 15 attorneys spread throughout the firm's five nationwide offices.
"You can't be an antitrust lawyer anymore, you just can't be an IP or an e-commerce lawyer anymore," Popofsky says. "You have to marshal all those skill sets under the same roof. That's why we formed the group. So we could describe more accurately what we do."
Despite the efforts of Howrey Simon, Brobeck Phleger and Kaye Scholer, many firms have yet to meld their intellectual property and antitrust practices in any meaningful way, experts in the legal industry say. Still, that hasn't stopped those firms from selling themselves as having a strong, united antitrust and intellectual property practice.
"Frankly, most firms fake it," says Jeffrey Kingston, an antitrust partner in Brobeck Phleger's San Francisco office.
Molly Boast, an antitrust partner with New York's Debevoise & Plimpton and a former attorney with both the Federal Trade Commission and Justice Department, says that while many West Coast law firms have positioned themselves successfully, she pities the client who has to wade through all the marketing material to find good intellectual property and antitrust practices.
She compares the rush to acquire depth in intellectual property and antitrust law to the late 1990s, when firms marketed themselves as having Y2K expertise.
"Over promotion of expertise is rampant, but that is part of the business of the practice of law these days," Boast says.
Liz Valsamis
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