Chadbourne & Parke LLP Brings A Seasoned IP Practice Into The Fold

Wednesday, June 1, 2005 - 01:00

Editor: Would each of you gentlemen tell our readers something about your background and professional experience?

Calvaruso: My undergraduate degree was in electrical engineering. Following law school at Fordham and an 18-month experience with the New York City Corporation Counsel's Office, I joined a solo practitioner whose focus was intellectual property. This enabled me to gain valuable experience over a wide range of IP issues, and during the two years I was associated with this practice, I engaged in patent and trademark prosecution, opposition proceedings, cancellation proceedings, the drafting of opinions, and the like. In 1978 I moved on to Morgan & Finnegan, where I became a partner in 1985. Until recently, I was a senior partner there and a member of the firm's Executive Committee.

Hanchuk: I am also a new arrival at Chadbourne & Parke. After receiving my engineering degree from The Cooper Union, I attended George Washington University Law School at night, while working at the Patent Office during the day. I joined Morgan & Finnegan as an associate in 1992 and was elected to partnership in 1999. My practice is a full-service IP practice, which includes IP litigation and transactional work in addition to the preparation of patents. Over the years, I have also engaged in a considerable amount of trademark and copyright work. Much of my practice today concerns information technologies, which includes computer software, hardware and telecommunications work. I continue to represent a number of now-substantial dot-com's. That work has now also matured into a substantial financial service practice.

Weitzman: After graduating from college with an engineering degree, I worked for Texas Instruments for five years as a machine design engineer, which is a natural entrée into IP. In 1989, I left Texas Instruments to attend law school with an eye toward engaging in IP work. After law school and a couple of years at a general practice firm, I joined Morgan & Finnegan, an IP boutique, in 1994 and became a partner there in 2002. Recently, I joined Chadbourne as a partner in its growing IP practice group.

Editor: Would each of you tell us about your practice? How has it evolved over the course of your career?

Calvaruso: At the beginning of my career, I did quite a lot of patent and trademark prosecution. Litigation was not as prominent a part of the practice as it is today. That has changed. Most of what I do now involves litigation or litigation-related matters, in the patent and trademark area, trade secrets and false advertising. The technologies with which I have been involved are rather diverse and extend to medical devices, optical equipment, automotive systems, computer hardware and software, semiconductors, and a whole range of consumer products. In addition to litigation, I am regularly involved in advising clients with respect to validity and infringement issues, including product clearance opinions. I am also involved in IP due diligence with respect to mergers and acquisitions.

Weitzman: Early in my career, my practice focused predominantly on patent prosecution matters, which involved the drafting of patent applications and the prosecution of the applications in the U.S. Patent Office and abroad. During my 11 years at Morgan & Finnegan, my practice became more focused on patent litigation and client counseling. I regularly advise clients on issues relating to patent validity, enforceability and infringement, as well as other IP matters such as trademarks, clearance opinions and due diligence. My mechanical engineering background is well suited to the representation of a diverse group of clients across a wide range of industries, including medical devices, telecommunications, automotive, e-commerce, business methods, financial services, semiconductors, electronics and consumer products.

Hanchuk: One of the things that the three of us have in common is extensive experience in obtaining patents and trademarks. This experience is invaluable when one comes to enforcing these rights, licensing these rights or modifying these rights down the road. Our background in traditional patent work has given us a leg up in the litigation that now occupies so much of our time.

Editor: And the changes you have seen over the course of your careers? I am old enough to remember IP as a self-contained specialty. Today it is a mainstream legal discipline - with all kinds of full-time sub-specialties that touches virtually every other discipline and practice group the profession offers.

Calvaruso: One of the things that has led to the present state of affairs is the recognition on the part of companies that their intellectual property is a very valuable asset. That recognition is underscored by the large damages awards that courts are giving plaintiffs. IP issues impact a whole range of legal disciplines and practice areas, and in recent years that impact has become global in scope. As a consequence, general practice firms are anxious to be able to offer their clients services in the IP area as a means of presenting themselves as a full-service provider.

Hanchuk: In recent years, IP has moved from the research and development lab to the board room and now Wall Street. In the past, we typically worked with a developer and various scientists, while the CEO paid little attention to what was underway, other than to note that the cost of IP protection was a negative on the balance sheet. Today, stock prices move aggressively as a consequence of IP transactions. IP securitization is a hot topic. There is extensive media coverage, and it is now mainstream news, not something appearing just in a weekly technology update. All of this contributed to our decision to join a leading general practice law firm.

Editor: Speaking of which, would you share with us the factors that went into your decision to join Chadbourne? What attracted you to the firm?

Calvaruso: The days when an IP boutique could rely on a steady flow of referrals from general practice firms are virtually gone. Because, as you say, IP connects to just about every legal discipline, the general practice firms have developed their own IP capacity. And it is eminent good sense for me to be able to help my clients resolve all of their legal issues under one roof. Chadbourne is precisely the kind of general practice firm, operating on a global platform and able to address every conceivable issue, that provides such a service.

Weitzman: I have had several clients tell me that they desired to have a single firm service them for all their legal needs. That is certainly one of the factors that motivated my decision. In addition, Chadbourne is committed to growing its IP practice, and the three of us find it a very attractive platform from which to help the firm increase its presence in this field.

Editor: And, if you can, what did Chadbourne seek to accomplish in bringing you into the fold?

Calvaruso: Chadbourne certainly recognizes the importance of the IP piece in their firm practice. I think, with our arrival, that they propose to project the new capability we provide to their existing clients, and, at the same time, to grow the practice with other clients. I believe that we have the background and breadth of experience to help them succeed on both counts.

Editor: What are the principal challenges that you, as IP practitioners, see today?

Calvaruso: The high damages awards represent a real challenge. The case against Microsoft brought a $520 million dollar judgment. Integraph Corporation has collected $225 million from Intel and $141 million from Hewlett-Packard. The recent Blackberry case settled for $450 million. Another challenge has to do with an entirely new industry comprised of people who acquire patents for the sole purpose of asserting them to generate revenue, in settlements and court awards.

Editor: And the challenges, and opportunities, that globalization presents?

Hanchuk: Globalization has certainly made our jobs very interesting. We routinely advise clients on IP laws all over the world, and the enforcement of IP rights seems to invite a host of extraterritorial issues. How, for example, do you stop someone infringing on the IP rights of one of your clients where the infringement derives from a server sitting on a ship in the middle of the Pacific Ocean? To what jurisdiction do you turn for guidance? Is there any jurisdiction that governs in such circumstances?

Editor: What are the chances of a common IP jurisprudence developing in the international area? Say, a single patent system that would be acknowledged in all jurisdictions?

Hanchuk: I think that is a long way off. The differences between the U.S. and the EU in terms of, say, patent protection for computer software and business processes are quite profound. And this is but one example. There is a Patent Cooperation Treaty of long standing which preserves a patent applicant's rights in more than a hundred countries, but it has never evolved into a mechanism which results in the issuance of a patent. That requires a national procedure, or multiple procedures, if the patent is to be enforceable in many countries. So long as countries are able to generate substantial fees from such procedures, they are going to insist on their procedures being followed.

When I began my career in the late 1980s one of the principal issues in patent law involved an international debate over so-called first-to-file and first-to-invent rules and procedures. This concerned the rule prevailing in most of the world - and not in the U.S. - that the person who is first to file his patent application owns the patented invention. Here, the ministerial act of filing does not automatically determine who holds the patent. U.S. courts consider the date on which the invention was created, based on external evidence. This represents a fundamental philosophical difference between the U.S. and the rest of the world, and it is nowhere near being resolved.

Weitzman: In addition to the ways in which different jurisdictions look at IP rights, there is the enforcement issue as well. Each jurisdiction has its own procedures for enforcement of IP rights, which vary from country to country. The differences can be quite substantial, such as, for example, the differences between litigation in the U.S. and litigation in China or the UK.

Calvaruso: Not too many countries are going to buy into U.S. discovery procedures.

Editor: Please tell us about your plans for Chadbourne & Parke. Where would you like this practice to be in, say, five years?

Calvaruso: I would like to see the practice expanding into all aspects of IP, and I would hope to see our practice group double or possibly triple in size. Given the firm's commitment to developing a world-class IP practice, I think that is very feasible.

Please email the interviewees at jcalvaruso@chadbourne.com, whanchuk@chadbourne.com and kweitzman@chadbourne.com with questions about this interview.