A Patent Litigation Outpost Grows Into A Significant Boston Presence

Wednesday, March 1, 2006 - 00:00

Editor: Would you tell us about the Boston legal market? What kinds of
specialties have developed over the past 15 years or so?

Bauer: The Boston legal market constantly remakes itself to fit the
New England economy, which, of course, is now oriented to financial services,
venture capital and private equity, and to technology-based companies. There are
a great many technology-based NASDAQ companies here, but recently we have seen
more emerging companies remaining private. Of course, there is also enormous
depth in the non-profit, medical and university sectors. I'd say that the larger
law firms here in Boston all are trying to target these areas.

Editor: And when the tech boom went into decline several years ago, how
did these practices fare? And the IP piece?

Bauer: Because many of the largest Boston firms tailored their
practices to mirror the New England economy, they did not have the kind of
diversity of practice that one sees elsewhere. For example, Proskauer continued
to grow during the early part of this decade, when so many of the largest firms
in Boston experienced a considerable decline in their business and reduced the
number of their attorneys and staff. Every large firm in Boston was affected,
some quite significantly. Indeed, in just the last two years, some of Boston's
oldest and largest firms either folded or merged into larger national practices.
The IP piece was not as sensitive to the downturn in the economy, however, and
IP practitioners did not experience as dramatic a decline as others.
Nevertheless, there was some decline, which is not surprising given the burst of
the Internet bubble. It is worth remembering that when the tech economy crashed,
careful budgeting became a very important aspect of the legal landscape.

Editor: It is about five years now past this dramatic moment in the
history of this market. What is happening now?

Bauer: My sense is that the Boston legal market is booming again. All
of the large law firms are reporting that they are as busy as they have ever
been. The firms are smaller today, however, so being busy may not mean they are
going to match the record gross revenue they enjoyed in the past, but because
headcounts are down and rates are up, profits likely will be up this year.
Clearly, it seems that the largest Boston firms are at full capacity and
growing. In addition, there is something of a renewed focus on biotechnology,
life sciences and healthcare in the Boston market, so it continues to be a
technology-based and financial services market.

Editor: Speaking of which, how would you compare Boston as a technology
destination to, say, San Francisco and Silicon Valley?

Bauer: I am from the East Coast, so I would have to say that for me,
there is no comparison between Boston and the West Coast - the East Coast is
where the action is. Yet, while the technologies on both coasts are
substantially similar, there does seem to be a pattern whereby Boston companies
tend to be acquired, whereas West Coast companies tend to do the acquiring. This
may be changing: Boston Scientific just completed one of the largest
acquisitions in the country and is now the largest biotech or life sciences
enterprise in Massachusetts.

Editor: Is there any comment to be made on the fact that the two principal
areas of high technology are on the East Coast and the West Coast?

Bauer: Clearly, those two areas contain the largest concentration of
research universities, technology companies and medical and scientific research
centers in the country. It is no coincidence that Harvard and MIT are located
here and Stanford and Cal Tech on the West Coast, among many others at both
locations. These universities are the engines, the incubators, of scientific and
technological development.

Editor: And the trends today? What are the hot areas?

Bauer: Of course, technology continues to be a very hot area.
Technology companies need capital, they need to hire talented individuals, often
from abroad, and they must protect their intellectual property. Lawyers engaged
in IP and patent work, and particularly those with electrical engineering or
advanced biotech degrees who are able to understand the clients' businesses and
advise on strategic decisions, are heavily in demand. In the corporate area, we
are aggressively looking for attorneys with expertise in the areas of private
equity, fund formation, venture capital, mergers and acquisitions and mezzanine
and high-yield finance. I think that all of these areas are going to continue to
grow.

Editor: It is now two years since Proskauer appeared on the Boston stage
and a year since we last spoke. Would you bring us up to date on the fortunes of
the Boston office?

Bauer: The Boston office has done better than I would ever have
imagined when we first opened. At that time, we had 15 attorneys, all of whom
were engaged in patent prosecution and litigation. We planned to focus our
office on that practice area. We anticipated growth, but we never thought we'd
grow to 65 lawyers spread across corporate, private equity, litigation, labor
and governance practices, which is what we are today. We now have based in
Boston the best private equity fund practice in the country, and one of the
top-ranked mezzanine and subordinated debt practices. The firm's labor practice
continues to be considered one of the best in the country, and we have recently
recruited Scott Harshbarger, a former Massachusetts Attorney General, to lead
our corporate governance and ethics practice as well as our pro bono practices.

Editor: Can you expand a little on the areas that are now residing in the
office?

Bauer: One of the nice things about Proskauer is the firm's
flexibility and ability to move quickly, which certainly allowed the growth of
the Boston office over the past two years. On the corporate side, we now have 10
partners and 30 associates focused on private equity, mezzanine finance, mergers
and acquisitions, investments into emerging technology companies, and venture
fund formation. The fund practice, which is international in scope, represented
funds raising over $20 billion last year.

Editor: Tell us about the IP litigation, portfolio development and
technology licensing practice.

Bauer: I am particularly proud of this group, which is largely based
on the practice Joe Capraro, Dan Bernstein and I brought when we joined
Proskauer two years ago. We now have about 25 professionals, half of whom do
patent litigation, and most of whom have advanced engineering or science
degrees. In fact, four in our group have Ph.Ds. We have the technical ability to
handle any technology that might appear in Boston, from the most complex siRNA
biotech work, to semiconductor chip design, to high-temperature superconductors,
to encryption, laser optics and plasma physics. One thing that distinguishes our
group from any other IP practice in Boston is that we function as a single unit,
representing companies both in patent litigation and portfolio development. That
allows us to focus on both the business and litigation aspects when we are in
the portfolio development and licensing stages. We staff our attorneys to
clients, which means that the client gets the same attorneys with each new
project, regardless of whether the matter is litigation or not, and this lets us
provide creative solutions in different forums that general litigators might
miss, such as the U.S. and foreign patent offices and courts. Our clients tell
us that we provide long term value to them, and we do that by advising on more
than just how to litigate the issues in a U.S. trial court.

Editor: And the labor and employment practice?

Bauer: Proskauer's labor group is ranked number one in the country.
Mark Batten in Boston is our labor and employment partner. His specialty is
newspapers and publications, and he does substantial work for The Boston
Globe
and other New England newspapers. What's particularly helpful for our
clients is that he - and the entire Boston office - is able to call upon the
full resources in this area that Proskauer is so justly well known for,
including ERISA and immigration work from our other offices.

Editor: Can you tell us about the clients that the Boston office is
serving?

Bauer: On the IP side, about two-thirds of our clients are New England
based, with the balance being large national corporations, or companies
primarily serviced by partners in our other offices. For the private equity,
venture capital and finance groups, the clients are spread all over the United
States and the world. The private equity folks here joke that they have no use
for our firm's Bruins and Celtics tickets, because they have so few clients who
live within driving distance of Boston. That is, by the way, one of the things
that makes our office exciting - Proskauer's platform is such that we have
clients all across the country, and all over the world. I hasten to add, because
the firm's business model is that all offices function together collectively, we
are able to serve our clients as a unitary law firm that just happens to have
attorneys living in a number of different locations.

Editor: Which means that you are able to staff your projects by drawing
upon other Proskauer offices? Are you on call to support them in their
undertakings?

Bauer: Yes. Using technology, we really do function as a single law
firm. Each office has video conferencing capability, and everyone at the firm is
on the same computer and telephone system, so we have immediate access to the
firm's expertise wherever it may reside. In addition, the firm holds annual
retreats where we have an opportunity to meet and get to know our colleagues
from other offices. And, yes, we are on call for other offices to the same
extent that they are on call for us. Just the other day, I was on a conference
call with people calling in from Israel, Boston, New York City, Los Angeles and
Tokyo. It's tough to find a time where people are awake in all those cities.

Editor: You mentioned the current trends in Boston's legal market. Where
do you see the growth areas for Proskauer's Boston office? How are you going to
go about recruiting for these areas?

Bauer: Proskauer brings something special to the Boston legal market -
it is the largest firm in Boston with a New York City base. That makes us
extremely attractive to Boston lawyers who are looking for, say, a more national
platform and greater reach into New York City's financial and business
markets. If the past two years are any indication, we are not going to have any
problem recruiting the talent we need. At the moment, we are looking to expand
our corporate transactional and biotechnology practices, and to add practices in
securities litigation, white collar defense, and corporate finance. We
anticipate being able to bring quality expertise into the fold - and we are
adding another floor to our Boston office in a few months to be ready.

Editor: Have you progressed in setting down a Proskauer footprint in
Boston over the past year? I am thinking about the firm's presence in Boston's
civic, educational and cultural life.

Bauer: Really, our success in this area has been most gratifying. Most
significantly, Scott Harshbarger's arrival has put us in the center of these
activities. He has a state-wide and, indeed, national reputation for civic,
educational and political initiatives. He is now leading a group of associates
in our Boston office in establishing relations with a number of pro bono
organizations, and he is coordinating our Boston office's charitable
involvement. We are certain that he is going to provide us with a strong leg up
in pursuing these endeavors.

Editor: What about the future? Where do you expect the Boston office to be
the next time we speak?

Bauer: At the moment we have 65 lawyers, and by this coming summer we
will have office space for about 90. By the time we next speak, I hope to be
able to tell you that we are building out a third
floor.

Please email the interviewee at sbauer@proskauer.com with questions about this
interview.