A Mature IP Practice Looks To A Bright Future In The Midwest And Beyond

Thursday, November 1, 2007 - 01:00

Editor: Would each of you provide our readers with something about yourprofessional experience?

Rudisill: I've been practicing IP law since 1964 in Chicago. I started a Chicago office for a national IP boutique firm in 1986, and when that firm disbanded our office joined Jenkens & Gilchrist. With the demise of that firm, our IP group joined Nixon Peabody in 2007. The group consisted of 15 to 20 IP lawyers, and the attraction of Nixon Peabody was a national firm with a strong IP practice and its national platform.

Rochford: I have been a partner with Nixon Peabody for 26 years, having joined after graduating from law school. When I first began my legal career, I was a litigator managing First Amendment and communications issues and then became interested in intellectual property litigation issues. I have focused on IP litigation for 20 years.

I was initially attracted to the firm by its culture of collegiality and cohesiveness. Even as the profession has changed over the years, and become more of a business, the firm has worked hard to maintain its original cultural benchmarks. The fact that we were able to attract Stephen Rudisill and his group is an indication that those benchmarks are alive and well.

Editor: Please tell us about your practice. How has it evolved over the course of your career?

Rudisill: Since the mid-1980s there has been a growth in the litigation side of the IP practice, and today it constitutes between two-thirds and three-quarters of our practice. In addition, over the past 10 to 15 years there has been a tremendous growth in the filing of patent applications, presumably in tandem with the electronic and technology-based breakthroughs that we are seeing on an almost daily basis.

Rochford: IP practice has grown as the competitive advantage and economic value of IP and technology has become more evident. Those developments have compelled many companies - including those which traditionally avoided disputes - to litigate to protect their competitive advantage.

Editor: Would you give us an overview of Nixon Peabody's IP practice? For starters, what is the origin of the practice?

Rochford: We were among the earlier general practice firms to understand that intellectual property was an important practice area to build. We started slowly, with a handful of patent attorneys and a couple of litigators based in Rochester, New York, where one of our legacy firms resided. We then brought in a group from an IP specialty firm in Virginia to enhance our patent capabilities, and it has grown from that original base. Today the group consists of almost a hundred attorneys.

From the beginning, we have taken a multidisciplinary view of the practice, meaning that the litigators are brought in to be IP litigators, and the patent attorneys are trained to see things through the eyes of a litigator. In addition, the firm's client base spans a very wide technology spectrum, so our practitioners have familiarity with the full range of technology, which includes biotech and chemical technologies, and electrical, software and computer technologies, in addition to a variety of baseline manufacturing technologies. Bringing in the right people to handle this diversity of practice is, I think, the key to the steady growth that we have enjoyed in this practice.

Editor: Where does the practice reside? Does it have a particular concentration in one or two offices?

Rudisill: We have sizable groups in Rochester, Boston, Washington, Chicago, San Francisco, New York and Los Angeles. Between our integrated approach to client service and the wonders of modern technology, we are able to draw upon the resources of the entire practice group, and, indeed, the entire firm, to serve our clients, wherever they may be located.

Editor: What kinds of background do the practitioners bring to this group?

Rochford: As I indicated, this is a multidisciplinary group. We have people with a litigation background and others who come to us with corporate and transactional expertise. Forty-seven of the group's attorneys are registered patent attorneys, and that includes about a dozen PhDs, mostly in the life sciences. Some of our PhDs have post-doctoral training and experience as patent agents; others are enrolled in law school and planning to make a legal career with the firm. Most of our patent attorneys have prior industry experience, and some worked at the U.S. Patent Office.

Editor: Would you tell us about the services the IP practice provides its clients?

Rochford: Stephen mentioned litigation. At this point, litigation is a large aspect of our IP practice. We are very active in all of the major venues, including - particularly in the case of Stephen's group - the Eastern District of Texas and Illinois. We are also active in California, Delaware, New York, Boston, and Virginia, which are among the key IP venues. We have, in addition, a very strong patent prosecution and counseling practice, which serves to keep our practitioners at the top of their game with respect to emerging technologies.

I mentioned the wide array of technologies that we cover. Biotechnology is particularly important at the moment, and we represent a number of newly-established biotech enterprises as well as major research institutions. We are also active with respect to software and digital technologies, and a number of our clients are based in Silicon Valley.

We also manage global portfolios and global enforcement strategies for multinational companies operating in the international arena.

Editor: How does ADR fit into the practice's portfolio of services?

Rudisill: We have been very active with respect to ADR. We believe this is a growing trend in light of the enormous investment of money and time that IP litigation usually entails for our clients. There are a number of patent issues that remain unsettled as a consequence of conflicting decisions on the part of the Federal Circuit and several of the district courts, and that is serving to encourage clients to look to arbitration and mediation for a resolution of their disputes as well. We train all of our litigators in ADR techniques, and many of them act as neutrals in these proceedings. The firm is a core member of CPR International Institute for Conflict Prevention & Resolution, one of the major ADR organizations in our country and internationally and a group which serves as a forum for discussing the ways in which we may better serve our clients through arbitration and mediation.

Editor: Would you tell us about some of the hot issues in the IP area at the moment?

Rudisill: The Patent Office has just put out a number of new rules that are very complex. We have developed a webinar for our clients, and the response has been very positive. Of course, there is also a considerable volume of pending legislation on patent reform, and it is important that we keep our clients informed as to how we see things playing out in the legislative arena.

Rochford: We have a patent reform website as a service to our clients. One of the aspects of patent reform that is particularly interesting concerns the recent United States Supreme Court involvement in the patent space. Between the Supreme Court and the Federal Circuit there is, I think, a concerted drive to provide greater certainty in this area. Whether or not this is achieving any real success is something we are going to have to wait to see, but it represents a very interesting development and one to which we are giving a great deal of attention.

Rudisill: Another issue on which many IP practitioners are focused at present concerns the digital economy. As but one example, courts are attempting to grapple with whether one party to a contract - say, a website service provider - is entitled to change its terms of service by posting them on the Internet. We have a number of clients asking questions about the digital economy, and this is such a new area that it is generating an extraordinary volume of work for us.

Editor: What about the future? Where would you like to see the firm's IP practice in, say, five years?

Rochford: We want to continue to grow our practice. We have a very cohesive group of practitioners that has grown to a practice with great bench strength and an exceptional degree of expertise. Speaking of the Chicago office, bringing Stephen's group into the fold has been a great step forward for the firm as a whole. That step has given us an opportunity to attract other talented IP practitioners to a very important market and, in time, to build not only a superb IP practice but to develop a full-service operation. Our corporate, healthcare and real estate lawyers, among others, are very excited about the opportunities that Chicago offers Nixon Peabody in the years to come.

Please email the interviewees at rrochford@nixonpeabody.com or srudisill@nixonpeabody.comwith questions about this interview.