Technologically Speaking

their offices have the technological and scientific savvy to shepherd entrepreneurial and creative companies through the arduous patent process, as well as patent litigation, is key to their success.

Ned Israelsen, managing partner of the Knobbe Martens San Diego office, advises startup companies and established biotech and pharmaceutical companies, such as Isis Pharmaceuticals, Orexigen Therapeutics Inc., Genentech and Qualcomm. With more than 200 lawyers in offices throughout the country, Knobbe is one of the largest

Hard economic times? Skyrocketing gas and food prices? A burst real estate bubble? No problem—at least for San Diego legal firms that have their finger on the tech pulse of the area.

While no one is immune to the

economic downturn, firms such as Knobbe Martens Olson & Bear LLP, Morrison Foerster, Townsend and Townsend and Crew LLP, and DLA Piper are well situated to soar above the bumpy economic terrain. By focusing on the high-tech, biotech and cleantech companies and institutes that dot the San Diego landscape, these legal eagles can fly high. Ensuring that

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

60

Israelsen. “They had a great drug— KW-3902 for treatment of acute congestive heart failure—but the patent term was limited. We put together new patent applications covering the drug and the way the company intended to use the drug, and this was instrumental in getting a good price from Merck.”

Each new patent has a 20-year term, so the exclusivity of the drug was extended— meaning that NovaCardia had exclusive rights to the drug, and generic drugs at a cheaper price could not be issued.

Understanding tHe compLexities of BiotecH

Townsend has also evolved into one of the largest and most well-established intellectual property law firms in the united States, with more than 215 lawyers and offices in San Francisco, Palo Alto, Walnut Creek, San Diego, Seattle, Denver, Washington, D.C., and Tokyo, Japan. Fifteen attorneys and four technical advisers work out of the San Diego office, which was formed in 2003. Its clients include the university of California, San Diego; Biogen Idec; Quidel Corporation; and newcomer San Diego Antibody, a prefunded company.

“As San Diego became a hotbed of tech activity, a lot of legal firms opened an office here,” says Special Counsel Ken Jenkins, who also has a Ph.D. in chemistry and biochemistry. “There was a real growth of firms practicing here from 2000 to 2004. At Townsend, we try to match the local tech growth with the growth in our office.”

The firm has attorneys who are nationally recognized experts in areas such as engineering, organic chemistry, molecular biology and immunology. “We are able to help our clients transform their theoretical possibilities into economic realties,” says Jenkins, 36.

Townsend focuses on three areas: patent procurement, patent litigation, and trademarks and copyrights. Jenkins has a wide array of extensive patent counseling experience in bioscience and chemical technologies, including small intellectual property law firms in the

united States.

Israelsen laughs now when he recalls setting up the San Diego office in 1987 with three lawyers. Today, the office has 45 intellectual property lawyers—all with tech backgrounds. And 14 of the 45 hold doctorates in molecular biology, immunology, physics and optics, to name a few. In addition, there are five patent agents in the office, staff members who are not lawyers but who have taken and passed the patent bar exam. Israelsen himself, 53, graduated magna cum laude with his bachelor’s in chemistry and biochemistry. In the fall, the firm expects to add a dozen more attorneys.

Since San Diego is a hub for biotech-nology, it made sense for Knobbe to bring attorneys on board who had scientific expertise. For example, there are some chemists on staff, and Israelson says that there will likely be a need for more scientific minds at the law firm in the near future.

To be patentable, an invention or product needs to be new and what is termed non-obvious—it cannot be an obvious combination or modification of something that previously existed. It takes a minimum of three years to obtain a patent, and often that stretches to five, according to Israelsen. “We need to be able to formulate a good patent strategy,” he says. “These companies need someone to coordinate the realities of business with the realities of the patent office.”

While he can’t talk about the firm’s work with new inventions just yet, Israelsen holds up NovaCardia, Inc. as an example of what his firm can accomplish for bold thinkers. The company, a privately held clinical-stage pharmaceutical company focused on cardiovascular diseases, sold its lead product candidate to Merck & Co., Inc., one of the world’s leading research-based pharmaceutical companies, in 2007 for a whopping $350 million.

“We worked with NovaCardia from the day they were formed so they would eventually be attractive to buyers,” says

“ these companies

need someone

to coordinate the

realities of the

business with the

realities of the

patent office.”

—ned Israelsen, managing partner of Knobbe martens San Diego office

which counted on DLA Piper to help broker its recently announced $6.7 billion merger with the Connecticut-based Applera Corporation. The deal will create one of the world’s largest biotechnology companies, to be named Applied Biosystems, with expected sales of $3.5 billion this year.

One of the most unique offerings of the company is the Venture Pipeline, a business unit of the firm formed 10 years ago to help startup companies raise money. Led by business professionals with experience in technology, startups and capital markets, Venture Pipeline advises entrepreneurs and inventors on business matters and ultimately connects selected startups with targeted financing sources.

“Venture Pipeline makes us unique as a law firm,” says Brownlie. The group has linked San Diego firm Veoh, an internet TV service that gives viewers power to personalize their online viewing experience, with Shelter Capital, resulting in a $2.25 million investment. The group also landed two syndicate partners, Alloy Ventures and Innocal Venture Capital, for Carlsbad company SynergEyes, which develops, manufactures and sells contact lenses.

new indUstry strategies

Morrison Foerster’s San Diego office boasts 70 lawyers and 15 patent attorneys. Its Cleantech Group, formed a year ago, integrates practitioners across the firm to offer broad-based services to cleantech clients.

According to Jay de Groot, partner at Morrison Foerster and a member of the executive committee of the Cleantech Group, the firm has been advising on cleantech issues for the past 20 years. While figures aren’t available, de Groot says growth and revenue for cleantech “The passage of the Hatch-Waxman

Act [in 1984] allowed generic firms to challenge the validity of the weaker patents held by pharmaceutical companies,” explains Jenkins. The act was instituted by the federal government to prevent the innovator pharmaceutical companies from holding a monopoly on drugs and therapies and to help keep the cost of drugs down by allowing generics to hit the market sooner.

The firm also watches out for its clients’ bottom line by hiring technical advisers, who are billed at a lower rate than the attorneys, to research the technical landscape. Jenkins doesn’t see the economy affecting Townsend’s practice right now, although he maintains that the firm is keeping an eye on how the market might affect the amount of money available to their private clients.

a gLoBaL footprint

As one of the highest-grossing law firms in the world, DLA Piper had more than $2.1 billion in revenue in 2007. There are 31 corporate attorneys and 43 intellectual property attorneys in the combined Golden Triangle and downtown offices.

Robert Brownlie, the managing partner of DLA Piper’s San Diego offices and co-chair of the Securities Litigation Group, maintains that DLA Piper’s success is based on its global footprint, its ability to advise clients on corporate governance and its intellectual property focus. A member of the firm since 1995, Brownlie says that all businesses, including those in San Diego, are competing in an increasingly global market. With more than 3,700 lawyers in 25 countries, DLA Piper is uniquely poised to help its San Diego clients launch into the global and national arenas.

“We have been advising leaders in the community on how to maneuver through

“ on a smaller

scale, we also

advise local

companies on

how to maneuver

on a national

level.”

62

LEGAL RESOuRCE GuIDE

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

www.barkerolmsted.com

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 www.burdmanlaw.com 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 www.bsllp.com

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

www.dueprocessoflaw.com

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

www.fr.com

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 www.goodwinprocter.com 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

www.gordonrees.com 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 www.hsrgb.com

and high-tech clients. Morrison’s cleantech clients include Energy Works, LLC; Photon Energy Systems; the Energy Biosciences Institute; and San Diego’s own Envision Solar International, Inc. on the tech side, and Synthetic Genomics, Inc. on the life sciences side.

Envision Solar designs structures that use solar power, including parking lots. De Groot advises the company on corporate matters and plans to introduce the principals to potential investors. Jim Mullen, of counsel, provides general corporate advice to Synthetic Genomics, a private company founded by J. Craig Venter (the scientist who mapped the human genome) that is harnessing

genomics to make energy and create alternative fuels.

“The challenge for these companies is how they are going to get ahold of the huge amounts of money they will need, and how to commercialize and find distribution for their technology or product,” says Mullen, 43. “We can help make sure they follow the fundamentals of good business so they don’t bust like many of the dot.coms, and also we can make sure their patents are in order.”

With their sharp eyes and finely honed legal senses, San Diego’s law firms are not about to fall to the ground anytime soon. Look up and you might just catch a glimpse of their tail feathers.   has more than doubled in the past year

and a half.

“We have a 20-year head start on most firms when it comes to cleantech,” says de Groot, 52. “We have a vast knowledge of so many different areas of this sector, from biofuels to solar energy. We are in the forefront of cleantech because we are in the forefront of life sciences and high tech. It’s a natural fit for us.” (See sidebar on page 65.)

According to de Groot, the firm’s expertise and insights in various areas of law, such as corporate, technology transactions, intellectual property and environmental law, serves its cleantech clients as well as it has served its biotech

C a l i f o r n i a

A r i z o n a

N e v a d a

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 [email protected].

ATTORNEYS AT LAW

L

INCOLN

G

USTAFSON

& C

ERCOS

64

LEGAL RESOuRCE GuIDE

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 www.kts-law.com

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 www.lgclawoffice.com 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 www.luce.com

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,

www.luce.com 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

www.luce.com 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) www.mintz.com 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 www.neildymott.com 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

www.sheppardmullin.com 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

www.sheppardmullin.com

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

In San Diego,

contact Risto Mitrovich

for more information.

858.496.0400

www.SingerLewak.com

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Defining Cleantech

What is cleantech—besides the subject of heated debate among environmentalists, entrepreneurs and policy-makers? As the new buzzword, the term is fuzzy at best for many, most often being defined as sustainability.

According to morrison Foerster, the term can be defined as “technologies that harness renewable materials and energy sources, dramatically reduce the use of natural resources, and significantly cut or eliminate emissions and wastes.” According to Knobbe, it is an “industry classification that has arisen as a function 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-disciplinary field involves new technologies and cutting-edge science, which makes intellectual property protection a must. As with any invention, companies want to be the first to develop a new, potentially lucrative product or technology, and these properties need to be protected, just as they do in biotech or high-tech companies.

Some cleantech areas are biofuels, renewable liquid fuels from plant matter; green building, creating healthier building designs; energy efficiency, waste reduction, water technology, carbon markets and tracking, and renewable energy.