The most innovative companies today depend on creative breakthroughs, hard work, and intellectual property lawyers who protect and defend these innovations. As part of Diversity & the Bar's look at high tech and intellectual property law, MCCA® and the American Intellectual Property Law Association (AIPLA) polled their members to determine who are the top lawyers of color in the field of intellectual property law. And while it's "common knowledge" that IP law has a dearth of minorities, there was no dearth of nominations of outstanding outside counsel.
With a tie at second place, MCCA and AIPLA members chose the following four partners as the best minority IP lawyers: Sharon R. Barner of Foley & Lardner of Chicago; Melvin C. Garner, of Darby & Darby, and Errol B. Taylor of Fitzpatrick, Cella, Harper & Scinto, both in New York, who tied for second; and Morgan Chu of Irell & Manella in Los Angeles.
Asked to what they attribute their successes, they agreed that attention to detail, a fine grasp of technical information, the ability to communicate that information to lay audiences, and good, old-fashioned mentors were at the top of their list. Uniformly, they also agree, IP law is an excellent field for minority lawyers to enter.
Sharon R. Barner
Foley & Lardner, Chicago
Like many intellectual property lawyers, Sharon R. Barner has a science degree; hers is in biology. However, when she started practicing law after graduating from the University of Michigan Law School, she handled transactional work. Pretty quickly she discovered that "IP litigation would let me combine my science background and desire to win," she said.
Since then, she has represented multinational corporations, manufacturers, service companies, municipalities, and universities. Among other matters, she was trial counsel for Pioneer Hi-Bred International in a two-week jury trial concerning genetically engineered corn seed, successfully tried a six-week jury trial involving misappropriation of trade secrets, securing a $2.6 million damage award in Rockwell Graphics v. Dev, Inc., and successfully represented Hughes Aircraft Co. in a 10-month patent infringement trial against the United States involving infringement of satellite-stabilizing technology resulting in an award of $154 million.
The latter, she acknowledges, is one of the crowning aspects of her career; it involved the technology underlying geosynchronous satellites and the trial lasted an entire year.
"The lawyers were great, the Hughes Aircraft scientists were some of the best in the world to work with, the IP and litigation issues were complex and challenging and many were issues of first impression." After 20 years of litigation, the verdict in Hughes' favor remains one of the largest patent infringement damages cases against the U.S. government concerning the taking of technology.
Ms. Barner chairs Foley's Intellectual Property Litigation Practice Group of more than 50 lawyers, is a member of the firm's twelve-member Management Committee governing nearly 1000 lawyers, and is a wife and mother of three small children. She readily acknowledges that it is a challenge to juggle her family, legal, and managerial responsibilities. "In all of these matters, excellent colleagues and staff, organization, sense of purpose, and enjoying what I do make them more manageable."
As an IP lawyer Ms. Barner credits a strong science foundation, good legal education, and excellent legal training as key factors to her success. Her clients agree that she provides the best combination of science, legal, and courtroom skills. Miguel Rivera, litigation counsel for Cummins Engine, states: "Sharon is a personable, intelligent, articulate, and aggressive litigator who understands the nuances of intellectual property law and the exigencies of the courtroom – a very rare combination. She can discuss business strategy with the president of your company, research and draft a brief for the federal bench, argue the brief before the same court, negotiate with opposing counsel, go to war for you in the courtroom and listen intently to the client's emotional and business needs."
From the law firm perspective, Ms. Barner says, her success can be attributed to "having very good mentors to guide and assist me, having a firm that supports the IP practice the way Foley does, having excellent lawyers and technology as resources, and being able to back these things based upon my good science and legal training."
Has being a minority affected her career progression?
"In many ways, I am at a very enviable point in my career." But, she adds, "the waters have not always been smooth. We all face challenges in our careers, being a minority is just another and different challenge over which to triumph."
"I think IP law is one of the present and future major legal practices of our country and the world. So much of the future of manufacturing, food, and healthcare technology will involve protecting the intellectual property underlying it," Barner says, noting that the global nature of developing technology makes it a multicultural practice and one highly recommended for minority attorneys.
Melvin C. Garner
Darby & Darby, New York
In 2003, Melvin C. Garner became the first African- American president of the New York Intellectual Property Law Association. In 2005, he will become the first African- American president of the AIPLA.
Garner, a partner in the intellectual property firm of Darby & Darby, specializes in the procurement and litigation of patent, trademark, trade secret, and copyright matters involving technologies such as video circuits, cellular telephones, office products, medical products, and computer hardware and software. His clients include Fortune 500 and Forbes International 500 corporations such as Pitney Bowes Inc., Johnson & Johnson, and Lucent Technologies, Inc.
However, he entered the field of IP law almost as an afterthought. "I was working as an engineer and the engineer who had the office next to mine said he was leaving to go work at Bell Labs, and they would pay his way through law school," Garner says. "It sounded like a terrific idea. A couple of months later, I called him and he said he liked it. I asked if they were looking for others, and I sent in a resume."
Since his graduation from Brooklyn Law School, his work has been a high-level mixture of supervising patent prosecutions, doing opinion work and litigation. He has also appeared as an expert witness.
Although Gardner has handled scores of major cases, perhaps the best known is O.P. Solutions, Inc. v. Intellectual Property Network Ltd. Representing the plaintiff in that case, Garner won a decision that upheld the copyrightability of various elements of a graphical user interface for a computer software program and determined that the elements had been infringed.
He says the combination of the technical background he received at Drexel University and New York University (where he earned, respectively, a B.S. and M.S. in electrical engineering) "helped me understand the technical problems of clients – and my law training at Brooklyn Law School was excellent in terms of applying law to practical situations."
As for being a minority, he thinks it has had a dual impact on his career. "I think that initially it limited opportunities, "Gardner says, "but once I was able to get the opportunity to demonstrate my capabilities, perhaps being a minority made me memorable to people for whom I was working.
"Even though there are successful minority IP lawyers, there's still prejudice in the world. Hopefully, by seeing my success and the success of the others selected in this survey, people will see that it's possible to overcome that prejudice. Also, there is an environment these days in which law firms and corporations are seeking diverse counsel, and law firms such as mine – which has a diverse work force – can help meet those needs."
Garner's son is in law school now, and, like many parents, he hopes his son follows his path. "This field has matured so much now that it's a high-profile area," he adds.
Errol B. Taylor
Fitzpatrick, Cella, Harper & Scinto, New York
"I was educated as a scientist, like many IP lawyers are," Errol B. Taylor remarks. When he got out of college, he worked for a pharmaceutical company, and relatively soon, "I realized it wasn't something I wanted to do long term. I loved science, but didn't like being a scientist."
After a lot of soul searching, he settled on law school, but with the view of getting away from a career in science. "I wanted to litigate," he says. "I didn't have a real vision that I would become an IP attorney, but when I got an opportunity to work as a summer associate at a patent firm, I realized that's what I wanted to do."
Taylor specializes in litigation, patent interferences, and counseling regarding intellectual property transactions and licenses. By far, the most significant case in which he has been involved, he says, concerned Prilosec, an anti-ulcer drug that is one of the world's most prescribed medicines. In that case, he served as lead trial counsel and successfully defended AstraZeneca against claims that two patents relating to the prescription drug were invalid.
As one of the first minority lawyers hired by his firm, Mr. Taylor's practice has come a long way since his days as a senior associate. Then, he says, he had a major role in a case, and his firm talked frankly to local counsel and the client about whether his being an African-American would have any impact on the trial. "I remember thinking how strange we had to even deal with that issue," he says. "I've had a good work environment and progressive clients. Obviously, I don't think anyone would be hesitant to give me work now. I don't know whether in the past people have been."
Mr. Taylor believes several factors have led to his success – including the willingness of major clients early in his career to trust him to be the lead counsel on major cases. But, he adds, "There's no underestimating hard work. My hard work and my abilities have enabled me to capitalize on the opportunities I've been given."
Mr. Taylor, too, sees the IP field as "wide open for minorities – although their numbers are increasing rapidly, there's still a lot that needs to be done to attract minorities to this practice." Plus, he adds, it's an "incredibly satisfying area. In surveys of lawyers' satisfaction, patent attorneys are at the high end."
Irell & Manella, Los Angeles
Morgan Chu got into IP law by chance. He had been at Irell & Manella for about a year, and a client wanted the firm to take on a patent case involving computers. The firm said it didn't have any expertise in the area, but the client insisted. The company said it had patent lawyers in-house and would hire tech consultants, but it was convinced the case would go to trial and would need a first-rate trial lawyer. The company specifically wanted Morgan to handle the case.
"It was flattering and terrifying at the same time," Mr. Chu recalls. "When we took on the case, I found every book and treatise I could find on patent law – the firm basically bought me a complete patent library – and I read it all, cover-to-cover. We went to trial and won; it was appealed, and we won. After that, it was word-of-mouth."
Mr. Chu has since handled complex commercial cases in all areas, including patent, copyright, trademark, antitrust, First Amendment, and trade secret. His trial experience has included, for example, the first trial involving a patent on computer software in 1986 in which the jury invalidated a patent in favor of Mr. Chu's client. Recently, he served as lead trial counsel for the plaintiff in The City of Hope v. Genentech, in which the jury returned a verdict of over $500 million for Mr. Chu's client. These are skills Mr. Chu clearly mastered.
Mr. Chu has done all of this without a scientific degree, although he holds a Ph.D. in the social sciences from UCLA in addition to legal degrees from Yale and Harvard law schools. "Along the way, I always took math and chemistry," he says, "but I don't view a technical degree as a necessity for doing litigation – it's having a curiosity and a willingness to learn, and then being able to translate the material in a persuasive way to a jury or judge."
Mr. Chu recommends IP law not just for minorities, but also "for everyone on the planet who has any interest; anyone who's bright, creative, and energetic. I get to wake up every day and talk to the brightest people in the world – scientists, engineers, Nobel prize winners – all with ideas on how to make the world better. They sit down and teach my colleagues and me what they're doing, and talk about what mankind is striving to do, and we get to ask dumb questions. I can't think of a better job in the world."
We hope that this article helps to dispel the myth that there are no qualified minority IP partners to handle "bet the company" cases. These partners are setting precedent, breaking barriers, and creating a legacy for others to follow. Without regard to race or gender, they are among the best the legal profession has to offer!
Other Top Minority IP Partners
For companies who hire IP counsel, you do your company a disservice not to engage more outstanding and diverse outside counsel. In addition to the partners profiled, the following attorneys of color came highly recommended.
|A. Joy Arnold||Fish & Neave||New York|
|Brent O.E. Clinkscale||Womble Carlyle Sandridge & Rice, PLLC||Greenville, SC|
|Jeanne M. Gills||Foley & Lardner||Chicago|
|Cecilia Gonzalez||Howrey Simon Arnold & White||Washington, DC|
|Philip G. Hampton II||Gardner Carton & Douglas||Washington, DC|
|Reginald J. Hill||Jenner & Block||Chicago|
|James H. Johnson Jr.||Finnegan, Henderson, Farabow, Garrett & Dunner, LLP||Atlanta|
|Wayne M. Kennard||Hale and Dorr||Boston|
|William F. Lee||Hale and Dorr||Boston|
|Dwayne L. Mason||Akin Gump Strauss Hauer & Feld LLP||Houston|
|John R. Moses||Millen, White, Zelano & Branigan, P.C.||Arlington, VA|
|Frederick N. Samuels||Cahn & Samuels, LLP||Washington, DC|
|James D. Smith||Dewey Ballantine, LLP||Austin, TX|
|Kenneth Southall||Troutman Sanders LLP||Atlanta|
T. Sumner Robinson is the former Editor-in-Chief of the National Law Journal and the Los Angeles Daily Journal, as well as a former legal editor, reporter and columnist for The Washington Post. He currently is Editorial Director for Search and Navigation at America Online, based in Dulles, Va.
From the May/June 2003 issue of Diversity & The Bar®