Thank you for sharing!

Your article was successfully shared with the contacts you provided.
IP law is bigger than it has ever been. But we still decided to try to name the important players. So we asked practitioners, clients, government officials, and academics: Who has influence that extends beyond the interests of his own clients? Who shows leadership in the community of IP professionals? Whose work has an impact beyond her own company or university? The result is the following 19 vignettes of 22 movers and shakers (in no particular order). Did we miss someone who arguably belongs in this “Who’s Who”? Surely. We left some very worthy names on our cutting room floor. But we think all 22 men and women have earned the right to be named here. And we think their careers tell us something about the evolution of IP into the 21st century. — The Legal Times Editors J. Thomas McCarthy; University of San Francisco College of Law Ask anyone in the trademark field, and they will tell you that J. Thomas McCarthy stands tall above the rest. McCarthy, author of the authoritative six-volume McCarthy on Trademarks and Unfair Competition and go-to guy for companies like Coca-Cola and McDonald’s, is widely regarded as the nation’s top expert on trademark issues. A faculty member at the University of San Francisco College of Law, McCarthy has taught trademark and privacy matters full-time at the school for more than 35 years, while serving as of counsel to several local law offices. Today, McCarthy, 63, considers himself semi-retired. He teaches at the school one semester a year and devotes no more than one day a week to practicing in the San Francisco office of Morrison & Foerster. Most of his time is spent preparing updates for his reference texts. Along with McCarthy on Trademarks, he is also the author of McCarthy’s Desk Encyclopedia of Intellectual Property and the two-volume Rights of Publicity and Privacy. Like many other IP specialists, McCarthy earned his undergraduate degree in electrical engineering. From there, he proceeded directly to law school at the University of Michigan, where he graduated in 1963. A few years in private practice in San Francisco followed. And then McCarthy found his true calling in the world of academia. “It takes a certain kind of person to be a teacher,” he says. “It suits me. It’s a personal career choice. That’s why I stayed where I am for so many years.” In addition to writing and teaching about trademark law, McCarthy has also played a role in crafting IP legislation. As a member of the Trademark Review Commission, he helped draft the Trademark Law Revision Act of 1988, which, among other key revisions to the Lanham Act, provided for the filing of trademark applications based on “intent to use” the mark. McCarthy also sat on the American Law Institute’s Advisory Committee that drafted the 1995 Restatement of the Law of Unfair Competition. Over the years, the professor has received his share of accolades. He was nominated by two former students for the Brand Names Education Foundation’s 2000 Pattishall Medal for excellence in teaching trademark law. And in 1998, he received the American Intellectual Property Law Association’s Centennial Award in Trademark Law. — Bryan Rund Nicholas Godici, Esther Kepplinger, and Stephen Kunin; U.S. Patent and Trademark Office Take Commissioners may come and go, but Nicholas Godici, Stephen Kunin, and Esther Kepplinger abide. They’re the triumvirate who keep the Patent and Trademark Office running, the three most senior patent officials with a combined 88 years of experience at the agency. Named commissioner of patents last year, Godici, 50, has spent his entire career at the PTO, joining in 1972 as a patent examiner. “I remember the days of typewriters and carbon paper,” he says. A nonlawyer, Godici rose rapidly through the ranks, becoming a supervisor of 15 people in 1982. He’s now the boss of 4,500 — and still enthusiastic about the job. “I’ve had nothing but great, great experiences at the PTO,” he says. As commissioner of patents — the No. 2 job at the agency — Godici oversees all aspects of the patent business, including policies on examination, searching, and processing. Until President George W. Bush appoints a new PTO chief, Godici is running the place — a scenario that troubles the IP bar not one bit. Among Godici’s accomplishments is the creation of a framework for processing applications under the Patent Cooperation Treaty, which became a model for other countries. The Patent Cooperation Treaty provides a means for an inventor to file a standardized application with one country’s patent authority that can then be forwarded on to other countries where the inventor seeks IP protection. Godici has also led efforts to streamline and simplify PTO processes, resulting in reduced processing time and happier customers. “We’ve measured our progress with a survey and have seen a steady increase in satisfaction,” he says. Godici’s top two deputies are Kepplinger and Kunin. Kepplinger, 51, is deputy commissioner of patent operations — and the first woman at the PTO to have the word commissioner in her title. Like Godici, she joined the PTO as an examiner and never left — although when she started in 1973, only 25 to 30 of the agency’s 800 patent examiners were women. Kepplinger describes her current duties as “day-to-day operations — keeping the trains running on time — [overseeing] everything from when the application comes in to the receipt office through the actual examination to publication.” She has worked on increasing flextime for examiners, as well as designing alternate ways to use compensation to motivate employees. A biologist by training, Kepplinger was also the principal architect of the rules for filing biotech patent applications. Kunin, 53, is deputy commissioner for patent examination policy. A 31-year veteran of the agency who began as a patent examiner, Kunin now oversees changes in patent practice and procedures, sets examining priorities, classifies technical arts, and supervises the operations of the Patent Legal Administration, the Patent Cooperation Treaty Legal Administration, and the Office of Petitions. In real-life terms, that means virtually every hot issue in patents today lands on Kunin’s desk. In the past year, he says, much of his time has been occupied with putting together four major rule packages mandated by the American Inventors Protection Act of 1999 — a feat requiring “a huge level of effort.” The new rules cover publication of patent applications after 18 months, interparty patent re-examination, patent term adjustments, and procedures for requesting continued examination. Another challenge for Kunin has been the controversy over business method patents. Critics assailed the PTO for too easily granting such patents on Internet-related operations. Kunin has now set up the business method action plan, which calls for all such patents to receive a second review. He has also created guidelines and training materials to help examiners decide whether an invention is too obvious to patent. “It’s not simple,” says Kunin. “The best way to do it is to retrospectively look at business method applications that have gone through the public vetting process,” he says. Kunin also oversaw the revised examination guidelines for human gene patents. The new guidelines bump up the utility standard to make it more difficult to patent human genes unless the inventor can explain what the genes or gene fragments actually do. As for challenges on the horizon, he cites the need to establish international standards for electronic filing. “There is so much going on. Everyday, we’re in the newspaper,” says Kunin. “We’re no longer a green-eyeshade kind of operation.” — Jenna Greene Michael Kirk; American Intellectual Property Law Association For three decades, Michael Kirk has been one of the leading voices for IP on Capitol Hill. The chief U.S. negotiator for the TRIPS agreement — the World Trade Organization’s rules on intellectual property protection — and a key player in the development and passage of the American Inventors Protection Act of 1999, Kirk currently serves as executive director of the 12,000-member American Intellectual Property Law Association (AIPLA). Kirk, 63, also spent 31 years at the Patent and Trademark Office, where he was the first director of the Office of Legislative and International Affairs. He got his start as an engineer for Southern Bell (now Bell South). His interest in IP was sparked in 1960, when, as a second lieutenant in the Army, he became the liaison between the Proving Grounds in Aberdeen, Md., and the Army’s D.C. patent staff. “They had a lawyer, but he couldn’t understand the technical issues, so they thought they’d try an engineer, and I volunteered,” Kirk recalls. When he got out of the Army, he moved to Washington, D.C., and landed a job at the PTO as a patent examiner, while attending Georgetown University Law Center at night. “I finished in three years and about killed myself,” he chuckles. Then followed a stint in the general counsel’s office at the National Aeronautics and Space Administration, and then Kirk rejoined the PTO in 1967, focusing on legislative and international issues. The apex of his work came during negotiations over the Trade Related Intellectual Property Issues agreement, or TRIPS, during the Uruguay Round of the General Agreement on Tariffs and Trade. Talks began in 1987, and for three years, Kirk was the No. 2 man for the United States. A delegate from the Office of the U.S. Trade Representative took the leading role. But after three different people from the USTR came and left, Kirk recalls, “They said, ‘Kirk’s been around forever. Hell, put him in charge.’ ” So from 1991 until the end of the session in 1993, Kirk served as chief negotiator for the United States. “I spent a lot of years in the 1970s and ’80s trying to get different countries to implement intellectual property protection,” he says. “After years of frustrating bilateral consultations, to have actually participated in TRIPS negotiations, where [countries] are given trade leverage — it’s made a real difference.” He continues, “Now, if you’re going to be a major player in global trade, you have to honor IP.” Bruce Lehman, then President Bill Clinton’s first PTO commissioner, persuaded Kirk, an old friend, to take the post of deputy commissioner in 1994. But that was something of a mixed blessing: At the time, the job was a political appointment, which meant that after he left the PTO in 1995, Kirk, a longtime Republican, was subject to the five-year lobbying ban (since lifted) for Clinton appointees. Although Kirk was barred from any direct contact with the PTO until last year, he remained a player on Capitol Hill. To date, his biggest project at the AIPLA, an independent association of corporate, government, and academic lawyers representing owners and users of intellectual property, was the American Inventors Protection Act, passed in November 1999. Involved in the legislation “almost since the day it arrived,” Kirk says that much of his lobbying simply involved explaining the issues to members of Congress and their staffs. Although proud of his work, he admits, “We didn’t get the bill we wanted exactly.” Among his regrets: that Congress carved out an exception to the requirement that all pending patent applications be published within 18 months, and determined that third parties have no right to appeal the outcome of a re-examination proceeding to the U.S. Circuit Court of Appeals for the Federal Circuit. Kirk has also been involved in ICANN, the Internet Corporation for Assigned Names and Numbers, which was formed to take over Internet operation and management from U.S. government contractors. Until November, Kirk served as president of the IP constituency of the Domain Name Supporting Organization, which represents the views and interests of IP users worldwide. “I’m pleased with the efforts in the past year in the area,” Kirk says. “But IP interests are being attacked from all sides … It’s such an uphill struggle.” — Jenna Greene Ronald Myrick; General Electric Co. It’s a wonder Ronald Myrick has time to sleep. Chief intellectual property counsel for the General Electric Co., the Fairfield, Conn.-based Myrick is also the current president of the Intellectual Property Owners Association, vice president of the American Intellectual Property Law Association, and one of nine members appointed by the secretary of commerce to the Patent and Trademark Office’s Patent Public Advisory Committee. “It’s an opportunity to influence the environment we operate in,” is how Myrick explains his jam-packed schedule. “And it’s useful for me to know exactly what the rest of the world is doing and thinking.” Originally an electrical engineer, Myrick, 57, has split his career between law firm and in-house jobs. But all the while, he has remained active in IP issues, sitting on international panels, serving as a delegate for treaty negotiations, and taking a leading role in bar activities and industry associations. Over the past decade, he has delivered more than 40 speeches and written eight law journal articles. He even holds a patent of his own, for an escalator comb safety device. Among his career highlights, Myrick cites his role in putting together a coalition to push the Cooperative Research Act of 1984, which modified antitrust law to allow joint ventures between competitors for purposes of research and development. General counsel of the Dallas-based Mostek Corp. at the time, Myrick recalls looking on in the Roosevelt Room when President Ronald Reagan signed the bill into law. Myrick was also involved in advocating passage of the American Inventors Protection Act of 1999 and has lent GE’s heft to the current campaign on Capitol Hill to stop diversion of the PTO’s funds. While GE has consistently been a leader in volume of patent applications, the company during Myrick’s three-year tenure has been aggressively pursuing business method patents, filing 277 such applications in 1999 and more than 400 in 2000. “GE is quite innovative in economic and financial services,” he says, adding that in the next few years, he expects the company to file even more patent applications annually. As for himself, Myrick says the attraction of IP is simple. “It’s at the forefront of the technology that’s driving the world. And IP is one of the unique entities in the law where you’re actually creating assets.” — Jenna Greene Louis Pirkey; Fulbright & Jaworski Louis Pirkey didn’t choose trademarks. Trademarks chose him. “I started out to be a patent lawyer,” says Pirkey, whose undergraduate degree is in chemical engineering. But fate intervened in the mid-1960s when he joined the IP firm of Arnold, White & Durkee straight out of George Washington University Law School. Pirkey recalls that he was the most junior attorney in the small Houston firm. The three other lawyers, being more inclined to patent work, handed him all the trademark matters. The rest is history. “I kind of fell into it by default,” he remembers. “And evidently some people thought I could do it well.” Indeed. Pirkey, 61, is regarded by many in the field as the nation’s premier trademark litigator. Fifteen years ago, he defended Haagen-Dazs and Pillsbury in a suit brought by Baskin-Robbins over infringement of its “Pralines ‘N Cream” trademark for ice cream. The jury found that Baskin-Robbins had abandoned the mark by not stopping other companies from using it. In 1986, the court canceled the trademark’s U.S. registration. Currently, Pirkey represents ExxonMobil in its high-profile wrangle with Kellogg over alleged infringement of Kellogg’s “Tony the Tiger” mark. He’s also working on three separate infringement cases for 3M. Pirkey is immediate past president of the American Intellectual Property Law Association — the first trademark lawyer to hold that position — and sits on the executive committee. He sat on the board of the U.S. Trademark Association (now the International Trademark Association) and was a member of its Trademark Review Commission, which drafted the Trademark Law Revision Act of 1988 and lobbied Congress to pass those key changes to the Lanham Act. “It was a great experience, and I think we did a valuable service to the country,” he says about the legislation, adding that, “by and large, [the law] has been very successful.” Pirkey stayed with Arnold, White from 1964 until the firm’s merger last year with D.C.’s Howrey & Simon. Along with most of the other lawyers in Arnold, White’s Austin and Minneapolis offices, he then moved over to Fulbright & Jaworski, where he now practices in the Austin office. Locally, the IP bar has seen fit to recognize its hometown star. Last year, the Austin Intellectual Property Law Association endowed a writing award in his name at the University of Texas at Austin. The Louis T. Pirkey prize, worth $3,000, will go to the student with the best paper on IP law. “It’s a great honor,” says Pirkey. But looking back on his career, Pirkey is hard-pressed to name any one victory — or loss — that stands out. “I’ve been fortunate to be involved in a lot of interesting and wonderful trademark cases,” he says. — Bryan Rund Gerald Mossinghoff; Oblon, Spivak, McClelland, Maier & Neustadt Gerald Mossinghoff left some big shoes to fill when he stepped down as commissioner of the Patent and Trademark Office in 1985. Consider his legacy: a key figure in the creation of the U.S. Court of Appeals for the Federal Circuit, founder of the user fee system that funds PTO operations today, originator of the PTO’s automation program, and a prime mover behind the decision to transfer worldwide IP protection issues out of the forum of the World Intellectual Property Organization and into the realm of the General Agreement on Tariffs and Trade (GATT). Like so many of his peers, Mossinghoff, 65, was originally trained as an electrical engineer and joined the PTO as a patent examiner right out of college in 1957. “I came to town with $11 in my pocket,” he recalls. Four years later, when he returned to his native St. Louis to work for a law firm, he had a wife, two children, a law degree, a convertible Chevrolet, and, he chuckles, “$10. But I figure I did pretty well to get all that for one dollar.” During his tenure as PTO commissioner from 1981 to 1985, Mossinghoff displayed considerable acumen as an administrator, focusing more on politics than policy. “I delegated all the patent legal stuff, petitions to the commissioner, and so on,” he says. “I was working on getting us money and getting us the Court of Appeals for the Federal Circuit.” Early on, Mossinghoff recognized that the PTO’s budget, at the time $119 million, was not nearly enough, but that the cost-cutting Ronald Reagan administration was unlikely to give the agency a raise. His solution? The user fee system that now provides 100 percent of PTO funding. Another agency problem was record keeping — little wonder, since all files were on paper. Mossinghoff commissioned a study that found that, at any given time, seven percent of documents were missing or misfiled. So Mossinghoff began the massive program of converting PTO records to electronic format, allowing examiners to search and view documents without removing them from the system — a visionary concept in the early 1980s. In the international arena, Mossinghoff says he found himself frustrated after serving as U.S. delegate to a diplomatic conference on revision of the Paris Convention, previously the main international law on patents. He became one of the leading advocates for folding IP issues into the GATT, which ultimately led to the agreement on Trade Related Intellectual Property Issues, or TRIPS. As commissioner, Mossinghoff also assisted China in developing a patent system, visiting the country twice and setting up a “patent academy” at the PTO to train Chinese examiners. The first Chinese patent issued in 1985. In March 2001, Mossinghoff returned to China as part of a State Department delegation, delivering a series of speeches on IP protection to local officials. But Mossinghoff’s biggest legacy is his role in the creation of the Federal Circuit, which was established in 1982. Before the Federal Circuit consolidated patent appeals, he remembers, “There were five or six different sets of patent laws in the country, and forum shopping was a major part of litigation.” The original push for the Federal Circuit came during the Jimmy Carter administration and was strongly opposed by the American Bar Association. But when Mossinghoff took over as head of the PTO, he and Commerce Secretary Malcolm Baldrige championed the idea and secured the support of President Reagan. Their great advantage in being able to convince Congress, Mossinghoff recalls, was that with Democrats, “we made out like it was a Carter initiative, and with [Sen. Orrin] Hatch and other Republicans, we could make it out as a Republican initiative.” After leaving the PTO, Mossinghoff spent 12 years as president of the Pharmaceutical Manufacturers Association, which during his tenure changed its name to the Pharmaceutical Research and Manufacturers of America. For the past three years, he has been senior counsel at Arlington, Va.’s Oblon, Spivak, McClelland, Maier & Neustadt. — Jenna Greene Gerald Rosenthal; IBM Corp. For the past eight years, no company has received more utility patents in the United States than the IBM Corp. In the year 2000, the computer giant was awarded a record 2,886 patents — over 850 more than the second-place NEC Corp. From servers to software to material technologies to e-business, patents and the technologies they protect are the lifeblood of the Armonk, N.Y.-based corporation. Among last year’s patents were nearly 1,000 for software advances, about 1,000 for microelectronics, and 400 for storage technologies. “We’ve always taken [patents] seriously,” says Gerald “Jerry” Rosenthal, IBM’s vice president of intellectual property and licensing. Rosenthal, 60, is in charge of all things patented at IBM. He heads up the division of scientists and lawyers who devise and file patents, as well as the licensing division, which negotiates fees for outside use of those patented technologies. That’s a massive responsibility. IBM boasts about 19,000 active patents in the United States and about 34,000 active patents worldwide. The company states that its IP portfolio generated more than $1 billion in licensing royalties in the year 2000. Rosenthal joined IBM in 1968 as a systems engineer. He worked his way into the marketing side of the company, eventually getting involved in licensing matters. In the early 1980s, at the age of 41, Rosenthal enrolled in night classes at Pace University School of Law. Equipped with a law degree, he made his way up to the job of director of licensing. From there he was appointed head of the entire IP division, where he’s been now for several years. One of the keys to keeping up with technology, Rosenthal says, is making it easy for inventors to do what they do best. For instance, IBM stations many of its 150 in-house patent attorneys in the company’s regional offices, where they work directly with the inventors themselves. “It requires a great deal of cooperation from everybody to make sure we’re correctly identifying and licensing [technology] where it benefits us,” explains Rosenthal. As with any high-tech company, success depends also on anticipating new technologies. “You’ve always got to keep a lot of patent applications in the pipeline,” says Rosenthal. Perhaps we should anticipate a ninth straight year of IBM atop the patent list. — Bryan Rund John Lynch; Howrey Simon Arnold & White There are few lawyers who know more about genetically modified organisms than John Lynch. A patent litigator, Lynch focuses on the burgeoning and immensely complex area of biotechnology. In 1998, he defended one of his biggest clients, agro-tech developer Monsanto, against an infringement suit brought by Mycogen Plant Science. Mycogen sought $70 million in damages and an injunction against Monsanto for allegedly infringing on a patented process to create synthetic genes that cause plants to produce their own insecticides. The jury found that Monsanto did not literally infringe and that the patents were invalid. Lynch also argued the case before the U.S. Court of Appeals for the Federal Circuit. In February, that court affirmed the jury verdict of invalidity. “We thought we had a good case all along,” says Lynch. “After that time, a lot of people said they were surprised at the result, but I always thought we had a good case.” While biotech work makes up the bulk of Lynch’s practice these days, it hasn’t always been that way. “Looking at my career, I kind of evolved through technologies,” he says. In the mid-1960s, Lynch focused on patent work involving the tools and technologies of the oil industry, such as drill bits. Later, as the oil work dried up, he shifted over to the pacemaker industry. For more than 20 years, Lynch represented the medical technology producer Medtronic. He graduated from Rensselaer Polytechnic Institute in 1960. “I was kind of a product of the Sputnik era where engineers were going to save democracy,” he notes. His next stop was night classes at Fordham University School of Law. Lynch worked days at Hercules Power and later Union Carbide, preparing patent applications. After earning his law degree, he moved to Pensacola, Fla., for one year to work in-house at Monsanto. In 1966, he joined a five-lawyer IP firm called Arnold, White & Durkee, where he would stay for the next 30 years and eventually serve as managing partner. In that time, he helped oversee the growth of the Houston firm into a 150-lawyer operation with multiple offices. Arnold, White merged with D.C.’s Howrey & Simon last year. Today, Lynch practices in the Menlo Park, Calif., office of Howrey Simon Arnold & White. And while Lynch, 61, is not ready to retire anytime soon, he says he’s looking for new ways to help out around the firm. “What I’d like to do is get more into the area of guiding the younger people of the firm, helping folks along with some of the techniques that might help them.” — Bryan Rund Howard Coble; U.S. House of Representatives Though he sometimes describes himself as “an AM guy in an FM world,” Rep. Howard Coble (R-N.C.) is widely viewed as the go-to guy for intellectual property issues in the House of Representatives. As chairman of the Judiciary Subcommittee on Courts, the Internet, and Intellectual Property since 1995, Coble has sponsored two of the most significant pieces of IP legislation in decades: the Digital Millennium Copyright Act of 1998 and the American Inventors Protection Act of 1999. Coble, 70, readily admits he has “no practical experience in IP” — although he has a law degree from the University of North Carolina. He started to learn his way around the field when he was first elected to Congress in 1984 and landed a seat on the IP subcommittee, which had just seven members. The subcommittee has since grown to 22 members. It’s now one of the most popular assignments on the Hill. Under Coble, at once a Southern gentleman and a tenacious legislator, the subcommittee is also one of the most productive bodies on the Hill. The panel has churned out successful legislation on trademark treaty implementation, copyright term extension, plant patents, electronic theft, and more. One reason for this success is the generally bipartisan spirit of the members. “IP by its very nature should not be partisan. It should cut across partisan lines, and it does,” says Coble. To date, his biggest triumph is the American Inventors Protection Act, which he proudly calls the most significant change in patent law in 50 years. But its passage was not easy. The bill failed the first year it was introduced, in part because Rep. Dana Rohrabacher (R-Calif.), championing the views of some independent inventors, spoke out fiercely against it. The logjam broke when Rohrabacher had a change of heart. (Some point to his hiring of a new science-oriented staffer.) In the Senate, the bill was guided to victory by Judiciary Committee Chair Orrin Hatch (R-Utah), another towering figure in congressional IP. Coble has two main issues for the current session of Congress — his last as chairman due to term limits set by House Republicans. His top priority, he says, is to halt the practice of diverting user fees from the Patent and Trademark Office — or, as Coble calls it, “legalized larceny.” “PTO coffers are very tempting. There’s a lot of money down there. But the PTO needs it,” he says, citing shortages of examiners and equipment. Coble’s other goal is the passage of a database protection bill, which is backed by real estate agents, newspapers, and the stock exchanges. Describing his tenure as chairman as “a richly rewarding experience,” Coble adds, “Five or six years ago, people were very casual about IP, thinking of it as a bunch of eggheads. But IP contributes tremendously to the well-being of the economy.” — Jenna Greene Judges Pauline Newman and Alan Lourie; U.S. Circuit Court of Appeals for the Federal Circuit If we had asked this question a few years back, the answer would have been easy: The pre-eminent patent judge on the U.S. Circuit Court of Appeals for the Federal Circuit was Giles Sutherland Rich, hands down, no argument. But Judge Rich died in 1999. And since then, observers say, the court has not produced a jurist with as dominant a role on matters of patent law. How Federal Circuit judges debate and reach its IP conclusions is crucial, of course. The circuit hears all patent appeals from the federal district courts and from the Patent and Trademark Office. Given limited Supreme Court review, it often has the last word. Before the Federal Circuit was established in 1982, patent review was left to the other circuit courts, which ruled disparately and, according to critics, too often with a bias against patent holders. Among the first 12 judges named to the new court was Giles Rich, the man who left such large shoes to fill. But that’s not to say that the Federal Circuit today doesn’t have its IP standouts. Two names that come up again and again are those of Judges Pauline Newman and Alan Lourie, both of whom joined the court after long careers as in-house patent attorneys. Judge Newman, 73, is among the most well-respected judges on the federal bench and the longest-serving active judge on the Federal Circuit. A Reagan appointee, she joined the court in 1984 after a 30-year career with the chemicals and machinery manufacturer FMC Corp. At FMC, she held various posts — including, for the last 15 years of her tenure, that of director of the patent, trademark, and licensing department. In 1961, Newman took a leave of absence from FMC to serve a one-year stint as science policy specialist for the United Nations Educational, Scientific and Cultural Organization. She holds a master’s degree in pure science from Columbia (class of 1948), a doctorate in chemistry from Yale (class of 1952), and a law degree from New York University (class of 1958). Newman was one of four dissenters in last year’s controversial patent decision, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. In that case, an en banc panel voted 8-4 in favor of limiting the scope of patent claims under the doctrine of equivalents. The result is that it’s harder for patent holders to prevent competitors from producing a substantially identical product. Among those in the Festo majority, who reasoned that cutting back on equivalence claims would open the door to more innovation, was Judge Alan Lourie. A Bush appointee, Lourie, 66, was named to the court in 1990. Lourie earned a master’s degree in organic chemistry from the University of Wisconsin in 1958, a doctorate in chemistry from the University of Pennsylvania in 1965, and a law degree from Temple University in 1970. After a short stint at the Monsanto Co. as a chemist and a slightly longer stay at Wyeth Laboratories as a chemist and a patent liaison specialist, in 1964 Lourie made the move to the pharmaceutical company eventually known as SmithKline Beecham. There he stayed for 25 years, starting out as a patent agent and ending up as vice president of corporate patents and trademarks, and associate general counsel. Lourie served as a board member of the American Intellectual Property Law Association in the early 1980s. In 1982, he was named to the U.S. delegation to the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property. A little international experience can’t hurt. In addition to handling patent cases, the Federal Circuit is the appellate court for the U.S. International Trade Commission, the U.S. Court of International Trade, the U.S. Court of Federal Claims, the Merit Services Protection Board, and other decision-makers. The Federal Circuit bench consists of 11 active judges and one vacancy. It’s headed up by Chief Judge H. Robert Mayer, who assumed that role on Christmas Day, 1997. — Bryan Rund Herbert Schwartz; Fish & Neave Herbert Schwartz has a client list that would make any other IP litigator green with envy. Over his 35-year career, Polaroid, Motorola, Compaq, Digital Equipment, Coca-Cola, Revlon, and other top industry names have called on Schwartz to help them defeat those who trespass against them and their intellectual property. And defeat the infringers he has. Most spectacularly, Schwartz was lead attorney for Polaroid in its landmark infringement case against Eastman Kodak. After years of litigation, Kodak in 1991 was ordered to pay $925 million in damages — the largest-ever patent infringement award –for trespassing on Polaroid’s instant-photography technologies. Kodak was also forced to pull out of the instant-photography business. The Polaroid victory is surely Schwartz’s best-known. And he says, “It has to be my most rewarding. I think it really marked one of the turning points of intellectual property law in this country.” A few years later, he scored an important 2nd Circuit victory for Motorola in a case that helped define some of the ground rules for Internet content. In 1996, the National Basketball Association sued Motorola — along with Sports Team Analysis and Tracking System Inc. — for state law misappropriation. At issue was a Motorola pager that provided users with up-to-the-minute scores of sporting events, courtesy of STATS. The district judge barred the transmission of real-time game data over the pagers. On appeal, the 2nd Circuit held that, while a “hot news” misappropriation claim was not pre-empted by the federal Copyright Act, the facts of the paging service did not meet the definition of “hot news” misappropriation because the transmissions did not free-ride on the NBA’s product. “It’s an important Internet lawsuit because it said that Motorola and AOL were free to broadcast in real-time and over the Internet the play-by-play scores of the games,” explains Schwartz. “People who follow Internet law know the case well.” Ironically, while the victor in these cases has made his reputation in IP law, Schwartz, 65, began his career wanting to practice antitrust law. But in 1964, as a second-year law student at the University of Pennsylvania, he decided to make use of his undergraduate electrical engineering degree. He spent that summer at New York’s Fish & Neave, a prestigious patent litigation boutique that, over the years, had represented such inventors as Alexander Graham Bell, Thomas Edison, and the Wright brothers. As it turned out, Schwartz had found his calling. “I had been a good student at Penn,” remembers Schwartz, “and my professor told me not to go into patent law because he said I would be throwing away a promising legal career.” As Schwartz recalls, “Patent law was seen as a backwater.” But Schwartz didn’t listen. He returned to Fish & Neave after graduation, and there he built his career. “I like the people. I like the different topics,” he says. “I’m not really a science freak. I enjoy the science, but I’m not wrapped up in it.” As for patent law being a rapid road to obscurity: In 1999, Schwartz was selected patent litigator of the year by Managing Intellectual Property magazine. And he’s the author of Patent Law and Practice, a manual distributed to every sitting federal judge. — Bryan Rund Donald Chisum; Santa Clara University School of Law Many patent lawyers lay claim to at least some formal background in science or technology. Donald Chisum is not one of them. While the technical jargon might have come easier to someone with a background in engineering rather than economics — Chisum’s undergraduate major — he says he picked things up the old-fashioned way: by keeping an open mind and being eager to learn. It seems to have paid off. Today, Chisum, a professor at Santa Clara University School of Law, is one of the foremost experts on patent law in the country. A prolific writer, he is the author of Chisum on Patents, a 15-volume treatise that is considered the authoritative collection of thought on the subject. He also co-wrote Understanding Intellectual Property and is a frequent contributor to legal journals, including the Quarterly Journal of the American Intellectual Property Law Association, for which he once served as editor. In the spare time he doesn’t have, Chisum is of counsel at Morrison & Foerster in Palo Alto, Calif. The majority of his time, though, is spent revising and updating the latest edition of Chisum on Patents and logging hours in the classroom. “What I like about academia is working with young people,” he says. “It keeps you mentally and emotionally young.” It also gives him an opportunity, he says, to explore ideas without getting boxed into any one client’s position. One of Chisum’s own projects, launched just several years ago, is a five-week exchange program for U.S. law students to attend the prestigious Max Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich. In 1979, Chisum was a visiting scholar there. Chisum has testified on numerous occasions before Congress, in federal district courts, and before the International Trade Commission. Born in 1944, Chisum is a 1968 graduate of Stanford Law School. After clerking at the 9th U.S. Circuit Court of Appeals, he was a professor at the University of Washington School of Law from 1969 to 1996. — Bryan Rund Donald Dunner; Finnegan, Henderson, Farabow, Garrett & Dunner In the world of patent litigators, Donald Dunner is king. Well, one of them, anyway. And while he’s well known for his lawyering at the trial level, it’s in handling disputes before the U.S. Circuit Court of Appeals for the Federal Circuit that Dunner really shines. “I’ve probably handled more appeals to the Federal Circuit than any other private practitioner,” he told Legal Times last year. Mattel, for example, banked on Dunner’s expertise after the company lost at trial in a patent infringement suit brought by Jerome Lemelson over Mattel’s Hot Wheels toy cars. Lemelson, who owned about 500 patents, claimed that Mattel had infringed his patent on a toy racing track. The jury hit Mattel with a $70 million judgment. Dunner was brought in to argue the appeal. And happily for Mattel, he convinced the Federal Circuit that there had been no infringement. When asked to name the most significant event in his career, however, Dunner, 69, points not to a court victory but to the formation of the Federal Circuit in 1982. Dunner helped draft the court’s original rules of practice and procedure and chaired the court’s advisory committee for 10 years. By requiring that patent appeals go directly to the new court, regardless of their origin, the Federal Circuit drastically changed how patent cases are litigated. The formation of the circuit also signaled a sea change in terms of how patent law was perceived by other lawyers. “It was always that patent lawyers were the butt of nerd jokes,” says Dunner. “Now everyone wants to be part of an IP practice.” The earlier lack of respect doesn’t seem to have dissuaded Dunner. A 1958 graduate of Georgetown University Law Center, he jumped into his chosen field even before finishing law school: From 1955 to 1956, he worked as a patent examiner at the Patent and Trademark Office. And from 1956 to 1958, he clerked for Chief Judge Noble Johnson of what was then the U.S. Court of Customs and Patent Appeals. After law school, Dunner worked at two small D.C. firms before joining in 1962 the firm that came to be known as Lane, Aitken, Dunner & Ziems. In 1978, he made one more move — to D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner. In addition to his law practice, Dunner has played an active role in IP law in many other ways. He’s written books on patent law and practice. He’s taught at the law schools of George Washington and American universities. In the late 1970s, Dunner served on President Jimmy Carter’s Advisory Committee on Industrial Innovation. In the early 1990s, he was also tapped for the commerce secretary’s Advisory Committee on Patent Law Reform. Dunner has been president of the American Patent Law Association (now the American Intellectual Property Law Association) and chair of the American Bar Association’s Section of Intellectual Property Law. And not surprisingly, his name has often surfaced on short lists to fill vacancies on the Federal Circuit. — Bryan Rund Marybeth Peters; U.S. Copyright Office As register of copyrights, Marybeth Peters is used to life outside the spotlight. Peters heads up the U.S. Copyright Office, which is something of an oddity among federal agencies. Strictly nonpartisan, the office is part of the legislative branch by way of the Library of Congress. Its mission is to administer copyright law, create a public record, and provide technical assistance to Congress and the executive branch. Traditionally, that’s been tame stuff. That is, until the advent of digital technology and the Internet, which allow perfect copies to be made cheaply and distributed widely. In recent years, copyright issues have taken on a whole new importance. Late last year, Peters leapt headlong into one of the hottest regulatory battles in cyberspace. Exercising what critics called an unprecedented use of her legal authority, Peters, 61, determined that radio stations must pay royalties for streaming music over the Internet — even though they don’t pay royalties for broadcasting the identical content over the airwaves. The regulation incurred the wrath of the National Association of Broadcasters and radio stations across the country, which filed suit to block it in January. More headaches are likely to follow for Peters. Members of the bar expect the Copyright Office to issue rules addressing the royalty relationship between composers and the record industry for music streamed over the Internet. Another concern is copyright issues related to temporary copies created as part of the streaming process. An even larger question is how to apply the doctrine of first sale to cyberspace. When a person buys a physical book or album, it’s been settled law for 100 years that he has the right to resell it. How does this apply to something purchased by downloading? And recently, Peters wrote that a publisher’s right to reproduce and distribute a collective work does not include the right to display the work on a computer, nor does republication in an electronic database qualify as a revision of a collective work. That clearly backs free-lance writers in the current Supreme Court case of New York Times Co. v. Tasini. What all this means is that Peters will play an increasingly vital role in the New Economy — and, in the process, will test the delicate bounds of legal authority of the top copyright officer to render opinions, define legal terms, and interpret issues. Peters readily admits that navigating cyberspace will be one of the greatest tests of her career. “It’s a very interesting time to be in copyright because there’s an ability to craft new solutions and new rules,” she says, “but you do that without certainty that you’re going to succeed.” Peters began her 35 years at the Copyright Office as a music examiner while studying law at George Washington University. Over the years, she’s been chief of both the Examining Division and the Information and Reference Division, policy planning adviser, and (her favorite) acting general counsel. From 1989 to 1990, she took leave to serve as consultant to the World Intellectual Property Organization in Geneva. Peters has held the top job since 1994. The day-to-day business of running a 500-employee agency is not, Peters admits, her favorite part of being register of copyrights. But being in a position to shape the rules in an increasingly interesting field outweighs the downsides, she says. “The fun part,” says Peters, “are the legal issues, the things you never thought of that keep coming up, that keep you intellectually stimulated.” — Bryan Rund Gerald Hosier; Lemelson Foundation In 1989, Hosier & Sufrin, a four-lawyer outfit in Chicago, was collapsing because of disagreements between founders Gerald Hosier and Barry Sufrin. According to a breach-of-contract suit that Sufrin filed against Hosier in 1995, Sufrin walked away with 42 of the firm’s clients and $1 million in annual billings. Hosier walked away with only one client, but you won’t hear him complaining. His client was Jerome Lemelson, an eccentric and prolific inventor who once bragged that he held more patents — over 500 with about 75 pending — than anyone except Thomas Edison and Edwin Land. Hosier and his client — which, since Lemelson’s death in 1997, has been the for-profit Lemelson Foundation — have enjoyed stunning success in scoring court victories and settling more than 700 claims against major corporations on the grounds that they infringed on bar-code technology patents held by Lemelson since the 1950s. In 1954, Lemelson applied for the first of many patents relating to a machine vision device. For years, he kept those applications pending while making additions to the patent claims that broadened their scope. By the time Lemelson sealed his numerous applications and the patents issued, it was already well into the 1980s. Many businesses were using bar codes after coming up with the idea themselves. Critics say Lemelson took advantage of a system that allowed him to delay these so-called submarine patents. But Hosier, 59, blames the system itself for delaying approval of Lemelson’s patents and for keeping his inventions hidden for so long. “Lemelson isn’t the one that kept it secret,” he says. “The statute kept it secret. It’s kind of a bum rap.” Once the patents did issue, the lawsuits — and the threats of lawsuits — started flying. Not surprisingly, most companies have chosen to settle rather than try their luck in court. Those settlements and other winnings, according to Hosier, have netted Lemelson and his foundation, which continues to push the suits, around $1.2 billion and counting. Lemelson’s treasure trove of patents has made Hosier, who practices from his homes in Las Vegas and Aspen, Colo., one of the wealthiest attorneys in the land. In 1992, an especially good year even for Hosier, he says he brought in more than $150 million in contingent fees and earnings from Lemelson and other clients. Hosier estimates that Lemelson’s patents in total have earned him “several hundred million” dollars. Enough, he says, that he can afford to buy a $22 million jet. Currently, Hosier, attorney Richard Lustiger of Scottsdale, Ariz., and a team of nine or so others are embroiled in five different suits in Arizona federal court against retailers, electronic distributers, and a host of other corporations alleging infringement of the bar-code technologies. Those cases may be stayed pending another case in Nevada federal court, in which an alliance of manufacturers of bar-code machinery have filed a counterclaim against the Lemelson Foundation to disprove the inventor’s claim to the technology. Hosier, a graduate of De Paul University College of Law, also holds an electrical engineering degree from Northwestern University. — Bryan Rund Steven Friedman; Dilworth Paxson Many patent lawyers have never heard of Steven Friedman. But odds are they’ve heard of State Street. Friedman, co-chairman of the litigation group at Philadelphia’s Dilworth Paxson, won that case. In State Street Bank & Trust Co. v. Signature Financial Group Inc., the U.S. Circuit Court of Appeals for the Federal Circuit upheld the validity of Signature’s 1993 patent on software for managing mutual funds. The decision confirmed the legitimacy of so-called business method patents. And the resulting publicity seemed to galvanize a new era in patent law, especially as it relates to the Internet. “We had a sense it would be significant. And it was,” says Friedman, who took control of the case one year after it was filed. “The entire patent bar was caught asleep on it, and it kind of jarred them.” But even he didn’t predict the fury of the response. Since the 1998 ruling, applications for business method patents have skyrocketed. Last year, the Patent and Trademark Office tightened its review of such patent applications. And there have been rumblings from Congress about changing the rules for business method patents. “I did not see this at the beginning,” admits Friedman. “If I was that smart, I’d be running the country.” While State Street garners all the attention now, Friedman, 55, built his IP r�sum� on a series of successes dating back to the 1980s. For example, he represented Nutri/System in a series of successful infringement suits against weight-loss competitors Jenny Craig and Nutra-Bolic. Friedman graduated from the University of Pennsylvania Law School in 1971. After clerking at the Pennsylvania Supreme Court, he joined what is now Dilworth Paxson. Ironically, one of the most important computer-related cases was won by a lawyer with no formal technical education. But Friedman, who studied history as an undergraduate, says that winning cases is, first and foremost, a matter of good lawyering. “Sometimes having the complex litigation skills is as important as a substantive IP background,” he says. “I’m not Bill Gates, but I understand the technology pretty well.” In addition to his domestic work, Friedman devotes significant time to serving high-tech clients in Israel, a country with which he has close ties. He counts former Prime Minister Benjamin Netanyahu as a childhood friend, and he served for 11 years as general counsel in the United States for the Likud Party. Friedman also sits on the board of governors of the American Jewish Committee. — Bryan Rund Hilary Rosen; Recording Industry Association of America Hilary Rosen isn’t a lawyer. But as president and chief executive officer of the Recording Industry Association of America, she has been front and center in some of the most high-profile legal wrangling of the digital age. “I’ve been here at the threshold of a new era of music delivery,” says Rosen. “It’s awfully exciting.” “Exciting” may be an understatement. For some time, legal thinkers have been pointing out that the explosive growth of the Internet inevitably challenges the most basic premises of copyright law. But many of the early skirmishes were more technical in nature — i.e., unlikely to excite the popular imagination. Not so with the RIAA’s battles against Napster and MP3.com. Millions of people have used the online music-swapping services. Millions are watching to see how the RIAA’s court victory requiring Napster to remove infringing copies of recorded music will play out in real cyberspace. And Rosen, as head of the RIAA, is playing a leading role in shaping the way music travels the Internet. Rosen, 43, is the voice in Washington of the $14 billion-a-year sound recording industry. According to the RIAA, its 350-plus members account for 90 percent of all legitimate recordings sold in the United States. Rosen joined the RIAA as its first government relations director in 1987. She was named president and CEO in 1998. Previously, she had been a lobbyist, primarily with Liz Robbins Associates. She also headed up her own consulting firm, Rosen Government Affairs. And she’s worked on the transition teams of Sen. Dianne Feinstein (D-Calif.) and former Sen. Bill Bradley (D-N.J.). On the Hill, Rosen has used her close relations with key decision-makers to push for stricter anti-piracy laws — most notably, the landmark Digital Millennium Copyright Act of 1998. The DMCA represents one significant effort to adjust copyright law to the demands of the Internet, though its full implications have yet to be hashed out in court. Rosen does not confine her advocacy to strictly music-related causes. She sits on the boards of directors of the National Advisory Council for Artists for a Hate-Free America, the Human Rights Campaign Foundation, and the National Cancer Foundation, among others. She’s a founding member of Rock the Vote, an initiative to increase activism among teen-agers. In 1997, the American Civil Liberties Union honored Rosen with its Torch of Liberty Award for free speech advocacy. — Bryan Rund Pamela Samuelson; Boalt Hall School of Law Pamela Samuelson is a genius. No, really. In 1997, the Internet guru and Boalt Hall School of Law professor was one of 23 winners of a $295,000 “genius grant” from the John D. and Catherine T. MacArthur Foundation. This no-strings grant allows recipients to use the money as they like, whether it’s to advance their expertise on a particular subject, delve into a new area of study, or change careers. Samuelson has so far opted to put much of that money back into research, hiring assistants to help with ongoing projects. While the award certainly garnered her attention, it didn’t take a genius grant to establish Samuelson’s place among the nation’s top academics in intellectual property law. Her prolific writings on the role of IP rights on the Internet, especially her outspoken opposition to expanding copyright protections into cyberspace, have drawn her national attention. At the University of California at Berkeley, she adds luster to the IP program that other IP professors named the best in the country, according to the U.S. News & World Report 2001 rankings. In the past two years, Samuelson and her husband, Silicon Valley executive Robert Glushko, have given millions to fund public policy programs with the aim of helping to shape a consumer-friendly Internet. As Samuelson sees it, “the public interest is underrepresented in IP and technology debates. Who is out there to represent the little guy?” In 2000, Samuelson and her husband gave $2 million to Boalt Hall to establish the Samuelson Law, Technology and Public Policy Clinic. Just this year, the couple donated $1.5 million to American University’s Washington College of Law to establish a similar clinic. Samuelson’s longtime friend and ideological ally Professor Peter Jaszi will serve as director. In addition to her professorial duties, Samuelson, 52, is a director of UC-Berkeley’s Center for Law & Technology, which she helped establish in 1995. She also holds an appointment at Berkeley’s School of Information Management and Systems. After graduating from Yale Law School in 1976, Samuelson signed on as an associate at New York’s Willkie Farr & Gallagher. She left to take a teaching post at the University of Pittsburgh School of Law, where she stayed until moving to Berkeley in 1996. — Bryan Rund Herbert Wamsley; Intellectual Property Owners Association If a friend in need is a friend indeed, then the Patent and Trademark Office has a true ally in Herbert Wamsley. As executive director of the Intellectual Property Owners Association (IPO) for the past 18 years, Wamsley has been out front in the fight to stop Congress from diverting revenue from the PTO. The IPO represents the views of patent and trademark holders — predominantly large industrial or technology-based manufacturing companies in the United States — which pay the filing fees that ostensibly fund PTO operations. But since 1992, Congress has been siphoning off millions in agency income and using the money to pay for unrelated projects. Last year, the House passed a budget that would have withheld a record $295 million from the PTO. The IP community fought back, and perhaps the loudest voice was that of Wamsley and the IPO. One of his key moves was hiring legislative consultant David Taylor, an expert on appropriations procedures, to scrutinize the process. At the same time, the IPO rallied its heavy-hitting corporate members to tell Congress to quit taking the PTO’s money. The campaign paid off. Roughly $182 million was restored to the PTO in the final fiscal year 2001 budget. “Our goal ultimately is to separate the PTO from the appropriations process,” says Wamsley. “Our short-term goal is to enable the PTO to spend all the money it takes in.” Originally an electrical engineer, Wamsley, 58, joined the PTO as a patent examiner in 1964, attending Georgetown University Law Center at night. He worked at the agency for 18 years, including stints in the Office of Legislative Affairs and as director of trademark examining. Wamsley left the PTO in 1983 to head up the IPO, which at the time had about 50 corporate members. That number has since doubled, and the group has also recently added almost 100 law firm members. In his years at the IPO, Wamsley counts the Process Patents Amendments Act of 1988 as a career highlight. Over five years, Wamsley lobbied Congress and coordinated an industry coalition pushing for the legislation. Now patent holders are allowed to claim infringement when products made offshore using patented processes are imported into the United States. Wamsley was also involved in pulling together coalitions to lobby for the American Inventors Protection Act of 1999. “The 1980s and ’90s have been a wonderful time to be employed in the field of intellectual property rights,” says Wamsley. “It’s been a time of incredible recognition of the importance of IP rights.” — Jenna Greene

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.