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For nearly a decade, GlennRhodes has been shuttling back and forth to the Far East, traveling monthly on10-day to two-week trips to Korea, China, Hong Kong and Taiwan. More thananyone else at Howrey Simon Arnold & White, the Menlo Park, Calif.-basedpartner has had his ear to the ground regarding patent protection in Asia’sfluid economies. “Glenn Rhodes is theguy,” says John Lynch, who co-chairs Howrey Simon’s intellectual propertypractice group. “Whenever anything happens, I just pitch it to him andforget it.” But late last year, the Taiwanlegislature pulled a fast one. It suddenly removed from the books a law thathad established criminal liability for patent infringement. “It caught us offguard,” says Rhodes, who had known that lawmakers in Taiwan wereconsidering changes last June. Instead, the legislature didn’t take up theissue until October and then, adds Rhodes, “passed a law ratherquickly.” Though the criminal liabilitylaw had already been defanged — penalties had been reduced several years agofrom potential prison sentences to nominal fines — it remained vital toHowrey’s patent clients. That’s because search and seizure orders under the lawprovided the only opportunity for litigants to obtain discovery. While it fellshort of the document discovery, answers to interrogatories and depositionsavailable to litigants in U.S. courts, at least it was something. Ostensibly, Taiwan abolished thecriminal liability law in order to comply with entry requirements into theWorld Trade Organization. In doing so, however, Taiwanese legislators”took the only discovery mechanism out of the law,” says Rhodes.”And they didn’t replace it with anything else.” As a direct result of thelegislative action, two of Howrey’s pending criminal infringement cases weredismissed, leaving the firm to pursue supplemental civil actions. One caseinvolved a process patent for the production of a chemical used in makingplastics, while the other related to an American tool manufacturer’s design forpliers. Rhodes, along with Houston-based associate Ira Finkelstein and localcounsel in Taiwan, has since been battling over whether their clients can gainaccess to accounting records and samples seized in raids under the now-defunctcriminal law. Rhodes’ Taiwan challengeillustrates the kind of legal bushwhacking he’s become accustomed to whilepracticing in some of Asia’s modernizing legal environments. While China andTaiwan’s November acceptance into the WTO is intended to represent a new era ofeconomic, legal and regulatory standardization, the reality lags behind theideal. Even in countries with more liberal discovery rules, such as Korea, andin common law jurisdictions like Hong Kong and Singapore, American lawyersoften encounter unique and unfamiliar mixes of law, procedure and practice. In Korea, for instance, raids inthe name of discovery were permitted under civil patent infringement law.However, no judge had ever authorized one, Rhodes says, until 1996, when anaggressive young judge permitted Rhodes’ client to raid a defendant accused ofinfringing the same chemical process he is now litigating in Taiwan. In thatcase, the judge went along on the raid. A decade in the field,meanwhile, has left Rhodes more pessimistic about patentees’ rights in Asiathan when he first visited in the early 1990s as an Arnold White & Durkeepartner. At the time, he was on loan to Intel Corp., a client of the firm,where he was coordinating patent litigation against a Taiwanese semiconductormanufacturer. “Ten years ago, I was muchmore optimistic … that given the right amount of effort, the systems in thevarious countries could be made to work for the patentee,” he says.”Now I’m much more realistic, and maybe more jaded.” It’s not that the climate forpatent holders has worsened, Rhodes says. Rather, he’s just gotten a closerlook at the difficulties of litigating without the political and proceduraladvantages taken for granted in the United States — from the government’swillingness to enact laws aimed at enforcing intellectual property rights, tothe bonanza of settlement-triggering information often uncovered in discovery.By contrast, in what Rhodes calls “total self-help,” countries likeChina and Taiwan, where there is “essentially zero discovery,” hegenerally must pin his hopes for pretrial evidence on private investigators. Whenhis cases are set for hearings or trials, he often confronts strict timelimitations and non-specialist judges. It’s hard work, he says, to”present a simplified case in a short time to a judge who’s not very wellversed in the patent law.” Despite the rough edges and longodds Rhodes faces in jurisdictions like Taiwan, his stateside partner RobertTaylor says the forces of globalization can’t be ignored. “I think that we don’t livein a world where it’s even safe any longer to think of Asia as a niche marketfor legal services,” says Taylor. “We live in a global world wherecompanies from all over the world do business all over the world.” As Western-style IP lawpenetrates the Far East, so do the opportunities for the kind of gold rush thathas swept the United States in the years just before and since the creation ofthe Federal Circuit in 1982. As Rhodes says of his sometimes Sisyphean tasks:”There’s a lot of money at stake, so it’s worth a shot.” Although Howrey has yet to hangout its own shingle in Asia, a Hong Kong office is under discussion, says ChrisTill, the firm’s communications director. “It’ll be demand-driven,”she says, referring to the prospective outpost. “At some point, you needto be in the community.” With or without an Asian branch,chasing IP business to the far ends of the Earth — and squeezing revenue outof its specialty practices — has been central to the business plan at Howreysince a merger two years ago brought together Washington, D.C.’s Howrey &Simon with Houston-based Arnold White & Durkee. Nowhere is the merger morefully realized than in Menlo Park, the only office where lawyers from the twofirms “actually had to move in together,” as Rhodes says. The combined firm focuses almostexclusively on the three historically strong practice areas of its forebears –IP, antitrust and complex litigation. The IP group accounts for roughly 200 ofthe firm’s 500 lawyers, including most of the attorneys in Silicon Valley, saysLynch, the senior Menlo Park partner from the Arnold White side of theequation. He and Taylor, his Howrey-side counterpart, both say the merger hasgiven lawyers like Glenn Rhodes more depth, breadth and support. “Howrey had a fullydeveloped litigation and appellate practice, and Arnold White had great depthat the patent lawyer side of the equation. It gave both firms a very deepbench,” says Taylor, who left Pillsbury Madison & Sutro after 26 yearsto open the Menlo Park office of Howrey in 1996. “The two firms combinedjust had so much synergy it was a very easy decision, and in retrospect a verygood one.” Lynch notes that Howrey broughta premier International Trade Commission practice to the marriage, while ArnoldWhite had more experience in biotech litigation. “We’re stronger anddeeper than we were before in pure IP,” he says. But the real benefits ofthe merger, he adds, are in cross-selling between the practice groups.”Where we’re really seeing the chemistry come out, I think, is that we’reable to get antitrust expertise to our IP clients” and vice versa. The combined firm hasaggressively gone about acquiring IP lawyers. In late 2000, it opened an officein Irvine, Calif., by hiring five IP lawyers from the dissolving Orange Countyoffice of Howard, Rice, Nemerovski, Canady, Falk & Rabkin. A year ago, itopened a London office staffed with IP specialists from all over Europe. Andlast summer, it took on a half-dozen partners from Chicago’s Marshall, O’Toole,Gerstein, Murray & Borun, including name partner Edward O’Toole. Howrey has also cast a broad netin solo partner hires — ranging from the scholarly Jeffrey Frey, an appellatespecialist and fluent Japanese speaker who had worked for Howrey & Simon asan expert witness and became a lawyer after 20 years as an electricalengineering professor, to boosterish and politically connected Q. ToddDickinson, who headed the U.S. Patent and Trademark Office during the Clintonadministration. Dickinson, who co-chairs the firm’s IP group along with Lynch,has focused on the transactional side of the practice and says he wants tobuild the firm’s lobbying presence in Washington. Frey and Dickinson, alongwith Rhodes, are leading the push for an office in Hong Kong. Two high-profile hires have comefrom the corporate sector. Koos Rasser, former chief patent counsel at Proctor& Gamble, was recruited to head the London office, which is known as HowreyEurope. Roger May, longtime in-house attorney at Ford Motor Co., started lastfall and is building a Chicago-based IP consulting venture. The expansion is set to continuefor the new year, with a Brussels office of Howrey Europe due to open thisspring. An office in San Francisco is also a possibility, according to Lynch.With the implosion of the city’s commercial real estate market over the pastyear and the Silicon Valley office’s contingent of city-dwelling commuterseager to be rid of the daily drive to Menlo Park, a San Francisco outpost hasnewfound appeal, says Lynch. Howrey recently expanded itsMenlo Park quarters. But even with 30 or 40 new offices, only 13 remain vacant.”For a five-year horizon, we don’t have enough room in this office,”says Lynch. Howrey’s bottom line has beenhard to ignore. In 2000, the year of the merger, the firm rocketed to $770,000in profits per partner — a 34 percent increase over 1999, according to The AmericanLawyer magazine, which is affiliated with The Recorder and law.com. Though thenumbers aren’t final yet, Lynch predicts that 2001′s partner profits will riseby a “double-digit percentage” again. Over the past year, a periodthat has been bleak for many firms, Howrey has stayed busy. It hasn’t resortedto layoffs, and it made 13 new partners in November, including six from the IPgroup. “We haven’t suffered anyhiccups as far as our workload or as far as income or collections areconcerned,” Lynch says. He attributes that to the firm’ssticking with its strengths, including intellectual property work. “Wejust didn’t have any of this go-go stuff,” Lynch says. “We just didour work. I’m one of those who believe that you can’t be all things to allpeople. I think that the specialties will win out and that our competencies inthese areas will win out.”

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