Members of Cantor Colburn’s litigation team. ()
Cantor Colburn is a law firm. And a haven for scientists.
“I think almost 90 percent of our lawyers have a science degree. We’re either bored or we like to study,” joked the firm’s cochairman of litigation, William Cass, who has a mechanical engineering degree from Worcester Polytechnic Institute. “We have people with all levels of expertise.”
All those biochemists and computer scientists are needed if you’re going to handle IP cases nationally and against some of the nation’s biggest law firms. And that’s exactly what Hartford-based Cantor Colburn has done. The rare combination of legal, scientific and business expertise is a major reason Cantor Colburn was chosen for a Connecticut Law Tribune Litigation Departments of the Year award in the intellectual property category.
“We have a very large chemical group,” said Michael Rye, the other litigation cochairman. “They have Ph.D.s in chemistry. They have a law degree, but they aren’t litigators. We can lean on them to help us out with the technical areas we may not have the expertise in.”
Among the 40-year-old firm’s strongest suits are patent infringement cases. The firm’s 14 litigators—out of about 100 total lawyers—represent plaintiffs and defendants, patent owners and accused infringers. They have traveled to roughly 30 states to provide counsel for multinational companies and startups alike, not to mention individual inventors.
Opponents include companies such as pharmaceutical giant Pfizer and electronic imaging titan Nikon. Many clients are in high-tech fields such as aerospace, biotechnology, pharmaceuticals, telecommunications, and software and chemical engineering. Some of the technologies that have been the focus of litigation include precision instruments, fiber optics, microwave circuit boards, pharmaceutical and drug formulation, LED technologies and corn oil extraction technologies.
Cass said one of the challenges lawyers have is boiling down and presenting complicated information.
“You have to come up with a way of explaining it in simple terms for a jury to understand,” Cass said. “If you can explain the technology to your mother or a layperson,” there’s a good chance you will be able to explain it to the jury.
The firm’s strategy is to assign a trial team at the very beginning of each case and involve the lead trial attorney in every step along the way, including case management, document review and discovery. The goal is for the lead counsel to create a comfort level—and an opportunity for input—rather than have the litigator try to learn on the fly just before the trial.
“We typically pair an attorney who also has technical knowledge in the field at issue to assist throughout the case,” Cass said. “It’s very hands-on. That way, you don’t get to trial and have a new partner trying the case.”
One of Cass’ favorite cases involved defending a manufacturer of dental products. The company was sued for possibly infringing on a patent for lithium disilicate, a ceramiclike material used to simulate the appearance of natural teeth. The lawsuit asserted that the formula for Cass’ client’s lithium disilicate product was too close to a previously patented one.
“At one particular meeting, I noticed that one of the client’s employees had previously invented a similar porcelain,” Cass said. “I pointed out that if [that] prior formula overlapped the asserted patent formula, the patent would be invalid” and Cass’ client would be in the clear.
But figuring out whether the formulas overlapped was no easy task. One of the formulas referred to the “weight” of the ingredients in the product. The other referred to “moles,” which is a unit of measurement used in chemistry. To do a valid comparison, the moles had to be converted into a comparable unit of weight.
Cass said the dental manufacturing company’s general counsel and Dr. Leah Reimer, who cochairs Cantor Colburn’s chemical practice, put their minds to the task. “In an hour or so we were able to establish that the employee’s own earlier patent was prior art,” meaning it was similar enough to invalidate the plaintiff’s patent. “In my mind, that is an excellent example of teamwork between the client and the law firm and why having technically trained attorneys is very valuable,” Cass said.
One other notable 2013 case involved a two-week trial in a patent infringement action brought by Nikon Metrology and its affiliates. In a case that had been pending for four years, the jury found in favor of Cantor Colburn client FARO, a Florida-based company that, like Nikon, makes high-tech imaging equipment. “Both patents relate to scanning technology used for three-dimensional measurement operations. The jury found that the asserted patent claims [by Nikon] were obvious and therefore these patent claims were declared invalid,” the Cantor Colburn application for the Law Tribune competition states.
Cass, who was the lead trial lawyer on the Nikon case, said that he was involved from beginning to end.
“We like to be involved in every aspect of the case,” Cass said. “We were very pleased that the jury agreed with FARO that the patent claims were not valid.”•