Rin-Laures: A prodigy discovers a passion for patent law

By Stephanie Potter

Growing up, Lily Rin-Laures always thought she would become a doctor. After all, it was sort of the ”family business,” the occupation of her mother, her grandfathers, and several of her aunts and uncles. But while Rin-Laures did obtain a medical degree, she uses her skills in a very different way.

A partner at Marshall, Gerstein & Borun, she develops intellectual property strategies for clients with pharmaceutical inventions. She has worked on the patent portfolios for six FDA-approved drugs and has helped obtain patents for genetically modified plants.

Recently, she helped drug development company Marcadia Biotech Inc. negotiate a deal with Merck & Co. Inc. for the companies to collaborate on the development of therapies for the treatment of diabetes and obesity. Rin-Laures was involved in negotiating the intellectual property aspects of the deal and showcasing Marcadia’s intellectual property portfolio to Merck.

”What I like about doing this is that it gives me an opportunity to experience the best of science,” Rin-Laures said. ”I work with people who are world-class scientists, leaders in their field, on the cutting edge, and they are so enthusiastic about their work that they manage to convey that enthusiasm to you. When you work with them, it’s just very, very exciting.”

Rin-Laures, 41, has always liked an intellectual challenge. At 17, she was the youngest woman graduate from Johns Hopkins University, where she received a degree in chemistry. She was 13 when she started college and could have graduated sooner, but stayed an extra year so she would get the full liberal arts experience of taking classes like astronomy, Roman poetry, and the medieval legends of Robin Hood.

”It was a grand, eye-opening experience,” she said.

Rin-Laures was part of a pilot program through the Study of Mathematically Precocious Youth, a research group then at Johns Hopkins that identified gifted children by having them take the SATs, which she did at age 10.

Rin-Laures, who skipped second and third grade, was doing fourth-grade arithmetic in first grade. Later, she took summer programs through the Study of Mathematically Precocious Youth. One summer, she went from algebra to calculus by teaching herself through textbooks.

”It put me in an environment where I was constantly able to learn new things and was able to enjoy learning new things,” she said.

She said the experience helped to foster a love of learning that continues in her career.

”I have put myself in a position where I learn new things every day and I’m able to use the knowledge I have in new ways,” she said.

Rin-Laures said having completed medical school gave her a different perspective on the stress that typically accompanies the first semester of law school.

”The funny thing is, the first time I was actually in school with people my own age was law school,” Rin-Laures said.

As to which was more difficult, Rin-Laures said, ”medical school by far,” although she added that her perception might have been colored by having attended medical school first.

Selecting a new path

Rin-Laures has been with Marshall, Gerstein on-and-off since shortly after she graduated from Northwestern Medical School in 1988. She said she realized when it was time to apply for a residency that she did not want to pursue a career in medicine. She took a year off to figure out her future and applied for a job as a secretary at Marshall, Gerstein.

”They took a look at my resume and said, ‘You would be perfect as a technical specialist,”’ Rin-Laures recalled. In that position, she assisted attorneys with patent matters, and later became a patent agent. She found that she loved the work.

”I looked at what I was doing every day and the things that I could do if I did go to law school and become a lawyer and I thought, ‘This career is going to be challenging and interesting and different every day for the rest of my life,”’ she recalled. ”And that sounded like fun to me.”

Rin-Laures said biotechnology-related patent law is a growing, cutting-edge field. Patent law has traditionally been a male-dominated field, but that’s changing, she said now, the firm’s biotechnology group is made up of more women than men.

”Fortunately, I got interested in the field before it was fashionable to be a geek,” she said.

She praised retired partner Michael F. Borun as a mentor, but Borun said her work was spectacular from the start.

”If ever anyone didn’t need a mentor, it’s Lily,” Borun said. ”Her ability to handle a lot of different ideas in science, to become a mini-expert, foretold that she was going to become a great lawyer.”

When Rin-Laures went off to Harvard Law School, and then clerked with Judge S. Jay Plager at the Court of Appeals for the Federal Circuit, Borun was sure she would leave Chicago for a Washington, D.C., law firm.

”To our great surprise and happiness, she came back to us,” Borun said.

Rin-Laures speaks highly of her experience working for Plager. The Federal Circuit handles all patent-related appeals, which comprise a large portion of its docket. Rin-Laures said Plager taught her how to conduct a scholarly analysis of the issues in cases.

”You engage in debates about how the law should be,” Rin-Laures said. ”In our everyday jobs, generally, we are advocates for our clients. When you work for a judge, that’s the only time you can sit back and think, ‘How should the law really be?”’

She said she returned to Marshall, Gerstein for the chance to work with Borun, whom she described as ”one of the pioneers in biotech patent law.” She also praised the firm’s biotechnology group, and said she wanted to be part of a firm culture that ”values people for their talent and their teamwork, not for their billable hours.”

Borun said Rin-Laures has been a pioneer in balancing work and family. Rin-Laures was offered partnership when she was 31, while she was on maternity leave with her second child. She and her husband David, a scientist, now have three children ranging in age from 4 to 11 years old. Her husband is a stay-at-home dad, and Rin-Laures works part-time, which means she has a reduced workload compared to other partners.

Marshall, Gerstein managing partner Jeffrey S. Sharp said Rin-Laures excels at setting boundaries between her work and home life. Her biggest challenge, he said, is that Rin-Laures is so respected by clients that she could work more than full-time if she wanted.

”The most powerful feedback really is that clients ask for her,” Sharp said.Rin-Laures specializes in intellectual property strategies for drugs that have eventual medical uses and genetically modified plants. But she said she doesn’t limit herself to any particular technology.

”People come to us for our legal expertise and our technical background, our ability to learn new technologies,” she said. ”They come to us because we have the experience in filing patent applications on an invention, taking that look forward 10 years into the future to see how people will be using it, how their competitors will be designing around it, and how we can craft a strategy now that will make sure that they’re protected going forward.”

Using her skills

Rin-Laures said she enjoys the variety of her work. In addition to crafting patent claims, her responsibilities include giving clients advice about which of their competitors’ patent claims are valid, evaluating the strength of patent coverage for companies that her clients are considering purchasing, and showcasing her clients’ patent portfolios to potential buyers.

”It’s a fun job,” she said. ”We do sophisticated, high-level, complex work every day.”

One of Rin-Laures’ clients, Luisa Bigornia, a vice president at BioMarin Pharmaceutical, Inc., praised Rin-Laures for her work obtaining patents covering two of the company’s drugs, Naglazyme and Aldurazyme.

The drugs are used to treat Mucopolysaccharidoses, severe genetic disorders in which the body lacks an enzyme needed to break down chains of sugar in cells. The diseases lead to impaired mental development and organ function and can ultimately cause premature death.

”Lily’s firm helped to get claims that were very valuable to protecting our products,” Bigornia said.

Bigornia praised Rin-Laures’ technical knowledge, ability to keep up with changes in case law and her responsiveness to clients. Bigornia also knows Rin-Laures as a mentor and supervisor. She worked for Rin-Laures during Rin-Laures’ stint as general counsel at Hyseq Pharmaceuticals, Inc., now known as Nuvelo, Inc. Rin-Laures held that position from 2001 to 2002 while on leave from Marshall, Gerstein.

”As a person, she is very approachable, very willing to teach and share information,” Bigornia said.

Sharp seconded that, saying Rin-Laures is highly rated by the firm’s associates for her teaching and mentoring skills.

”Not every attorney who is a great attorney is a great teacher,” Sharp said.

Bigornia said Rin-Laures’ corporate experience ”helps her grasp how patents fit into the business’s goals and objectives.”

Rin-Laures agreed that her stint at Hyseq was invaluable to seeing how intellectual property fits into a company’s overall strategy.

”Intellectual property is just one part of what makes a company go,” she said. ”You have somebody making inventions; you have to have somebody developing inventions and somebody marketing that at the end of the day. I learned how [intellectual property] is used as a tool in the whole gamut of things a company does.”

She also credits Nuvelo’s president and CEO, Dr. Ted W. Love, for teaching her about the regulatory process for drugs. While at Hyseq, she handled not just patent issues, but a wide range of matters, from negotiating business deals to working on the settlement of litigation.

”I am a much better lawyer and a much better client service provider than I was before I went to work for a company,” Rin-Laures said. ”I understand how what we’re doing fits into the goals of the company and I know enough now to be able to ask the right questions.”

Love said Rin-Laures handled patent work for Hyseq before becoming general counsel for the company.

”We loved her so much and were so impressed with her that when we were considering general counsel, she was an obvious choice,” Love said.

He said Rin-Laures helped to restructure and focus the company’s patent strategy.

”I think fundamentally one of the challenges in patent law is to be strategic and thoughtful, because if you want to throw mud against the wall you can spend a lot of money and a lot of effort on patenting everything under the sun,” Love said.

He said he wasn’t surprised that Rin-Laures was able to go from handling intellectual property matters to handling the wide array of issues that face a general counsel.

Among her successes as general counsel, Love pointed to Rin-Laures’ involvement in the settlement of countersuits over patents between Hyseq and Affymetrix, a genetic research company. The settlement involved a joint venture between the two companies, Love said.

”Getting out of that morass was important to us, and to get out of it in a way that was a win-win was even better,” Love said.

Among her clients, Rin-Laures has represented Chromatin, Inc., a company that specializes in technology that allows engineered ”mini-chromosomes” to be introduced into plants so scientists can introduce multiple genes into a plant cell at one time, according to a news release announcing the patents.

One of the patents that Rin-Laures worked to obtain relates to the use of the mini-chromosome technology in all plants. The patent covers technology developed at the University of Chicago, and it has been exclusively licensed to Chromatin. In the release, Chromatin said the technology could be put to use in agricultural, pharmaceutical and biofuel projects.

Rin-Laures also represented InterMune, Inc. in obtaining patents covering Actimmune, a drug which is used to treat osteopetrosis, a disorder in which the bones thicken, and chronic granulomatous disease, a rare immune system disorder that causes frequent infections.

The world of patents

Rin-Laures said it is gratifying to work on patents involving medicines and medical treatment.

”At the end of the day, a lot of the scientists and doctors that I work with are motivated basically by the desire to improve the quality of people’s lives,” she said. ”They’re looking for new drugs to help people. To the extent some of that rubs off on me, I’m happy to be involved.”

One of the challenges of Rin-Laures’ job is keeping up with the changes in patent law, which Rin-Laures said she does with the help of her colleagues. She noted that the U.S. Supreme Court has shown a renewed interest in patent cases in recent years.

”When I first started working in this area, the Supreme Court hardly ever took a patent case,” Rin-Laures said. ”Now, they are taking multiple cases ever year and deciding them and changing law in the process.”

Much-debated patent reform legislation is now pending in the U.S. Senate, and Rin-Laures also noted that the U.S. Patent Office has proposed significant changes in how patent law applications are handled, which were to have taken effect Nov. 1. Those changes are on hold pending the resolution of a lawsuit challenging the new rules, brought by SmithKline Beecham Corp. in the Eastern District of Virginia.

The new rules would limit the number of patent claims an applicant could make in any one application, as well as the number of continuing applications, both of which are currently unlimited.

Claims identify the scope of the protection the applicant is seeking for an invention. Continuing applications allow inventors to pursue additional claims after filing an initial application. Rin-Laures said she, like many of her colleagues, opposes the limitations in the new rules.

Beyond practicing law

Despite the high-stakes nature of her work, friends from outside the legal profession describe Rin-Laures as mellow and low-key.

Linda Chin, an architect and fellow Sunday school teacher at Resurrection Lutheran Church, said Rin-Laures always seems to have a smile on her face.

”She’s a positive person and it’s reflected in her children,” Chin said. ”She has really good kids. She’s raised three smart, well-behaved, nice kids.”

Pamela L. Cox, a partner at Marshall, Gerstein, has seen many different sides of Rin-Laures.

Before attending law school, Cox was the associate director of technology transfer at Indiana University, where she oversaw the university’s eight-campus patent portfolio. Rin-Laures represented the university in those patent matters, and Cox was so impressed that she decided to interview with Marshall, Gerstein after law school, even though she had planned to stay in Indiana.

Later, the tables were turned on their relationship when Cox handled matters for Hyseq when Rin-Laures was general counsel.

Cox said that Rin-Laures is able to answer the questions clients didn’t even know they should be asking.

”There are a dime-a-dozen really smart patent attorneys who will do what you ask them to do, Cox said. ”She is so far above just doing what you ask her to do and thinks about, ‘How can I create value?’ ”

Cox said she enjoys working with Rin-Laures because of her enthusiasm for solving clients’ problems.

”She just really does sophisticated, exciting, big-picture thinking in a way that you get excited about the problems,” Cox said. ”It’s just fun to work through your day-to-day tasks with someone who inspires you to enjoy your problems.”

Cox praised Rin-Laures not only for her legal skills, but for her commitment to mentoring and increasing diversity within the firm, and for being an example of how attorneys can ”have careers that are noteworthy as well as real lives.

”She really is just as high-quality as they come and has been very diligent about leading a well-organized life,” Cox said. ”She’s set about being very purposeful about how she spends her time.”

Cox added that Rin-Laures has a secret weapon in achieving that balance.

”It doesn’t hurt that she’s brilliant,” Cox said.