Law evolves with growth of biotechnology

By Maria Kantzavelos

Louis Pasteur may have received a patent on his work with yeast — a living organism — back in 1873, but it was Ananda Chakrabarty’s invention of a live, genetically engineered bacterium capable of breaking down crude oil that was at the heart of a 1980 U.S. Supreme Court decision that is said to have opened the door to the business of biotechnology.

Industry experts point to the high court’s ruling in Diamond v. Chakrabarty, which established that genetically engineered life forms are patentable, as the impetus for the commercialization of an evolving technology that generally involves the manipulation of living things to make or change products — such as human therapeutics to treat certain forms of cancer, crops that are resistant to drought, or new forms of fuel.

”It was just a matter of timing and rather interesting technology that made for headlines and heavy-duty investment,” said Michael F. Borun, of counsel to the intellectual property boutique Marshall, Gerstein & Borun. ”A patent is a short-term monopoly, and investors love monopolies. When people saw that there was a space for some exclusivity in this technology, then the money came floating in.”

So did a new niche in the practice area of intellectual property law.

”It’s economics,” said Borun, who is considered a pioneer in biotech patent law. ”Law firms said, ‘There’s money to be made in providing services in this area to clients, but we don’t have anybody with a technical background. Let’s start hiring people with PhDs in molecular biology.”’

Chakrabarty, now a professor of microbiology and genetics at University of Illinois at Chicago, was working as a scientist for General Electric when he came up with the oil-eating bacterium that would be used to clean up oil spills.

Since the high court’s decision holding that the tiny, live creature is patentable subject matter as an article of ”manufacture,” the U.S. Patent & Trademark Office has issued numerous patents on genetically modified microorganisms and other life forms, as well as cells, tissues, and molecules derived from those things — like nucleic acids and proteins. The patents cover such areas as immunology, antibody production, gene therapy, and genetically altered, or transgenic, crops and animals.

The United Nations Convention on Biological Diversity defines biotechnology as: ”Any technological application that uses biological systems, living organisms, or derivatives thereof, to make or modify products or processes for specific use.”

Many biotechnology inventions serve as the building blocks to potential products that eventually make it into the marketplace. Those results could be a life-saving drug; a pet cat engineered to be hypoallergenic; transgenic plants like one that allows tomatoes to be picked green and ripen thereafter, or soybeans and other crops that are resistant to herbicides; and livestock engineered to produce proteins in their milk.

Headline-grabbing developments talk about cloning animals like prize bulls, or the possibility of one day using stem cells to ”grow” human organs or tissue, or specially engineered microorganisms to aid in the development of biofuel.

The applications of biotechnology tools are wide-reaching.

When Janet M. McNicholas talks about the industry, the biotech patent lawyer who co-chairs the life sciences practice group at Bell, Boyd & Lloyd borrows a motto from the Washington, D.C.-based Biotechnology Industry Organization to point out that biotechnology can work to help ”heal, feed, and fuel” the world.

”What biotechnology does is, it provides solutions,” McNicholas said. ”We’re talking about solutions for problems, whether that problem is that you can’t grow enough corn to feed people, or you have cancer and you need something to get rid of it. There’s some problem that relates to human beings in a really important way — that’s something the technology has the ability to solve.”

IP is crucial

In today’s research-intensive, highly regulated industry of biotechnology — a field steeped in ideas, invention and science — a company’s intellectual property can be its main asset, particularly when the company is getting started.

As such, industry experts stress, the protection of that intellectual property — often in the form of patents — is fundamental to the industry.

Janet M. McNicholas of Bell, Boyd & Lloyd and David W. Clough of Howrey (with Kevin E. Noonan of McDonnell Boehnen Hulbert & Berghoff back to camera) in a lab of the Department of Biochemistry & Molecular Genetics at the University of Illinois at Chicago’s College of Medicine.

”It’s especially important to the biotechnology industry, because the investments that are necessary to bring a biotech product to market are so huge that unless you have very strong intellectual property protection, the risk is so much higher than with, say, a software company,” said David Miller, president of the Illinois Biotechnology Industry Organization, a local biotech trade group.

For example, it can take up to $1.2 billion and sometimes more than a decade to fully develop a new therapeutic protein — an antibody to treat a disease like cancer — and to bring it through U.S. Food & Drug Administration approvals and into the marketplace, said McNicholas, who is also a former molecular biologist.

”These things — the products — come from living things. Those living things — whether it’s a living plant or a living cell — that’s not the same as some kind of cheap plastic product from China,” McNicholas said. ”’These are very complicated systems, and they require a great deal of research and development, and they’re regulated.”

That’s where lawyers with a mix of expertise in the biological sciences and intellectual property law enter the picture.

The Crash of Air Philippines 541

By Robert Yates

Eight years ago April 19, 2000, Air Philippines Flight 541, with 131 passengers and crew members, left Manila at 5:21 a.m., flying to Davao City, on Samal Island, about 600 miles southeast of Manila.

As it approached the airport at around 7 a.m., another aircraft was on the runway. Flight 541 began to circle in low clouds, waiting for the plane on the ground to move off the runway. As it circled, Flight 541 slammed into the side of a mountain, 500 feet above sea level. The plane caught fire and disintegrated, killing everyone on board. It was the worst air disaster in the history of the Philippines. But there is more to this story than another horrible air crash. As airplanes in the American fleets wear out when they reach a point where the cost of overhauling the planes, which can run between $2 million and $8 million, is no longer worth it they are retired to the Arizona desert. There are thousands of worn-out planes lined up in the desert waiting for a second life. From there, leasing companies purchase the planes and lease them to other, usually foreign, usually developing, airlines.

Flight 541 was a Boeing 737, a 22-year-old plane that had been put out to pasture by Southwest Airlines, and bought by AAR Aircraft & Engine Group, a publicly traded company based in Wood Dale, Ill. AAR leased the plane to Air Philippines in January 1999 and sold the plane in April 1999 to Fleet Business Credit Corp., now a division of Bank of America, and assigned Fleet its rights under the lease.

The lawsuit against AAR and Fleet was filed in Cook County Circuit Court and, following litigation over the forum issue, including an appeal, stayed here. The lead plaintiff was a Chicago resident, Boeing’s corporate headquarters are here, and AAR is in Wood Dale. Donald J. Nolan of Chicago’s Nolan Law Group, who represented 47 of the plaintiffs, was appointed lead counsel. There were three other firms representing plaintiffs, all from the San Francisco Bay Area: Sterns & Walker; Bowles & Verna; and O’Reilly & Danko. Gary W. Westerberg, Christopher R. Barth, T. Patrick Byrnes, and Mark A. Deptula of Locke, Lord, Bissell & Liddell, represented the defendants.

The case settled in November 2007 for $165 million, which, Nolan said, worked out to about $1.5 million per victim.

Aside from the inherent interest of a huge settlement, the case is interesting as yet another feature of globalization in this case, the globalization of the airline industry, and the ethical and legal obligations of the companies that buy and lease the planes to airlines in countries where the safety standards are well below American and European standards and where even the culture plays a role in the safety of airlines. In the last five years, there have been more than 10 fatal commercial airline crashes involving aircraft leased to developing countries, the latest occurred on April 15 in the Democratic Republic of the Congo, killing at least 75 people.

Chicago Lawyer sat down recently with Nolan to discuss the case.

Chicago Lawyer: What were the liability issues in the case?

Nolan: There were four main issues: crew resource management, the failure to provide an enhanced ground proximity warning system under our product liability theory and spoliation for the destruction of the wreckage and failure to perform maintenance under negligent entrustment.

Chicago Lawyer: Let’s start with crew resource management. First, what is it, then, how is that an issue?

Nolan: Prior to the crash, the FAA mandated in the U.S. that crews have crew resource management (CRM) training, and what that deals with is a culture of deference in the cockpit, where human factors engineers learned and taught, and the FAA adopted, the idea that you have to have a system of checks and balances in the cockpit.

A co-pilot might notice something of imminent danger that the pilot did not notice, and it’s necessary to call that out complete deference is not afforded to the pilot in command. Whereas the FAA mandated that and has a directive in place for crews in the U.S. to have this CRM training, the government in Philippines did not so require.

Asian countries have a storied past with deficiencies in CRM, because it’s a clash with Asian culture, with deference to seniors.

For example, there was a Singapore Air crash in October 2000, on an international flight bound for Los Angeles international flight SQ006 when the crew took off in a typhoon in Taipei. There, none of the crew, even though they knew that it was not an appropriate takeoff, ever checked the action of the pilot in command.

In the Air Philippines case, the pilot was being supervised at the time of the crash by a check airman, meaning a superior on a check ride, and the check airman was one whose actions were not countered by a lower pilot, so we knew there were issues of CRM training.

Chicago Lawyer: How can the lessor be held liable for the crew’s training?

Nolan: AAR never checked to see what the standards were in the Philippines, and just presumed the Philippines would be following the FAA standard, when, in fact, they were not. So, under negligent entrustment law, which deals with what someone knew and should have known [they could be held liable].

Chicago Lawyer: And your negligent entrustment theory also relates to maintenance?

Nolan: This airplane was taken off the desert floor by AAR. It was purchased from Southwest Airlines, which is a high-mileage operating fleet, and this was a [22-year-old] airplane. Southwest Airlines is high-cycle, high-time. They really work their airplanes. Southwest made a decision somewhere along the line not to continue with that airplane a cost-benefit analysis of maintenance, upkeep, and the returns they’re offered on that.

Chicago Lawyer: How much was the lease for?

Nolan: The lease was on a per-month basis. The transactions were seven-figure transactions. I think when the plane crashed they made seven figures just on the insurance. When the plane crashed they had a financial return and a profit on the hull liability clause.

Chicago Lawyer: Who’s responsible for the maintenance?

Nolan: Both the lessor and the lessee. The lessor, having in the lease reserved to itself rights of inspection, and requiring that maintenance and safety be followed under that scenario on a legal basis it can face responsibility for the loss of life. Here, this fleet was not equipped with up-to-date manuals from Boeing.

Nelson-Beverly removes the barriers to her dreams

By Olivia Clarke

Heather Nelson-Beverly has rarely taken no for an answer.

When she began researching entertainment law as a career, she received negative responses from some lawyers she contacted. They told her she couldn’t have the type of career she wanted, and warned her that Chicago doesn’t have a thriving entertainment business. But she pushed past the pessimism, and created the kind of practice she dreamed about.

At age 37, Nelson-Beverly has owned the Law Office of Heather Nelson for 10 years, and practices entertainment and entertainment-related law. She lectures around the country, and is active in such organizations as the Chicago chapter of The Recording Academy, which is responsible for the Grammy Awards.

She’s looked to several key role models, especially legendary and now-deceased attorney Donald Hubert, who taught her how to not only be a good lawyer, but also how to run a successful practice.

”I really, really truly believe that there is more than one way to accomplish something,” Nelson-Beverly said. ”There is a huge thriving entertainment law practice, but you’ve just got to have the stuff.

”I would definitely say that I’m driven. I would definitely say I’m purposeful. I like to think that I’m fun along the way, despite the stresses and the schedule and the pressure a lot of the time.”

Learning the ropes

As a ninth-grader growing up in Minneapolis, Nelson-Beverly’s mother and stepfather told her that she couldn’t be the type of college student who went away to school to find herself.

There would be no backpacking trips across Europe or semesters spent searching for a major. She needed to find a career path early on because college can be expensive.

She remembered going to a library and finding a book that matched personality traits with different careers. She decided that marketing fit her personality.

She attended the University of Wisconsin-Madison and earned a bachelor’s degree in business administration and marketing, with an emphasis on communications.

But the thought of taking more classes to earn an MBA did not appeal to her, so she decided to attend Chicago-Kent College of Law. She didn’t plan on practicing law, but felt law school would give her more experience and options, she said.

”Fast-forward, I get into law school and in my first year it is so different than the business school kind of curriculum,” she said. ”But I loved it. It was in my first year of law school that I started to think, ‘Gosh, if I actually decided to practice law, what area would it possibly be that I would practice in?”’

She narrowed her focus to litigation because she was fascinated by the courtroom and oral presentation; and sports law because she played competitive tennis for 10 years and is an avid sports fan.

”As I reached out to more and more friends of mine from college who actually played professional sports, football players and basketball players, to do a little bit of case study on how I would get into doing sports law, it became a little bit ominous,” she said. ”A lot of these kids were either directly referred to agents and representatives, or there’s been someone who has been around for a long time, a friend of the family, or whatever.

”I definitely thought it would be kind of challenging to walk right out of law school expecting to say, ‘Hey, I’m a sports lawyer.”’

But she kept her goals in the back of her mind while attending Chicago-Kent. At the same time she faced the challenges of affording law school.

She said a couple of deans and a financial aid administrator suggested that her only option was to withdraw if she didn’t have the finances.

Nelson-Beverly instead got a job at the Law Offices of Joseph V. Roddy — even though working and attending law school was discouraged, she said.

While in the school cafeteria one day in her work suit, a man approached her and asked if she was a lawyer. He wanted to post an internship opening for his law firm, which handled such areas as entertainment law. She introduced herself as a law student with an interest in entertainment law.

She interviewed, and got the internship at Jones & Walls, a general practice firm. Because the firm represented music groups, it dealt with things like record contracts, music licensing, and deals involving artists and producers. It also handled criminal defense, discrimination and personal injury.

”I’m working. I can’t really afford to be in law school, so I decide to get out early,” she said. ”I really fast-track my course work so I can graduate in two-and-a-half years.

”I want to say, towards the end of my second year I started really thinking seriously about what would be the next step.”

Meeting her mentor

During a Chicago-Kent career day in her last semester, students could pick different workshops and sessions to attend.

Most law students picked the big and mid-size firm sessions, because that’s where the bigger money is, she said.

But Nelson-Beverly read Don Hubert’s biography, and the information about his solo and small-firm workshop.

”In reading his bio, I was absolutely blown away, and I asked to be transferred into that workshop,” she said. ”I went into that workshop, and saw him speak, and he was talking about himself and the practice area and the benefits of being in a small environment and the family environment at [a small] firm.”

At the end of the workshop she asked for his business card, but he said he didn’t have any. She told him she would like to intern for him, but he said he had no positions. But she wasn’t dissuaded.

She said she at least wanted to meet with him at his office. She went there the next day with her resume in hand. He sat down with her and again told her there were no positions, but he wanted to know her story.

”I told him, ‘After seeing you speak and after learning more about you, I would give anything to just have the experience of working with someone with the credentials you have and the caliber of the caseload you have,”’ she said. ”I said, ‘I really just want to learn how to be a good lawyer.”’

Nelson-Beverly said Hubert was very concerned about what she hoped to get out of an internship with only a few months left of law school. He said he was definitely not looking for an associate.

”I told him, ‘You know, six weeks with the best, even if I have to leave, is going to be worth it for my career,”’ she said.

She interned for him in the fall of 1995, and he hired her as an associate in 1996 because he needed extra help handling a large Chicago ward redistricting case.

Her first year as an associate was an interesting, whirlwind year. The firm not only handled a large caseload, but Hubert also had a very public, and somewhat political position, as president of the Chicago Bar Association, she said.

”Whenever you start at a new firm or a new job, you are always told to be the first to get there, be the last to leave,” she said. ”But no matter how hard I tried I couldn’t do it. Don would be there at the crack of dawn and he would work until the wee hours of the morning, just late, late nights.

”He never stopped working, yet was always composed, always sharp — especially in public. His public persona and demeanor were just absolutely magnetic.”

Hubert often spoke candidly with Nelson-Beverly and the other associate, Debby Goldman. Eating pizza at 10 p.m., as they got ready for a case, he would tell them war stories or offer coaching advice, she said.

”It was like working for your dad, it really was,” she said. ”Even with all the demands on him personally, he still took so much time in the personal development of myself and Debby Goldman. He’d be there for us to practice our opening statements and closing arguments for cases.”

Making the leap

Despite enjoying her time working for Hubert, Nelson-Beverly never gave up her passion for entertainment law.

She said she knew she couldn’t pursue this dream right out of law school because she needed to learn how to be a lawyer first. But Hubert recognized her desire to pursue entertainment law, and sent her to workshops and conferences that focused on that area.

While attending conferences, she started meeting people who were looking for legal help. Hubert allowed her to work on those entertainment matters on the side.

”What happened is I actually started developing a practice that I saw had the potential to really grow,” Nelson-Beverly said. ”It was at that point that I had a talk with Don and said, ‘I’m thinking of doing my own thing.”’

Hubert offered to start an entertainment side within the practice so that she would stay, but she said there was really no room.

She made the decision to go out on her own, but she asked Hubert and two other lawyers to work cases with her while she got started.

At first, she not only handled entertainment law, but also areas like criminal defense and real estate. But within nine months she focused only on entertainment law.

”It was definitely a little intimidating, because the buck stops with you,” she said. ”It is now up to you to be able to generate the business in order to really survive.”

Early on she lucked out. One of the first music groups she represented locally, hip-hop group Do or Die, found success in the music industry and sold over 800,000 copies of its first album.

”They ended up being a really big deal,” she said. ”And, quite frankly, entertainment, like any other area of the law, is one where word-of-mouth is very important. If you get associated with what turns out to be a high-profile client, it starts to serve as its own advertising.”

As she built her firm, she was very thankful for her business degree, and for the time she spent working for Hubert. She learned valuable lessons from him about the business side of a small law firm.

”By being in an environment where it is a small firm you have contact with clients the minute they come in the door, until you close their case,” she said. ”You are involved in all elements of running the business, which was a benefit. [My firm] really kind of took on its own life, thank goodness … I pretty much tried to plan as best I could to be prepared for it.”

Today’s entertainment industry

Nelson-Beverly has worked with such clients as ”The Apprentice” star Omarosa Manigault-Stallworth, and former White Sox player Frank Thomas with regard to his record label.

She primarily represents clients in the music industry. Many of her clients tend to be businesses, such as independent record labels and marketing companies. But she also maintains a steady client base of artists, music producers, and songwriters.

Nelson-Beverly said lawyers often intimidate artists, so she tries to be approachable, and she explains the legal side of the music industry in easy-to-digest information so that they understand what is going on.

”It’s wonderful to have a relationship and know that these clients kind of depend on you and kind of trust your word,” she said. ”I have a young producer right now who, for the last several years, would just call me and say, ‘I’ve got questions. I just want to learn.’

”Now he’s got his first placement with a major record company. He’s being looked at by some pretty big-deal artists … We started when maybe he could only give me $50, but I’m like, ‘I don’t care. You are eager to learn.”’

Today she represents many gospel music artists, such as, Shari Addison, runner-up in the BET show, ”Sunday Best.” She also represents Sheri Jones-Moffett, who had a 2007 Grammy-nominated song.

Nelson-Beverly works with Jonathan Nelson, an award-winning songwriter, who, she said, has written for some of the biggest names in gospel music. She has worked with him for several years, and negotiated his recent contract with Integrity Music.

”She’s the best. She’s phenomenal,” Jonathan Nelson said. ”My wife is a hard sell and she met Heather face-to-face not too long ago and they’ve turned into girlfriends. They just hit it off — She has helped me to become further established and organized.”

He said Nelson-Beverly is responsive to her clients’ needs, and, if she doesn’t have an answer, she commits to finding the right one within 24 hours.

”If you can’t get along with Heather Nelson then there is something sorely wrong with you, he said. ”I just wish that more people knew about her. She will become a highly sought-after attorney in the future.”

On the corporate side, she represents such companies as Nu Face Entertainment, a full-service boutique marketing and branding house.

Rita Lee, the company’s founder and CEO, said Nelson-Beverly’s ethics and service-oriented approach make her a good lawyer. She helps her clients understand the law, as opposed to simply giving them paperwork and telling them to sign it.

”She makes sure your business has the protection and the infrastructure to do business for years to come,” Lee said. ”If you want to adjust or change your company, the infrastructure put around you is very flexible.”

Peter Strand, senior counsel at Holland & Knight who focuses on entertainment and intellectual property, said Nelson-Beverly knows what she’s talking about.

”Heather has all the skills and she is also a good face to put on entertainment representation because she is competent and pleasant and she knows what things to battle over and what things not to battle over,” Strand said.

Life-work balance

One of the strengths she believes she brings to her law firm is that she handles litigation, which many entertainment lawyers don’t do, she said.

Her skills helped her, for example, when she represented a client with contracts with a major record label and a prestigious artist manager. The client needed to get out of both contracts because she was filing for bankruptcy.

When Nelson-Beverly and her client showed up to court on the first day, about five large-law firm lawyers, which the record label hired, greeted them. The lawyers ended up not arguing the case because it was briefed fully. The judge wrote a written opinion, and read his ruling in her client’s favor.

”It was kind of one of those David-and-Goliath type moments, especially when you are solo,” she said. ”I might have still been practicing out of my living room.”

When she started her career she interviewed in Los Angeles at places like Paramount Pictures and Sony, but they looked down on the fact that she didn’t attend a top 10 law school.

But she said she knew she made it in her career when that didn’t matter anymore. For example, Harvard Law School invited her to speak at the school about entertainment law — an experience that meant a great deal to her.

Nelson-Beverly said owning her own firm gives her flexibility.

When she first started her law firm, her grandmother was dying from cancer. She was able to gather some paperwork and her laptop and head to Minnesota. She could handle work, and still visit with her grandmother before she died.

”When I was there I was able to spend more one-on-one time with my grandmother than some of my relatives who lived there because they, of course, had to go to work,” she said. ”It was kind of like the light bulb goes on and you go, ‘This is what this is for.”’

She said if it allows her to provide for others or see loved ones more regularly, ”At the end of the day, that’s what it’s all about and that’s what really motivates me.”

That flexibility allows her to live with her husband Anthony Beverly in California while still practicing in Illinois. She splits her time each month between both states.

She also has many more goals beyond her legal practice. She’s trying to write two books, and is in the process of starting a non-profit organization called, What’s Your Legacy? She wants to inspire others to look beyond instant gratification, and focus on what their legacy will be to society.

When asked what her legacy is, she said, ”It is to inspire others to dream big, and not pay attention to all the no’s, and to not take adversity as a block to getting what you want, but to see it as something that you’ve got to overcome to get what you want.”

Just as she received mentoring from such lawyers as Hubert, she too tries to mentor others. She said she remembers what it was like when some lawyers didn’t help her, and how she benefited from those who did.

”I got a lot of unanswered calls when I tried to do research [about entertainment law],” she said. ”I vowed that I would never do that.”

One person she mentors is Shayla Cooper, who is of counsel to her firm.

”She just trusted me with her business, trusted me with her clients and made herself available to me for anything,” Cooper said. ”The way that she gives of herself, her expertise, her career — basically everything that I know about the entertainment industry I know because of her.”

Around the water cooler — Q & A with Ethan Trull

Each week we will pose these three questions to different lawyers in the legal community.

This week we talk with Ethan Trull, a litigation partner at Ungaretti & Harris who has been practicing for 19 years. His practice is mostly commercial litigation with an emphasis on securities, antitrust, products liability, and intellectual property litigation.

– What do you find most interesting about your practice?

Especially in litigation, technological change is a constant element. For example, remarkable advances in medical science have simultaneously resulted in brand-new causes of action, brand-new defenses and brand-new methods of proving both.

Similarly, the development of mass electronic storage of data revolutionized business, but now exists as one of the easiest litigation pitfalls for the unwary business (or its counsel who fails to give suitable advice on electronic data preservation and production). As technology becomes more advanced, affordable, and pervasive, legal professionals necessarily also have to become even more technologically proficient. Maintaining technical expertise in areas that affect my clients’ business is one of the most interesting and challenging aspects of my practice.

– What makes a good lawyer?

We’ve all worked with lawyers whom we consider to be “good,” and our positive assessment can spring from any number of quality traits. For example, many lawyers are good because they are exceptionally quick on their feet. Others seem to write effortlessly. Some lawyers have sufficient charisma to charm even the most jaded jurors and clients. Perhaps a tougher question is how to predict which lawyers may possess any of these good qualities.

Many employers heavily rely on academic credentials as their primary predictive tool, whether they are seeking in-house counsel or a prospective legal partner. Unfortunately, the same qualities that guarantee academic success do not always translate into real world ability. The better answer, I think, is to expect future success based upon practical track history and positive outcomes. In other words, in the practice of law, experience still matters.

– What is the biggest legal news, and what is its impact?

There is so much legal news nearly every day that it is nearly impossible to point to one or two things. Obviously the trend toward nationalizing firms continues which impacted, and in fact reinforces, my decision to rejoin private practice in one of the very few truly mid-sized firms left in the city. I read last week that in England an investor group has actually purchased a law firm and, in essence took it public.

I can’t imagine that happening here, but then again I never thought that a lawyer could get away with charging $1,000 per hour (and I suspect that in fact they won’t get away with it). It used to be the rare firm that had office outside of the United States. Now apparently every firm needs an office in Prague. Is that really what we need?

3L and the City: Graduation and reflection

By Maria Vasos
Chicago-Kent College of Law

On May 18, 2008, I will officially graduate from law school and join the throngs of other survivors in the legal profession, (once, of course, I pass the bar).

As I reflect on my three years of study, I note that I was fortunate to have many positive, and only some not-so-positive, experiences. What stands out by far was my involvement in my law school’s criminal defense clinic. I strategically chose to do the clinic during the summer, when I did not have any classes to get in the way of my participation, including going to court on an almost daily basis.

And, I chose to do it after my second-year, after I had already taken evidence and two trial advocacy classes. I was able to assist on a full, two-week-long, felony jury trial from start to finish. The defendant was found ”not guilty” on all four counts and I was even thanked by him and his family for my help on his case.

Not only did the clinic strengthen my resolve to go into litigation, it more importantly strengthened my resolve to finish law school. It was often hard to get excited about legal writing memos about fake clients with fake problems. In the clinic, helping real clients, real people, fight the good fight, made all the difference.

On a related note, I was lucky enough to do two different externships as well that were also great hands-on experiences. I highly recommend clinics and externships to everyone in law school and think that at least one should be mandatory, similar to a residency program for doctors.

To that end, I generally enjoyed all of my practical skill courses, which I feel have helped prepare me for the actual practice of law, courses such as evidence, trial advocacy, and criminal litigation (affectionately referred to as, ”trial advocacy on steroids” by its professor).

This leads me to a terrible law school pitfall, the first-year curriculum, and unfortunately pretty much the rest of the ‘’substantive law” curriculum as well.

There is a reason why Harvard Law School announced in October that it would devote fewer hours to the traditional first-year curriculum and add practical courses, such as problem solving, into the mix.

The reason is that the entire first year of law school is useless, except as a battle of wills to weed out those who cannot stomach it. I am fully aware that I will have to re-learn what I need for the bar exam in July. I, like many others, am not certain as to how much of torts I actually even learned in the first place. God bless bar prep courses and supplements.

But, in my experience, most, if not all, of the other substantive law courses are completely ineffectual as well. When, in an actual legal career, would you need to memorize any law, because you could not look it up, much less Model Code that has not even been adopted? Dare I say, never. When would you be confronted with a five-page long hypothetical problem that you would have to dissect in its entirety and resolve in only two hours? Again, I venture that this would never happen.

Law students are failed in that respect because they can take all of these courses and upon graduation and passing the bar, only be prepared to be law students, not lawyers. Would society let doctors practice medicine without having even touched a human body or step foot in a hospital? Of course not. Why a law student can graduate, pass the bar, and be licensed to practice law, without having ever drafted a motion or stepping foot in a courtroom is beyond me.

I am told that this is the age-old debate between the legal academics and practitioners regarding just how much of a trade school law school should actually be. Obviously, you can see what side of the fence I am on.

But lastly, since I already compared law school with medical school, it stands to note that medical school is traditionally entirely pass-fail. This promotes cooperation in learning and fosters a low-stress environment for students, encouraging them to finish medical school and become successful doctors.

In contrast, law school has a harsh mandatory curve, so even if all of the students in a particular class did great on the final exam, a professor is only allowed to give 5 percent As, 10 percent A-minuses, 20 percent B-pluses, etc. So, the difference between an ”A” and a ”C” could be only five points.

And, most law schools require between a B-minus and C-plus grade point average to stay in school. One is in constant battle of the curve, with his or her equally competent peers, to stay in school, at least in the first year, when there are no other grades to balance the scales. This promotes extreme competition, stress, bad will, and higher attrition rates.

Many potentially excellent lawyers, who are not perfect law students, get downtrodden, abused, and overlooked in this perverse hazing system that confuses law students with sacrificial lambs, for no good reason, because, to reiterate, most of law school does not prepare you for actual legal practice anyhow.

All in all, am I glad that I went to law school and will be embarking on a career as a lawyer? Absolutely. If I had it to do all over again, knowing what I know now, would I have done things differently? No, I have no regrets.

Would I like to continue on with more years of law school, just for fun, and maybe pursue an L.L.M. or something? No, I am not a masochist.

Around the water cooler — A book about cross-examination

Each week I profile a different legal happening or event. I solicit your thoughts and opinions on this topic.

The new book, “Your Witness: Lessons on Cross-Examination and Life from Great Chicago Trial Lawyers,” which was edited by Steven F. Molo and James R. Figliulo and published by the Law Bulletin Publishing Company, addresses how 50 prominent trial lawyers view cross-examination.

Two of the lawyers who contributed to the book are Jenner & Block Partners Chris Gair and Robert L. Byman.

Byman’s section, entitled, “Crossing with Technology,” described how technology sometimes improves cross-examination. He said in the book: “Our cross-examination, when assisted with a little technology, can become works of art.”

The best advice he has for those lawyers looking to improve their cross-examination, he said, is to ”get up on your feet as often as you can. It’s a talent that you can grow by doing more and more, but you have to start with some talent and do it … Read this book, go to courtrooms and watch people do it, and don’t try to imitate. Take snippets of the best you see and incorporate it into your own style.”

Gair’s section, is entitled, “Life Is Short - Take a Chance.” Gair said he wanted to challenge the conventional wisdom that exists about cross-examination.

The rules are just guideposts, he said. A lawyer sometimes asks a question he or she doesn’t know the answer to — based on his or her feel for how the witness is going, and because of a need to get the confession he or she wants.

Understanding a witness’s psychology can challenge lawyers because they may need to make a witness to look bad. This means understanding how the witness will approach the questions, he said.

“Another challenge is the cost-benefit analysis that you have to do,” he said. “Is it worth asking a particular question knowing you could get an answer that doesn’t help you …”

Q & A: Georgia Logothetis

Georgia Logothetis

Age: 25

Education: A 2003 graduate of Northeastern Illinois University, and a 2006 graduate of DePaul University College of Law.

Career: An associate in the litigation group at Arnstein & Lehr.

• What is the last big deal or big case you worked on that you can discuss, and what did it entail?

I’m working on some very high-profile litigation out in Kane County. It is for the village of Campton Hills. Our firm incorporated a village and Illinois law allows residents who do not want to be part of the village to petition for disconnection. And there is a steady stream of residents in the village who don’t want to be part of the village for one reason or another who have filed these petitions for disconnections. We’ve taken four or five to trial. It is interesting because the cases essentially go from complaint to trial within 30 or 45 days.

It’s also interesting because you have these petitions for disconnections, but at same time there are other collateral attacks on the village. The more high-profile one was an attempt to place on the Feb. 5 ballot an initiative to dissolve the village in its entirety …

A [temporary restraining order] and a complaint were filed to get that proposition on the ballot. I was part of the team that argued under Illinois law that the referendum could not be placed on the ballot. We also argued that there were various procedural and substantive flaws in the complaint. We ended up winning that. That was a huge deal because, had that been placed on the ballot, it would have been very dangerous to the village, and the village may have been dissolved …

• If you could have lunch with anyone, living or dead, who would it be and why?

Barack Obama.

At this point in time having a conversation with him about where this nation is going, what types of policies he wants to implement, and how he will react with Congress when enacting the laws that we as lawyers will be litigating in court, I would love to have this conversation with him. So, Barack, if you are reading this, give me a call.

• What is your favorite book, movie, or television show about lawyers, and why?

I love ”Boston Legal” because, first of all, it’s extraordinarily well-written. It’s not close to the reality of my practice at all, but not many TV shows based on lawyers are.

What I love about ”Boston Legal” is the ways that they weave in commentary into their plot line … I distinctly remember one episode where they addressed torture. [The lawyer] gave the closing argument or opening statement, I can’t remember which one, essentially laying out this fabulous, brilliant case about how in the world we can be debating whether the best country in the world is engaging in torture.

Whenever I watch that show I wish that whoever is writing those types of speeches would write the speeches for the members of Congress or the political candidates because the writing on that show is so great.

• What advice do you have for new lawyers or those wanting to become lawyers?

The one thing that I’ve found from first-year associates and recalling from my experiences as a first-year, I remember sometimes I would have a typo in one of my briefs and I thought it was a horrible reflection upon me. Sometimes I would file something in the wrong division, just by accident, and I thought it was the end of my career as attorney. I was obviously making those traditional first-year types of mistakes …

As a first-year, if you make an error, you shouldn’t dwell on the fact that you made the error, because all first-years make errors and people who have been practicing for 20 or 30 years make errors. You should view that error as: okay, this happened, but why did it happen? But, more importantly, how do we fix it in the best interest of our client? The second piece of advice I would say is to have fun … I think, as first-years, instead of freaking out about an assignment, embrace it. This is your assignment. You get to shape it. You get to produce a product. Put your spirit into it and realize that you are part of team, part of a firm that’s helping people — whether these people are corporations or individuals.

• What do you do in your free time?

Outside of the office, I am a political writer. I’m a contributing editor at the nation’s most popular online political community. And to speak to those who know me, they will call me a political junkie. I’m addicted to C-SPAN. I love following the political process, and that takes up the bulk of my time kind of researching and writing and kind of being part of that movement.

• What do you like the most and the least about being a lawyer?

You can work on something and kind of put your blood, sweat, and tears into it and feel like that one project or that assignment almost killed you. That is probably my least favorite part about being an attorney — just the amount of personal investment that you have to make sometimes on a given case. That is expected and that is what you get when you sign up to be an attorney. That is especially what you get when you sign up to be a good attorney, and when you promise yourself that you are going to be the best possible attorney that you can be …

On the flip side of that, the thing I like most about being an attorney is that when you do win it feels great, and feels great especially when you have put in all of that time, energy, and work. It becomes that much sweeter when you win, knowing that those are the fruits of your labor.

• If you didn’t become a lawyer, what career would you have chosen?

I’m a writer by nature. If I hadn’t become an attorney, I still would have done something with the law, something with talking about the political process or doing something to that effect. My dream job would have been being a speech writer to the president.

— Interviewed by Olivia Clarke

As first deadline nears, CLE providers step up

By Maria Kantzavelos

As the deadline looms for the first wave of Illinois lawyers required to complete a minimum number of hours of continuing legal education, longtime providers of those courses and seminars are preparing for cram time in the next few months.

With ramped-up programming, new electronic modes for delivering course work, and plans for CLE fests and ”one-time shopping” events, many CLE providers intend to reach out to those lawyers who may be waiting until the tail-end of the initial two-year reporting period, which closes June 30 under the Illinois Supreme Court’s Minimum Continuing Legal Education requirements.

”We’re anticipating there will be a number of lawyers waiting until the last minute,” said Steven C. Rahn, director of courses for the Illinois Institute for Continuing Legal Education, which has provided CLE in Illinois for 40 years.

”As soon as the rule was passed, I told my wife, ‘we’ve taken our last June vacation.”’

The Illinois State Bar Association has seen about 9,000 lawyers earn MCLE credit through its programs and meetings since January 2006, said Jeanne B. Heaton, CLE director for the ISBA.

”I think we’re going to have a lot more attorneys coming to us in the next few months,” she said.

In September 2005, Illinois became the 41st state to require continuing education for lawyers. Under the MCLE rules, lawyers whose last names begin with the letters A through M have until June 30 to complete a minimum of 20 credit hours of CLE. That requirement increases to 24 hours in the following two years and 30 hours in each two-year period after that.

”We expect there are still some attorneys out there who don’t realize the scope of the MCLE requirement,” Heaton said. ”I suspect, since this is the first reporting period, there may be some who haven’t started.”

The remaining lawyers — those whose last names begin with the letters N through Z — will face their first MCLE deadline next June. The MCLE rules also require 15 hours of basic skills instruction for new lawyers.

To accommodate lawyers facing the first deadline this summer, the ISBA is planning a CLE Fest June 5 to 7 at its Chicago office and during the ISBA’s annual meeting June 26 to 27 in St. Louis.

”People can come and get credit in increments of two hours for up to 14 [hours] on-site, and, they can use our electronic CLE 24/7,” Heaton said.

IICLE has scheduled an ”MCLE Video Encore Mall” June 2 to 6 at the UBS Tower conference center, 1 N. Wacker Drive. There, Rahn said, participants can choose from a menu of video replays of titles to watch in six-hour sittings for $195 each.

At the Chicago Bar Association, ”The staff is getting flooded with calls from people wanting to know how the rule works,” said Cunyon Gordon, who chairs the CBA’s CLE committee.

Gordon said many of the CBA committee leaders plan to increase their MCLE presentations in May and June. And the CBA is beefing up its inventory of CLE programs available on DVD.

”We have a bank of rental DVDs already; those are going like hotcakes,” Gordon said.

Karen Litscher Johnson, director of the supreme court’s MCLE Board, which administers the program, said a look at other states with experience in the MCLE scene offers an indication of what might be in store for Illinois come compliance time.

”Other states have mentioned they do have a number of people kind of late in the process trying to get credits,” Johnson said. ”We’ve been talking to providers about planning for April, May, and June of this year — what can providers do to make it even easier for attorneys to get their credits?”

Lawyers create a high-tech courtroom

By Olivia Clarke

David R. Barry, Jr. wanted to prove in a 2002 case that neurosurgeons and the hospital failed to properly treat his client’s cerebral aneurysm. His client may have looked completely healthy, but she experienced serious mental issues associated with the aneurism. She went from being an accomplished adult to possessing a mental state equivalent to a 10-year-old child, Barry said.

So Barry took the jury inside his client’s brain. He used computerized animation portrayed in a video to demonstrate to the jury how the bleeding affected the areas of her brain that control cognition and complex thinking.

The video used illustrations to show the different parts of the brain, highlighting each part and showing what functions each part controlled. It then showed where the aneurism occurred, and how those parts of the brain were affected by the aneurism.

”I think it was vital because the anatomy involved was so complicated,” said Barry, a partner at Corboy & Demetrio. ”In order for the jury to understand why the solution to the problem was relatively simple, they had to actually understand the anatomy.”

Most trial lawyers who handle complex or intricate cases now use technology in the courtroom to convey information about their case to a judge or jury. They find the technology helps them turn complex information into easy-to-digest ideas.

Although the cost can be daunting, law firm lawyers and corporate counsel say the expense sometimes doesn’t matter if it means a successful outcome.

”In the last five years, [using technology] has definitely become the rule rather than the exception,” Barry said. ”It is expensive, but often, particularly in more serious injury cases, it is an investment that is well worth making.”

Reaching the jury

Using technology in the courtroom is almost required today because society lives in a visual and technological age, said Paul Garry, a partner at Meckler Bulger & Tilson.

When Garry started practicing law he used to make paper copies of documents, but juries don’t want to deal with all that paper anymore.

As an employment law lawyer, he has used technology to present information during a trial.

For example, during a case involving a sexual harassment claim, he and his trial team tried to show what happened by creating a timeline PowerPoint presentation. They could click on specific areas of the story, and provide more detail. It helped the jury follow the story more easily, he said.

If they had created a timeline on a poster board, the jury may have skipped ahead in the story, and stopped paying attention to the area they were addressing, he said.

”Juries are kind of expecting you to present things in an electronic format,” Garry said. ”What you try to do is get your message across in ways that are easy and understandable.”

Chris Griesmeyer, a litigation partner at Levenfeld Pearlstein, said he has used technology during trials, but a recent two-week federal trial marked the first time he used technology throughout the entire trial to digitize documents and exhibits for all the witnesses.

Griesmeyer believed this technology would help the witnesses better describe the complex documents. With the help of an outside vendor, the trial team figured out what to use.

The technology allowed them to pop up documents on a screen, while a consultant highlighted and enlarged the sections of the document being addressed.

”It was absolutely wonderful. I will never do another trial without using this technology,” Griesmeyer said. ”[The vendor] uploaded all our documents, and all our exhibits. And whenever we needed to refer to an exhibit, instead of fumbling through an exhibit book, it showed up on the screen.

”It really made the documents come to life. Another benefit is, all eyes in the courtroom are literally on the same page.”

More lawyers are figuring out that if they use technology earlier in the process they stand a better chance of moving a case toward a settlement, said Mike Rogers, an adjunct professor at Chicago-Kent College of Law who teaches litigation technology.

Rogers teaches his students that if they understand how to use technology in the courtroom they will develop a competitive edge over those who cannot.

”I think more and more schools are definitely teaching it,” said Rogers, president of Ronin Consulting, which helps lawyers organize and present their cases technologically. ”We are teaching them a methodology for what works in a courtroom, what is acceptable, and what is not. You are not just there to create death by PowerPoint and bore people.”

David Bernick, a Kirkland & Ellis litigation partner, said he’s been using some type of technology during his trials for the past 25 years. He’s experienced the progression from overhead transparencies and flip charts to computerized 3-D graphics and intricate animation.

In the ’90s, lawyers would load thousands of documents into a computer so they could show each one on a screen, but that was a waste of money, he said.

He likes having the freedom to talk to a jury without the burden of standing behind a podium and shuffling through a stack of papers. Bernick often uses an ELMO legal presenter, which projects on a screen an enlarged image of an exhibit or document.

”My advice is really that technology should be the tail, not the dog,” he said. ”The basic rules of persuasion at trial and, likewise, the basic rules of being efficient in litigation are really the touchstones for everything.”

In-house perspective

Michelle Browdy, a former Kirkland trial lawyer and now vice president and assistant general counsel for IBM, said she’s consistently seen the use of technology in the courtroom on big-ticket litigation — regardless of the size of the city.

Some companies specialize in courtroom technology, and some large firms have staffs in-house that help with the technology, Browdy said. Technology can help make a message clearer, she said.

”If they can’t explain it in the courtroom in a way that the jury or judges understand it, all their money is wasted,” Browdy said. ”That is not to say that you have to have the best and the fanciest systems.”

Sarah Taylor, chief counsel, intellectual property at Robert Bosch LLC, said her company’s patent infringement cases do not typically go to trial, but the company has used technology on those cases that make it into a courtroom.

The technology sometimes makes a trial more cost-effective because trial teams no longer need to make copies of every possible document, Taylor said.

When she was a patent litigator, they used foam boards to present information, but those were expensive. Tools like PowerPoint and ELMO often save money.

”[Technology] makes it easier to communicate with the jury,” Taylor said. ”Everyone can see the document discussed by the witness on one screen. I think it focuses everyone’s attention upward as opposed to them looking down at the paper document, or not seeing the document at all.”

Bell, Boyd & Lloyd invited corporate counsel to a recent forum called, ”Innovative Strategies for the Electronic Courtroom.”

Irving Levinson, a Bell Boyd partner who spoke at the forum, said cases are often won or lost on big-picture themes. The electronic courtroom permits lawyers to refine and present large-case themes in a dramatic fashion.

Levinson said he’s never failed to persuade a reluctant judge to allow technology in the courtroom because he or she is usually curious about how it will work.

Some cases may not benefit from technology, he said. If a case, for example, has less than 20 exhibits and is only a three-day trial — it might be unnecessary.

”The advice that I would give to corporate counsel is to wrap their arms around it and become the captain of their destiny by challenging their retained lawyers to become comfortable with the technology and be very hands-on,” Levinson said. ”It changes the practice of being a trial lawyer in that it allows you to be far more creative, and I find that immensely enjoyable.”

Most people are predominantly visual learners, and the technology allows lawyers to grab the judge and jury’s attention and helps them retain information more effectively, said Daniel Wolfe, director of jury consulting at Kroll Ontrack/TrialGraphix, a trial consulting and services firm. He was also a member of the forum’s panel.

In the future there will be an even greater use of interactive technology, he said.

A few jurisdictions have experimented with virtual technology. Juries, for example, have worn virtual reality helmets so they could see, for example, a 3-D recreation of an accident, Wolfe said.

”I think first and foremost the most important reason lawyers should consider using it is because jurors expect, if not demand, that this type of technology is used, because their normal, daily routines incorporate this type of technology,” Wolfe said. ”Generation X and Generation Y were born and raised with this technology.”

Weighing the cost

Technology in the courtroom often comes with a large price tag, said Joseph Reagen, assistant general counsel/intellectual property for Baxter Healthcare Corp.

Reagen said it’s not unusual to spend several hundred thousand dollars for the technology and a technology consultant. But he finds it worthwhile when it explains complex information in a simple, easy-to-understand way.

For example, a few years ago Baxter’s trial team and an outside consultant developed a 19-minute DVD that cost over $100,000 to produce. But in those 19 minutes it educated the judge on the patent in the case, and the key terms associated with it.

”It turned out to be a justified expense that was very successful,” he said. ”On the other hand, the other side had a 110-page PowerPoint that the judge lost patience with by the fifth slide, and they weren’t able to present it. We quickly accomplished our objective, and it helped us prevail in the hearing.”

Reagen said the expenses often grow, even with a tightly controlled budget. But with millions of dollars sometime at stake, it becomes difficult to balk at spending hundreds of thousands on a technical consultant whose expertise may positively impact the case.

”I think, as a general rule, it is making litigation more expensive,” he said. ”In the last few years the cost of taking a case through trial has grown significantly, and a lot of that is due to consultants — e-discovery consultants and technology consultants.

”It adds a whole new layer. I don’t see a way to not use those resources.”

Costs can be broken down into three components, said Wolfe, from Kroll Ontrack/ TrialGraphix.

One of the largest components is often the cost of hardware, such as equipment rental and the use of items like projection systems, laptops, and screens.

”[But], with more and more of the courtrooms becoming tech-ready the clients don’t have to incur those costs,” Wolfe said.

The second component is the cost of production, such as scanning, imaging documents, and creating presentation material. And the third component is the professional time or the use of a consultant or team to help run the technology, he said.

Garry, from Meckler Bulger & Tilson, said general counsel should ask their outside counsel for a trial game plan so they know what costs they are approving.

”Then before authorizing it, make sure it makes sense,” Garry said. ”Sometimes lawyers fall in love with their technology.”

The trial team should ask themselves, he said, ”Do I understand what I am trying to show?”

Getting the graphics side of a case under control early on will help with mediation and summary judgment, and will keep the overall costs down, said Mike Abernathy, chair of Bell Boyd’s intellectual property department.

”Where graphics tend to get completely out of control is when trial counsel says, ‘Oops, we are going to trial now. I must figure out how to demonstrate this case,’ ” he said.

A good vendor will give a realistic quote and break down the expenses, said Griesmeyer, from Levenfeld Pearlstein. Clients may experience sticker shock when they learn the cost, but corporate clients usually understand that trials can be expensive.

”When they actually show up at the trial,” he said, ”and see what the money is going toward, they are converts.”

Pros and cons

Lawyers sometimes make the mistake of leaving the technology part of a case to the last minute and not practicing before they use it, said Rogers, from Chicago-Kent.

”I think that if you use technology for technology’s sake, you can look overly flashy,” Rogers said. ”It can become distracting if you don’t have a really good reason for using it.”

Lawyers need to manage their expectations and not become so enamored by the technology that they lose sight of such limitations as the budget, said Wolfe, from Kroll Ontrack/ TrialGraphix. Technology is simply another medium to persuade the jury.

Lawyers cannot forget the importance of communicating their message. They need to learn how to use the technology effectively because a jury may translate technological incompetence as legal incompetence, Wolfe said.

Lawyers should also consider their venue, because some venues are not as accustomed to using technology. And consider how a judge will react because some are big fans and others are not, he said.

”Technology can be overused and people become desensitized to it, whether the judge or the jury,” Wolfe said. ”It is not right for every case, and it’s not right for every lawyer. And it is not that you have to use it in every case to be successful.”

Levinson, from Bell Boyd, said many lawyers fear trying technology because they don’t want to give over control of their case, and do not want to create unnecessary work. They also fear that the technology will not work, he said.

”I secretly hope they continue to be afraid of it because it gives me an advantage,” Levinson said. ”Truthfully, the technology is now so simplified.”

A big divide exists between those lawyers who control their technology in the courtroom, and those who let a consultant or technician push the buttons, Levinson said.

Those lawyers who run the technology themselves often instill confidence in the jury and show that they are in control of their case, Levinson said. By controlling the technology, a lawyer can control the pace of the trial.

Lawyers may use technology and assume that, because the jurors see it, it is in the record, said Abernathy, also from Bell Boyd. But that’s not always true.

For example, during a trial two years ago, his opponent made critical mistakes when he failed to put some of the information he shared via technology in the record. Abernathy said there was no oral testimony or written record reflecting that information.

”In the post-trial briefing, they really got in a lot of trouble,” he said. ”They didn’t have a record to support their assertions … You think that because the jurors are learning the information that the record is complete. It is an easy mistake to make.

”That can be devastating and certainly even more devastating when you are on appeal and looking for evidence to support a position,” he said.

Abernathy said he also sees some lawyers using technology too much, in lieu of strong witnesses and strong advocacy. The witness sometimes gets diluted or drowned out because of too many exhibits and too much technology, he said.

”I think people often get so into the technology that they lose sight at the end of the day of what really counts — witness credibility,” he said.

Using electronic demonstratives when cross-examining a witness can be challenging, said Bernick, from Kirkland, because the witness doesn’t need to accept what was prepared.

”Typically, on cross-examination, I would never use prepared graphics,” Bernick said. ”I would prepare the graphic and think about how to draw it myself.

”On cross-examination, I used to go through pad after pad of flip charts,” he said. ”The jury sees your hand, and the pen becomes your punctuation.”

Garry, from Meckler Bulger & Tilson, said lawyers must ask if the technology brings added value to the case.

He sometimes prepares the technology, and then narrows down the number of tools he will use as he gets closer to the trial. He may vet the technology during mock juries, and in consultation with other lawyers in his firm.

General counsel must consider the courtroom technology, and be careful that it does not portray their company as too slick — especially in situations where it’s a company against an individual, Garry said.

”We are past the point where people are debating, ‘is this something we have to use?”’ he said. ”The issue is how to effectively use it.”

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.

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