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Baker Botts Eyed As Model For Growth In IP Area

Reprinted with permission of IP LAW Bulletin

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Amid strong growth in intellectual property practices at general-practice firms, many firms are looking to Baker Botts for a model on how to grow aggressively through acquisitions and lateral hiring.

Some 15 years after beginning its IP group’s expansion, the firm’s IP group is one of the cornerstones of its practice, and the largest practice group after the corporate and litigation groups.

“I don’t think we’ve ever been busier,” said Robert Scheinfeld, managing partner for the IP group’s New York office.

The Houston-based firm started to grow its IP group in 1990 when it hired away Jerry Mills, now the group’s managing partner, and 11 other attorneys from now-defunct IP boutique Baker, Mills & Glast.

With Mills’ arrival, the firm began to grow into a full-service competitive IP practice, and supplemented its Dallas team with several other lateral hires.

In 1997, Mills turned Baker Botts from a general practice firm with a strength in IP to a national IP force when the firm merged with 45-attorney IP boutique Brumbaugh, Graves, Donohue & Raymond and created an IP practice in New York.

The 100-lawyer practice group now has offices in Dallas, Houston, Austin and New York, and has just grown its Washington, D.C. practice from one to three, hiring two intellectual property partners from Burns, Doane, Swecker & Mathis.

“We expect to have 10 to 12 attorneys in that office by the end of the year,” Mills said. Although may of the firm’s Texas and New York boutique veterans have since retired and been replaced with Baker Botts-trained attorneys, Scheinfeld says the firm’s strength derives in part from its IP heritage.

“I think it’s rare that you will find a situation where you have the expertise of a boutique with the size, backing and comprehensiveness of a general practice firm,” said Scheinfeld, who was previously a partner at Brumbaugh. “Unlike many general practice firms, we are still true to our roots. That is, we still value true patent lawyers.”

At the same time, Scheinfeld has seen the group become more aggressive and integrated into the general practice firm as new associates have joined who have only known life at a general practice firm. He and Mills say there is a great emphasis at Baker Botts placed on training new IP associates.

“I think we actually have the training set up so that [new attorneys] have a big advantage,” insists Mills. He says the training at Baker Botts is of the same caliber as that he and other older attorneys received at boutique firms. And, he emphasizes, the firm will never abandon its patent prosecution roots.

“We think it’s very important training ground for a young lawyer,” Mills said. “I think personally, if someone does not have a good background in patent prosecution, they may overlook something when they go to court.”

Both Mills and Scheinfeld say they are happier as part of the Baker Botts’ general practice firm, and believe the boutique model is fading.

Mills cites the synergies developed from being able to glean clients from other practice groups, performing both due diligence for mergers and acquisitions and identifying potential patent issues for firm clients. At Baker Botts, IP attorneys have especially unique opportunities in the firm’s Energy and Global Practice Departments.

Another advantage, Mills said, is the access to trial lawyers.

“The Eastern District of Texas is a real hotbed,” Mills said. “[In those cases], we need someone who can speaks the language of the common folks.”

Still, Scheinfeld says the New York team does all its own litigation, and he and Mills foresee litigation as the largest area of growth both within the industry and in the firm.

Since the advent of “IP trolls” Baker Botts has been a defender of many of its longtime clients against Acacia and Orion IP in aggressive patent infringement suits. It has counseled Mastercard International in several cases alleging infringement of its PRICELESS trademark, and currently, several attorneys are in the midst of a trial in California involving patent rights to bid-for-placement technology in Internet advertising.

The firm prides itself on its ability to participate in landmark decisions and stay ahead of IP trends. Before business methods were considered patentable, Baker Botts participated as amicus curiae in the State Street Bank case, which signaled to companies that methods of doing business could be patented.

Some of the firm’s other representative clients include Cisco Systems, Haliburton, Liberty Media Corp., Texas Instruments, Columbia University, Dell Computers, Fuji Photo Film U.S.A. Inc., J.P. Morgan Chase and Hitachi.

As the firm continues to grow, Mills and Scheinfeld have considered the prospect of adding intellectual property representation on the West Coast, and perhaps some overseas. But right now, they are looking for more attorneys to complete the work coming into their Texas, New York and Washington, D.C. offices.

“We’re attorney-constrained right now,” said Mills. “We need more lawyers.”
He said the firm is especially looking for law school graduates with backgrounds in electrical engineering, computer science and biotechnology. Because if there’s one thing Baker Botts has learned, it is that IP excellence requires continual growth.

“We’ve always been a comprehensive IP group,” said Scheinfeld. “But now, we have the ability to be a full-service firm.”

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