Litigation related to computer software and hardware has become one of the most prominent parts of intellectual property law.


But it wasn't so long ago that a lack of real understanding of the technology and the issues on the part of the public, attorneys and even the firms they were representing had created a Wild West-style legal landscape.


Morgan Chu of Irell & Manella LLP is one of the top IP lawyers in L.A. But he was, by his own estimation, "very green and very wet behind the ears" when he got involved with a case involving Mattel Inc. and hand-held computers back in 1978. His firm didn't have a separate IP practice at that time and tried to turn down the case.


"The senior lawyers in the firm told the client we didn't have any experience in patent work and that I really didn't know much about tech," Chu recalled. The client persisted, however. Mattel hired an additional patent lawyer and some tech consultants and offered the assistance of their own in-house patent department.


The reinforcements must have helped, because when the case went to trial, Chu's team won. "And that was our inauspicious beginning," he said. Despite the win, Chu and the firm learned a lesson. The firm's IP practice has been marked by cautious growth. They do not attempt to keep pace with the demand for their services.


"We routinely turned away potential new clients, and work from existing clients, because we do not feel we can adequately take on the new work given the lawyers and assistants and staff we have," Chu said. Picking their spots enables the firm to claim some significant victories.


In 1986, Chu was involved in the nation's first software patent case, The client was Candle Corp., which had been accused of infringing on software patents in the large computer systems it installed for banks and insurance companies. The team led by Chu convinced the judge that plaintiff Boole & Babbage Inc. didn't have a valid patent.


"There was a time when software wasn't patentable," Chu said. Things have certainly changed. Now it's just a question of keeping up with the ever-increasing applications.


Chu said that with cell phones, laptops, PDAs, Blackberries and portable game devices, some people in Los Angeles carry as many as five devices with computer software. Even some cars, Chu points out, are like computers.


Chu is currently representing TiVo Inc., which is suing the satellite television firm Dish Network and its parent EchoStar Communications Corp. TiVo claims Dish is unlawfully employing its unique recording and playback software.


Chu said it's not just the increasing number of platforms, the amount of software to be patented and the added complexity of the work, but also the scope and number of parties involved in litigation that makes cases for law firms explode.


"Today it's quite common to have one or more plaintiffs and four, five, 10, even 20 defendants," Chu said. "It's common to have two companies fighting with litigation in three courts in the U.S. And it's common when there's enough at stake in the litigation to have it going on in one or more places in Europe while there's litigation going on in several cites in the U.S. and several cities in Asia."


Chu, the son of Chinese immigrants, favors a bow tie as part of his work attire these days. He said that he appreciates his firm's corporate culture, which celebrates creativity and smarts, and the fact that it looks for more than technological expertise in its IP attorneys.


"It's more important that they be creative, energetic and darn good lawyers."

*Dean's List for Software
Robert G. Krupka
Partner, Intellectual Property
Kirkland & Ellis LLP
L.A. Lawyers: 115
L.A. IP Lawyers: 25
Clients: Motorola Inc., Honeywell, WMS Gaming Inc., General Foods Corp.
Good to Know: The firm has taken 60 cases to judgment and 12 to trial with only one loss.
Krupka runs Kirkland's burgeoning IP practice in L.A. He has accumulated $1 billion in verdicts for his clients and settlements totaling $2.5 billion.

*Honor Roll for Software
Rick Richmond
Partner
Kirkland & Ellis LLP
Good Work:
He was part of a trial team that won $560 million in compensatory damages for Dr. Gary Michelson against a Medtronic Inc. subsidiary.
Good to Know: He works closely with Krupka but avoids the limelight.

Mark Scarsi
Partner, Intellectual Property & Technology
O'Melveny & Myers LLP
Casework:
Represents Apple Inc. in its multi-district litigation of the JPEG standard. He also represents Lockheed Martin in patent litigation involving attitude control of satellites.
Need to Know: Former Navy man and software engineer

Evan Finkel
Partner, Intellectual Property
Pillsbury Winthrop Shaw Pittman LLP
L.A. Lawyers:
80
L.A. IP Lawyers: 17
Specialty: Unfair competition and computer law focusing on hardware, software, peripherals, computer-implemented business methods

Kent Goss
Partner, Intellectual Property
Pillsbury Winthrop Shaw Pittman LLP
Specialty: Right of publicity, software copyright infringement

Kevin G. McBride
Partner
Jones Day
L.A. Lawyers: 130
L.A. IP Lawyers: 30
Clients: Hughes Electronics Corp., Honda Motor Corp., DirecTV, Motorola

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