Sonnenschein Eyes Growth in IP Group

June 14, 2005

IP Law Bulletin (Friday, June 03, 2005)--Over 17 years, Sonnenschein, Nath & Rosenthal has grown its intellectual property practice from four attorneys to 90. It has favored incremental growth, and has had the goal always of boasting a full-service IP practice with the advantages of general practice firm support.

But recently, more and more general practice firms have taken on the once rare task of creating a full-service IP group with as many or more lawyers as Sonnenschein’s own IP group. And this new brand of growth occurs overnight—by swallowing IP boutiques whole and creating instant competition.

Is Sonnenschein worried?

”Actually we’re inspired,” said IP practice managing partner Samuel Fifer. Although the firm has made no formal announcements, Fifer hinted his own firm could well be the next mega-firm to bolster its practice by acquiring a boutique. “We’re actually looking at that as something we might do ourselves.”

After all, in its approach to expansion, like its approach to recruiting and advising clients, Sonnenschein embraces progress and adaptability.

When the IP group meets with a client, Fifer said, his attorneys have no preconceived notion about what role they are supposed to play. Instead, they are whatever their clients need them to be.

“It isn’t from the perspective of saying we’re inventing a need because we’ve got something to fill it,” Fifer said. “The client’s agenda is our agenda.”

He gave the example of the firm’s work with Sun Microsystems in an antitrust and patent case with Microsoft Corporation. Sonnenschein came in as one of several outside advisors after a battle between the computer and software manufacturer and Microsoft had already begun.

“We kind of said we need to re-envision this,” said Fifer. “What the client needed was somebody who could kind of fight a ground war in the discovery trenches and really kind of fight the other side to a standstill. And going in I’m not really sure that they felt that was necessary.”

What resulted was a settlement of almost $2 billion delivered to Sun Microsystems after Sonnenschein advised the company for about a year.

“It all had to do with perceiving what the client needed,” Fifer said.

Another aspect to serving its clients, Fifer said, is culling resources from all of a firm’s practice groups and geographic locations.

“A lot of firms talk about taking a team approach to things,” he said. “We really do it.”
Fifer said that while there are technically 90 lawyers categorized as IP attorneys by human resources, he estimates some further 40 lawyers have a hand in the execution of IP legal work. The firm also frequently teams together two or three different groups, including the corporate and litigation practices, and most recently, the internet security group. And while the firm does hire trial lawyers in the intellectual property section, the IP group often taps the resources of the firm’s litigation department.

“We have what we would call the usual suspects,” Fifer said, referring to the seven or eight litigators known to be superstars for major trials.

Reflecting a firm-wide commitment, Sonnenschein’s IP group places a strong emphasis on diverse recruiting. The firm has a full-time diversity manager and a Corporate Diversity Counseling Group to advise businesses and organizations in diversifying their workplaces.

“We’re trying to look at ourselves and see that we mirror society as opposed to just a homogenous view of who we are,” Fifer said.

While the firm looks for those with strong technical backgrounds for patent prosecution, one of the firm’s main criteria for new associates is “a willingness to learn.”

“I think for the most part people have a good idea of what they want to do before they start, but having said that, they’re not fully formed when they come out of law school,” Fifer said.

Since Fifer first joined the firm in 1988 as one of four intellectual property attorneys from dissolved Chicago firm Isham, Lincoln & Beale, he said he and his fellow IP group pioneers’ goals were to create a full-service practice that could handle the biggest of clients and cases.

The group grew to about nine lawyers and remained stagnant until about 1996. At that time, the firm became aware that the next generation of intellectual property firms required more manpower to sustain relationships with large companies.

“Our vision there was to become full-service and then become capable in handling large high-tech litigation matters that related to areas of technology. We decided that the best way to become competent in that area was to have a full-service IP practice. That’s how it’s gone since that time.”

The 90-lawyer IP group has not yet acquired any groups or firms, although the practice did gain several additions when the firm as a whole acquired about 50 lawyers from RubinBaum. And the firm has expanded with both lateral hires and new associates.
IP lawyers are now stationed in eight of Sonnenschein’s offices including Kansas City, MO; Los Angeles; Short Hills, NJ; New York; San Francisco; St. Louis and Washington, D.C., with the largest concentration in Chicago, where the practice group began.

Its representative clients include Data General, Hyatt Corporation, Lions Gate Entertainment, Boeing, New York Life Insurance Company, Simon & Schuster, Inc. and Teva Pharmaceutical Industries Ltd.

To cap off the practice group’s development to this point, it changed its name from Intellectual Property to Intellectual Property & Technology.

“[It] reflects the reality that a lot of our work touched on areas of technology as well as just intellectual property.” Fifer said. And that, by Sonnenschein’s logic, is progress.