Intellectual Capital in San Diego

Three top intellectual property lawyers talk about practicing in a place so near to Los Angeles and Silicon Valley

Published in 2007 San Diego Super Lawyers — May 2007

In the past, when it came to intellectual property, San Diego lived in the shadow of Los Angeles and Silicon Valley. That’s changed. Throughout the past decade, San Diego’s IP community has flourished, as evidenced by high-tech powerhouses like Qualcomm and Intuit, a sizeable number of biotech concerns and a growing cadre of lawyers prosecuting clients’ copyright, trademark and patent rights. But, as Richard Sybert, a partner in Gordon & Rees’ San Diego office, notes, “there hasn’t been corresponding growth in the number of lawyers doing IP litigation.” Which makes Sybert and the other IP litigators profiled below especially noteworthy.

DAN LAMB

Pillsbury Winthrop Shaw Pittman

When Dan Lamb graduated from Wake Forest University in 1969, the North Carolina native wanted to go to law school. But the Vietnam War was raging, graduate school deferments had ended and thousands of young men were being drafted every month under a lottery system. Lamb’s lottery number was 15, which meant he was virtually certain to be drafted.

Which is what happened. But instead of being shipped overseas, he landed in Fairbanks, Alaska, as a clerk in the local JAG office. Although he had expressed interest in law, his typing skills landed him the job. “In retrospect, taking a high school typing class was one of the smartest things I ever did,” he says.

After his discharge, Lamb headed to New Orleans. He worked as a waiter and a Chiquita banana salesman, but finally got into the University of Tennessee College of Law in 1974. After graduation he joined Arnold & Porter’s Washington, D.C., office. He liked the city but not the firm’s largely tax and litigation law practice. “I wanted to take cases to trial,” he says.

In 1981, he moved to San Diego and joined what was then Gray, Cary, Ames & Frye, where he developed a trial practice and became a partner. Lamb relocated his practice in 1990 to the San Diego office of Brobeck, Phleger & Harrison, a national firm focused on high-tech and emerging growth companies.

When the dot-com bust forced Brobeck to fold, Lamb joined the San Diego office of Pillsbury Winthrop Shaw Pittman, where he now practices. “I had two changes of firms by choice, and with one change my horse was shot out from under me,” he says.

A commercial litigator for three decades, Lamb has tried his share of IP lawsuits. Particularly noteworthy is a 1980 case, which revolved around a software program used to manage a hospital pharmacy. Lamb’s client, the program’s creator, sold it to a company that promised to pay royalties based on the program’s use. Instead, the company developed similar software and reneged on its agreement. Lamb sued the company in San Diego federal district court and won a $2 million jury verdict, prompting a settlement during appeal.

This was one of the earlier legal cases involving software. Indicative of how little people knew about software at the time, Lamb says, was the judge’s response when Lamb and his adversary were arguing about obtaining tapes of the two software products so they could be compared. “The judge said, ‘How hard can that be? We’ll just get somebody to listen to the tapes.’”

RICHARD SYBERT

Gordon & Rees

Richard Sybert is no wave-rider. Despite working as a lifeguard one summer, years ago, he’s never learned to handle a surfboard.

But while Sybert, a partner in the San Diego office of Gordon & Rees, doesn’t surf, he’s still eminently qualified to defend the “Surf City USA” lawsuit filed in October in Santa Cruz Superior Court. In this suit, the plaintiffs, owners of a Santa Cruz shop selling T-shirts that display the three words, are challenging the claim of Sybert’s client, the Huntington Beach Conference and Visitors Bureau, that “Surf City USA” is its trademark.

A highly respected IP litigator, Sybert has tried cases during the past couple of years in the Pacific Northwest, Arizona, Tennessee, Utah and, of course, California. He recently won a decisive victory in a case involving the famed Malibu Pier.

In that lawsuit, Sybert, representing the California Department of Parks and Recreation, sued a businessman in a Los Angeles federal district court to establish the park department’s trademark rights to the name “Malibu Pier.” The businessman wanted to use the words for a Web site domain name and a clothing line.

Sybert won by proving that “Malibu Pier” symbolizes the Southern California beach culture. “We had to persuade both judge and jury that Malibu Pier meant more than a bunch of piles stuck in the ocean,” he says. Similarly, he explains, the issue in the “Surf City USA” case is whether those words represent an entire lifestyle or merely a place.

Raised in the San Francisco Bay area, Sybert earned his law degree from Harvard then clerked for a federal district judge in Honolulu. He joined the Los Angeles office of Sheppard, Mullin, Richter & Hampton in 1978 and eventually became a partner.

He took time off in the mid-1980s to become a White House Fellow, serving as a special assistant to the Secretary of Defense, then left the firm in 1990 and eventually became California’s director of planning and research under Gov. Pete Wilson. As director, he championed tort reforms. But because of trial lawyer opposition, “the reforms died a swift and predictable death in the legislature,” he says.

Sybert left government in 1993 and became general counsel for Lanard Toys, a global toy company. While there, he ran twice as a Republican for Congress, losing narrowly each time. In 2001 he left Lanard for Gordon & Rees. “I liked having partners, liked the challenge of having cases and dealing with different industries,” he says of his return to private practice.

He’s happy to live and work in San Diego. In Los Angeles, he says, “the traffic grinds you up on a daily basis. In San Diego, mechanically, on a day-to-day basis, things just work better.”

JUANITA BROOKS

Fish & Richardson

Most litigators would kill for Juanita Brooks’ track record. During a 12-month period ending June 2006, Brooks, a partner in the San Diego office of Fish & Richardson, tried five patent cases and won them all.

In the most recent of these cases, Brooks vanquished Baxter Healthcare. The corporate giant sued Brooks’ client—a provider of products and services for people with chronic kidney failure—for willful infringement of four patents and sought a whopping $258 million in damages. Brooks convinced an Oakland federal district court jury to invalidate the patents and squelch Baxter’s claim. The judge recently granted Baxter’s motion for a new trial.

A month earlier, in a Texas federal district court, Brooks represented a maker of microchips inserted into pets for identification. She persuaded the jury that the defendant had infringed her client’s patents and owed $6 million in damages.

Brooks didn’t begin her legal career as an IP litigator. A graduate of San Diego State University and Yale Law School, Brooks wanted to do federal trial work when she finished at Yale in 1977. “The best federal defender’s office in the country was in San Diego and they offered me a position,” she says.

The federal defender experience was extraordinary, she says. “I got to try about 10 felony cases a year, so by the age of 26 I had about 30 felony jury trials under my belt.”

In 1980, Brooks opened her own San Diego practice, specializing in white-collar crime defense. Over time, the practice grew so large it became unwieldy to manage. So in 1993 Brooks joined McKenna & Cuneo (now McKenna Long & Aldridge), whose federal contract work complemented her practice and interests.

At McKenna, Brooks began doing civil litigation, including patent cases. A growing interest in patent work prompted her to move in 2000 to Fish & Richardson, one of the nation’s leading patent litigation firms. “I’m now a total patent geek,” she says.

Split evenly between plaintiffs and defendants, Brooks’ patent litigation practice is national in scope. “I find it exhilarating,” she says, explaining that she relishes representing companies of different types, sizes and technologies.

Brooks, as an Air Force brat, says she grew up “in a little bit of everywhere,” but now considers herself a San Diego resident for life. Having tried cases in the local federal court for nearly three decades, she’s quite comfortable here. “I like knowing the judges, many of whom I practiced with” before they went on the bench, she says.

Between enjoying life with her 16-year-old daughter and a 12-year-old son and trying—and winning—patent cases, Brooks’ plate is pretty full, she says. “I don’t have a lot of time for hobbies and interests.”

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