This Q&A is one in a series featuring MBHB partners discussing recent key firm initiatives.
Bradley J. Hulbert is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Mr. Hulbert, a founding partner in MBHB, has diverse experience in obtaining, evaluating and enforcing intellectual property. As a counselor to both Fortune 500 and start-up, venture capital companies, he has a special interest in developing creative, cost-effective strategies to address specific business objectives. He is a leader in the firm’s efforts surrounding the opening of a new office in Mountain View, California.
What were the firm’s strategic reasons for opening an office in Mountain View?
BH: “By being in Mountain View, we are better able to serve our clients located here. While phone calls and emails are great, eye-to-eye contact is essential to understanding a client’s business and their needs. This is especially the case for clients with large or substantial investments in their intellectual property portfolios. It’s really much like a spouse — it’s very difficult to maintain a good relationship if you’re not spending time together once in a while. The idea is that just by being around more, whether in board meetings or in hallway conversations, you’re more likely to have a better sense of the client’s business and their strategy, and thus make better decisions on their behalf.”
Do Silicon Valley companies value intellectual property (IP) more than companies in other regions of the country?
BH: “With tech companies, IP protects their strengths, their growth and their future. Some companies are more marketing-focused and sell a certain brand, while other companies make their living selling their technology. Tech companies value IP more because it protects how they make a living. High-tech companies also tend to be more innovative with their products, which can make them a target for more patent litigation. And, of course, high-tech firms are concentrated in California. Looking at reports from the U.S. Patent Office on how many patents are issued to residents of various states, California has over three times more patents than the next-leading state.”
Are there certain characteristics about MBHB’s culture that makes it a good fit for Mountain View?
BH: “I think our culture is still well-expressed by our “up to speed/down to earth” approach and it’s consistent with Mountain View’s high-tech culture. Tech-centric clients want counsel that is already up to speed when they walk in the door. They don’t have time to wait for you to catch up. Being down to earth also matters. People don’t wear suits in the Valley very often. Even amongst in-house counsel, t-shirts are not uncommon. We were one of the first offices in Chicago to have business casual be the standard. Being down to earth is certainly part of our culture and this is consistent with startups and established tech companies.
It also helps that 100% of MBHB attorneys and technical advisors hold science or engineering degrees and, of these, nearly 50% hold Ph.D.s or other advanced degrees. Witnessing creativity is one of the things I enjoy most about working with clients in Silicon Valley. It’s great when you go into a room full of really bright, motivated people for an ‘invention harvest’ and, instead of coming out of the meeting with two or three ideas, you come out with outlines for 20 or 30 patentable inventions. But, if you’re slow to pick up the concept after three or four minutes of discussion, they won’t waste time explaining it to you. They’re hired to create and innovate, not sit with lawyers.”
What were the strategic reasons for opening the office in Mountain View versus Los Angeles or San Francisco?
BH: “While we are located in the heart of Silicon Valley, we’re also in the Bay Area, which is a gateway to a huge biotechnology/life sciences community. So, the Mountain View office straddles both the software and electronics market and the biotech market. This sweet spot allows us to be close to many of our tech-centered, West Coast clients who are in very different industries. And, I admit, there are also some really great restaurants in Mountain View.”
What is your vision for this office in the next 2-3 years? In 5 or 10?
BH: “In the short term, we hope to grow our existing client base and generate more brand recognition by building on the work we already do. At the end of the day, we’re a Chicago-based firm with a wealth of experience and knowledge specific to several key technology-based industries. Our “up to speed/down to earth” approach has proven to work here. In the long term, we want to position our professionals, our firm, our services and our expertise to be part of the next wave of innovation in software and electronics, as well as in biotechnology and life sciences. These industries are still in their relative infancy and have untold years of innovation left in them, and we need to be here for it.”
Are there any differences in practicing in the Northern District of California versus other regions?
BH: “Judges in the Northern District of California tend to work with a greater volume of patent litigation. On average, with notable exceptions, they tend to be a little more used to patents and patent litigation — they just do a lot of it. When a judge is experienced with patents, litigators can spend less time bringing them up to speed on the nuances of patent law and patent litigation procedure.”
Are there specific areas within the technology and biotechnology industries that you see as drivers for firm growth?
BH: “Biosimilars, patentable subject matter issues and the convergence of biotechnology with software and nanotechnology are key areas we are watching. Recent cases, like Myriad and CLS Bank, seek to address the key question of ‘what is protectable?’ and how to properly claim inventions. In addition to the protectability of software and biotechnology, I think the convergence of the two technologies is exciting to watch. While nascent, I think that it could be a big growth area in the future. We are also still grappling with issues related to patent assertion entities, or PAEs, and the effect of industry standards in defining RAND royalties in the high-technology space, where more established case law could make business operations more predictable.”
