"Patently Sound: Attorney Gained Expertise on Patents with HP, IBM," Idaho Business Review (Oct. 27, 2008)

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Not many aspiring attorneys can teach a college course in electrical engineering while attending law school, like Les Murray did in the early 1980s. Murray, a registered patent attorney who recently joined Boise law firm Zarian Midgley & Johnson after 22 years as an attorney in the corporate world and a 20-year career in the U.S. Navy, drew on his science and engineering background right from the start of his legal career.

After graduating from the University of Idaho law school in 1984, Murray joined Hewlett-Packard in Boise as a patent attorney, drafting patents and then shepherding them through the U.S. Patent Office, the kind of work that requires a strong scientific background in addition to good legal judgment and writing skills. Patent attorneys must generally have a technical degree and pass an examination before they can represent inventors before the patent office.

After six years with HP,Murray moved to private practice at a boutique law firm in Monterey, Calif., and then to IBM Corp. in San Jose, where he spent eight years, rising to the position of senior corporate patent counsel. In that position, he managed a patent portfolio related to storage technology, which required him to decide which of 10,000 patents were worth protecting in both the United States and foreign countries.

Murray then returned to HP in Boise and eventually became senior corporate counsel for intellectual property, handling a wide range of intellectual property transactional work, including licensing, contracts and litigation. In that role, he saw how important his earlier drafting work could be, with lawsuits turning on the interpretation of a few words in a patent.

Murray holds a bachelor’s degree in physics from the University of Idaho and master’s degrees in aeronautical engineering and management science from the Naval Post Graduate School in addition to his law degree from the University of Idaho. He retired from the Navy with the rank of lieutenant commander; he served as an A-6 Intruder bombardier/ navigator and then in aviation weapons systems testing at the Pacific Missile Test Center in Point Mugu, Calif.

Even though Murray has already retired twice – from the Navy in 1980 and from HP in May 2007 – he joined Zarian Midgley as part-time senior counsel “to keep the brain working.” “Plus, I really, really enjoy what I do,” he said. “You’re right on the cutting edge of all this stuff.”

Murray sat down with Idaho Business & Law for an interview and, later, answered the following questions:

Q: You started your career drafting and “prosecuting” patents, as it’s called when you steer an invention through the U.S. Patent and Trademark Office. Was that a difficult process to master?

A: In a word, yes. Coming from an engineering background, I did not expect to have any difficulty understanding the technical concepts. However, drafting a patent is much more difficult than writing a technical paper. In addition to the many rules and regulations governing how a patent application must be drafted, one must also have an understanding of patent law and the numerous decisions handed down by the courts.

Q: Later, when you were at IBM during the early and mid-1990s, you worked as a portfolio manager, which required you to help select the patents that the company would protect. At the time, IBM maintained 60,000 patents, and you oversaw the 10,000 patents associated with the company’s storage portfolio, including products like DVDs. With all of that intellectual property to analyze, how could you tell which patents were viable and important to maintain?

A: This, indeed, was a very challenging job for which we developed many guidelines. The two most important guidelines paid careful attention to business and industry direction. Obviously, our first priority was on protecting those inventions which pertained most directly to the company’s business. Secondly, we looked carefully at the direction technological development was heading, not only for IBM, but also for our competitors.

Q: Why not just protect all inventions?

A: Primarily, it’s a question of resources. Patents are very expensive to get and maintain. It has been estimated that to protect an invention in the United States and three or four key foreign countries it may cost $50,000 or more. That’s just to acquire the patents; when you add in the fees required to keep those patents in force, the expense is likely doubled.

Q: Part of the analysis was determining whether to file the patents in the United States or in another country. Why is that important, and how did you decide?

A: United States patents are enforceable only in the U.S. Similarly, a Canadian patent or a German patent is only enforceable in Canada or Germany. Today, we operate in a worldwide marketplace. Most U.S. companies manufacture products that are marketed in other countries, and most foreign companies also manufacture products that are marketed in other countries, including the U.S. For products worldwide, it becomes necessary to file and obtain patents on a worldwide basis. There are many factors which may determine which countries a patent should be filed in. The most important of these factors are where a company is going to market its products, and where a company’s competitors are located.

Q: In an ideal world, I’m sure each one of those patents offered a potentially useful technological advancement. Do you have any insight into what makes an innovative idea actually viable in the real world? Or is it always kind of a mystery what will ultimately succeed?

A: There is no magic formula that will provide the answer, but there are a number of factors to consider that may provide some confidence in an assessment of an invention. Does the invention solve a problem and is it useful? Does the invention provide a new useful device or does it provide a new feature for an existing device? Ultimately, though, regardless of how much product analysis and market research is done, in the evaluation of whether an invention is viable, the answer is always a probability of success.

Q: While at IBM, you worked as part of a consortium of nearly a dozen companies that helped develop the technology behind the DVD.Why was that partnership necessary? Why didn’t the companies simply compete with one another and try to reap all the benefits of being first to market?

A: The DVD was the goal of several companies, both large and small. All of these companies were doing extensive research and development work to come up with a viable product. Additionally, they were getting patents to protect their investment. As a result, each company held patents on one or more pieces of the DVD technology, and no one company could proceed without the use of other companies’ patents. Many products have been developed in this manner and a consortium is one of the many licensing methods to allow several companies to use each others’ patents and other intellectual property to bring a product to market.

Q: Later, in your second stint with Hewlett-Packard, you started to handle litigation, including court battles over patents. You mentioned that this experience gave you a new appreciation for how to effectively draft a patent. Can you point out any particular lessons you learned?

A: A patent is a legal document that protects property, much like a deed to real property. The patent and its claims (the portion of a patent that actually defines the invention being protected) must be clear and precise. Understanding the decisions handed down by the courts in patent infringement cases provide tremendous insight as to how a patent and its claims will be interpreted. This insight is vital to drafting a patent and claims that will ultimately protect the invention.

Q: As an outside observer of Micron, which is known for its robust patent production, do you believe the company can innovate its way out of its current problems?

A: Micron has been in the top ten companies receiving the most U.S. patents for the past several years. For a company to survive, it must innovate. Micron is clearly an innovator. While I do believe that Micron can innovate its way out of its current problems, I have always believed that Micron also has to do more to diversify its product line.

Q: So you’ve retired from the Navy and now from the corporate world. For heaven’s sake, why are you still working?

A: I want to keep my mind active and keep up with the advances in intellectual property law.

– © 2008 Idaho Business Review. All rights reserved. Originally published in an Idaho Business Review publication, Idaho Business & Law, October 27, 2008.

By Simon Shifrin
IDAHO BUSINESS REVIEW

Established in 2007, Zarian Midgley (www.zarianmidgley.com) is a boutique law firm specializing in intellectual property matters (especially patent law), intellectual property litigation, and complex business litigation. The firm’s registered patent attorneys, patent agents, and lawyers hold technical degrees in electrical engineering, computer engineering, physics, chemistry, chemical engineering, genetics, molecular and cellular biology, aeronautical engineering, mechanical engineering, and manufacturing engineering. The firm’s objective is to provide the high-quality representation expected of large firms, with greater efficiency.