In an effort to enhance expertise in patent cases among U.S. district judges, the 10-year Patent Pilot Program went into effect assigning patent cases to 14 federal district courts in 2011. The U.S. District Court for the Western District of Tennessee was one of those courts chosen.
Seizing upon this opportunity and to expand on their 240 attorneys in 10 offices in five states, the law offices of Stites & Harbison PLLC has opened in the Bioworks Foundation building in the University of Tennessee-Baptist Research Park in the Medical District. Founded in 1832, it is one of the oldest and largest firms in the Southeast.
“We have existing clients that are either here or do business here, so it was kind of a natural spot to expand for us,” said attorney Richard Myers of the move into Memphis.
The first patent infringement lawsuits in the Western District courts were filed in February 2012 by Stites & Harbison on behalf of client Multilayer Stretch Cling Film Holdings Inc., the maker of the cling film wrapped around goods to keep them secure during shipping.
In addition to the local clients and the Patent Pilot Program was the advantage of attorney Cong “Connie” Ding, “a great combination of our strengths,” said Myers, who is based in Nashville. While “the goal is clearly to have a full-service office,” he continues, right now Ding is the only onsite attorney.
Ding, who has been with the firm for about nine months, had been with Harris Shelton Hanover Walsh PLLC, but her background goes much deeper and is an asset to the patent work done by Stites & Harbison. She was a medical doctor at Beijing Xiyuan Hospital in Beijing, China, and moved to the United States and Michigan State University for the Molecular Biology Master’s Program. St. Jude Children’s Research Hospital brought her to Memphis as a researcher.
“I developed an interest in patent law along the way while I was working at St. Jude, so I went to law school,” Ding said.
She graduated cum laude from the University of Memphis Cecil C. Humphreys School of Law in 2009.
With patent law, Ding gets to stay on top of the latest technological breakthroughs.
“That’s the beauty of this career, that you still have a sense of what’s going on and also allows you to practice in a different field,” she says.
While Ding’s expertise is medical by nature, Stites & Harbison is able to handle cases from any field through the local office with its experts from other cities. Patent law is federal and not governed by state bars. The role of such a firm is to prosecute patents on behalf of clients as well as litigating those who would seek to infringe upon those patent rights.
Obtaining patents can be a complex process including searching for the novelty of a patent, which may include negotiating or amending the patent’s art. This is done in Alexandria, Va., where the patent office has always been located, and four relatively new satellite offices in operation or under construction in Detroit, Denver, Dallas and California’s Silicon Valley.
Local clients include the Memphis Zoo and an academic research institution, a niche of the firm. A patent on behalf of researchers at the Memphis Zoo has been issued for a panda pregnancy test.
The patent field is a rapidly growing area of legal practice, partly due to so many companies working at a global level.
“As a firm, we have a lot of foreign cases that come to the States and we see that’s one of our strengths in the patent practice field,” Ding said.
An international treaty with most countries will honor the original filing date in the U.S. if it is filed in that foreign country within a year’s time. As companies merge and work within the international marketplace, it is crucial to have all bases covered.
The patent law group firm-wide numbers about 30, and is an active group obtaining 476 patents last year and 261 trademark registrations, putting them in the top 50 for trademarks issued nationally.
While Stites & Harbison is an international concern with a strong regional presence, its location within the Bioworks building is a strategic one with speakers giving talks through lunch and learns, startup companies forming and growing, and a buzzing activity of innovation.
“We wanted to be able to help at the same time and also grow our market in Memphis,” Ding said.