Fish & Neave

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Fish & Neave

1251 Avenue of the Americas
New York City, New York 10020-1104
U.S.A.
Telephone: (212) 596-9000
Fax: (212) 596-9090
Website: http://www.fishneave.com

Partnership
Founded: 1878
Employees: 200
Sales: $96.5 million (2001 est.)
NAIC: 541110 Offices of Lawyers

Fish & Neave, one of the nation’s most respected law firms, specializes in intellectual property issues involving patents, trademarks, and copyrights. Although large full-service or general law firms are advancing quickly in this legal specialty, Fish & Neave and other specialist or boutique firms continue to dominate the intellectual property (IP) niche. With many of its lawyers also having graduate degrees in science and technology, Fish & Neave has a great track record of serving some of the most illustrious American inventors, including Thomas Edison, Alexander Graham Bell, Edwin Land, and the Wright brothers. By catering to clients in such fields as nuclear energy, biotechnology, fiber optics, computer technology, and telecommunications, it continues to play an important role in the modern history of science, technology, and business.

The Law Practice from 1878 to 1945

Frederick Fish (1855-1930) began in 1878 what would become known as Fish & Neave by starting his solo law practice in Boston. Before the dawn of the 20th century, Fish became a leading patent attorney by appearing before the U.S. Supreme Court on such issues as Thomas Edison’s first light bulb and the telephone invented by Alexander Graham Bell. In these early years the law firm represented corporate plaintiffs who sought to protect their patent rights. For example, from 1883 to 1893 it won all of its 600-plus cases against defendants who had infringed on Bell’s telephone patent.

In addition to his patent litigation practice, Fish became a business advisor and counsel. He became general counsel to the Thompson-Houston Company in 1885 and then in 1893 helped the company merge with Edison Company to create the General Electric Company, for which he also served as legal counsel. In addition, Fish helped General Electric recruit Charles Steinmetz, who played a key role in the development of alternating current electricity.

The federal government had opened the U.S. Patent Office soon after the birth of the United States. Interestingly, in the 1890s the Patent Office commissioner exhibited his lack of foresight when he said the federal agency should be shut down because everything had already been invented.

Two years after joining the Boston office, Charles Neave (1867-1937) in 1895 opened a New York office to serve two vital clients, American Bell Telephone Company and General Electric Company, which had shifted their headquarters to the nation’s largest city. Neave also gained new clients such as Allied Chemical, Dupont, General Motors, B.F. Goodrich, and U.S. Steel.

In the early 20th century Fish helped Orville and Wilbur Wright defend their 1906 patent on their “Flying Machine.” The key part of their invention was called “wing warping,” consisting of many wires that gave the pilot the ability to warp or twist the wings and thus control the plane. Fish convinced the trial and appeals courts that the patent was valid and that aviator Glenn Curtiss had infringed on the patent. More legal wrangling continued for years until a merger created Curtiss-Wright. Fish & Neave in the future used an image of the Wright brothers’ original plane on their literature and Website.

In spite of the law firm’s vital role in early aviation history, it received little attention in Tom Crouch’s biography of Wilbur and Orville Wright. Ignoring or minimizing the role of lawyers seemed quite typical of most historians, which was in large part due to bar associations historically forbidding lawyers from talking to journalists or other outsiders.

After World War I ended in 1918, Neave helped create a new company that would challenge European dominance of the fledgling radio industry. With many corporations arguing in the courts over radio patents, the government suggested they quit competing and instead pool their patents to create a new company. Neave helped organize this patent pool that was the basis of Radio Corporation of America (RCA) formed in 1919 and headed by David Sarnoff for many years. By 1922, 576 radio stations were operating and the American radio industry was on its way. Fish & Neave continued to be RCA’s patent law firm until RCA was acquired by General Electric in the 1980s.

In the 1930s and 1940s the firm faced new challenges when some economists tried to eliminate the patent system. That attempt failed, but the 1938 Federal Rules of Civil Procedure led to the era of the so-called “big case” in which years of discovery were required before cases were tried. At about the same time, the partnership shifted its practice to defend its corporate clients against charges of patent infringement.

Post-World War II Developments

Edwin Land demonstrated the first instant camera in 1947 and his Polaroid Corporation dominated the field with several new models in the years ahead. Kodak, however, introduced its first instant camera in 1976 and by the end of the 1970s had captured about a third of the instant camera market share. The Polaroid-Kodak rivalry set the stage for a huge patent lawsuit. After several years, the firm in 1991 won Polaroid and Dr. Land a $1 billion judgment that remained “the largest amount ever awarded for patent infringement,” according to Senior Partner Albert E. Fey in his 1996 presentation to the Newcomen Society of the United States. That litigation also shut down Kodak’s production of instant cameras.

This victory for Polaroid was part of the law firm’s changing practice. In 1982 it returned to a plaintiff’s practice after a federal circuit court strengthened patent rights. This led to the first jury trials involving patents.

Meanwhile, biological discoveries led to a new industry and major patent cases. In the 1950s Crick and Watson discovered how DNA replicated life and in the 1970s scientists began genetic engineering or biotechnology. Fish & Neave began its biotechnology practice in 1978 after being approached by Bio-gen, one of the new start-up biotechnology companies.

Martin Kenney in his 1986 book Biotechnology: The University-Industrial Complex discussed the role of patents in this new industry. Scientists traditionally shared their research by publishing articles in professional journals. In biotechnology and other fields with close ties between research universities and corporations, however, patents and press conferences were key ways to disseminate knowledge. In such new endeavors lawyers at Fish & Neave and other law firms played important roles in creating new private property through the patent process.

The Firm in the 1990s and the 21st Century

In the 1990s Fish & Neave defended Ford Motor Company from what Fortune writer Nicholas Varchaver called a “hydra-headed monster.” He was describing the “Lemelson litigation machine” that lawyer Gerald Hosier used to sue corporations for infringing the patents of Jerome Lemelson. Beginning in 1953, Lemelson filed 558 patents, just four short of Thomas Edison’s record.

Lemelson won some lawsuits, but in the late 1980s he finally found a lawyer who had the same bulldog attitude about pursuing patent violators. Gerald Hosier was a successful patent attorney in Chicago before he began representing Lemelson. In 1989 Hosier sent a letter charging patent violations to every electronics, semiconductor, and auto company in the world. In the early 1990s the Japanese auto industry, Volkswagen, BMW, NEC, Philips, Samsung, Volvo, Mercedes, and Saab all gave up and paid Lemelson and Hosier about $450 million.

Then the patent holder and the patent attorney went after the American auto industry, targeting Ford, which was defended by its longtime patent law firm Fish & Neave. In April 1997 Judge Lloyd George released his written ruling favoring Lemelson. An appeals court declined to review the case, so Ford finally settled the case on June 1, 1998. The same day General Motors and Chrysler also capitulated.

Although Lemelson died in 1997, attorney Hosier persisted by filing seven major lawsuits against 632 companies between 1998 and 2000. Thus the Lemelson litigation continued, even though some experts argued that Lemelson did not patent any specific inventions, only the general ideas that later were developed into real technology. In any case, these lawsuits played a major role in the increasing wave of patent litigation.

Meanwhile, by the mid-1990s Fish & Neave had dealt with several trademark trends. “One thing that has changed dramatically over the past 15 years is the extent of the firm’s involvement in trade mark matters outside the United States,” said Vincent Palladino in 1995 in Managing Intellectual Property . “Whereas once a client might only instruct registration of a mark in the United States, today it is likely to proceed simultaneously in up to 50 countries and sometimes more.”

The increasing volume of trademarks made it more difficult to determine if trademarks had been violated. For example, in 1991 Fish & Neave successfully represented defendant Lever Brothers Company by showing that the plaintiff S.C. Johnson & Son “simply had not introduced sufficient evidence to create genuine issues of material fact regarding likely confusion.”

Company Perspectives:

Our practice serves our clients’ business needs, in every area of intellectual property law. Our unparalleled experience and commitment to excellence enables us to provide cost-effective service and results that are second to none.

In 1998 intellectual property lawyers ranked specialist or boutique firms as the top ten American firms in both patents and trademarks, according to the third annual World Intellectual Property Survey conducted by and published in Managing Intellectual Property . The publication cited the example of Fish & Neave, which at the time had cases pending in 42 federal courts.

One major case that was settled that year in Fish & Neave’s favor was that involving client Digital Equipment against Intel Corporation. Digital had sued Intel in May 1997 for patent infringement, charging that Intel had used Digital’s technology to manufacture a line of Pentium computer chips. The firm won a settlement of $1.5 billion for Digital.

Full-service law firms, however, were challenging the IP boutiques. For example, Baker Botts and McDermott Will & Emery each had more than 100 lawyers in their IP departments, and a couple of full-service firms almost made it into the top ten list. Fish & Neave Senior Partner Ed Bailey said, “They [general practice firms] are attracting business. We may have lost one client or one case here or there, but overall we’ve seen our business grow.” Fish & Neave remained independent, but several other IP firms decided to merge with large full-service firms.

The American Lawyer in August 1999 published its first list of the nation’s second 100 largest law firms. Fish & Neave topped these second-tier, midsized firms in profits per partner with $740,000.

In 1999 the U.S. Supreme Court made a significant decision in favor of the plaintiff in Florida Prepaid Postsecondary Education Expense Board vs. College Savings Bank . Fish & Neave earlier had helped its client College Savings Bank win in the New Jersey District Court and also in the Court of Appeals for the Federal Circuit. The Supreme Court, however, ruled that the Florida state body was immune from any patent and trademark infringement charges because it had sovereign immunity. James Nurton in the June 2000 Managing Intellectual Property concluded that this decision “has effectively given a green light to states to infringe any IP rights in the U.S.”

Fish & Neave’s biotechnology practice continued to be involved in major cases in the new century. For example, the firm represented a small company called Transkaryotic Therapies Inc. (TKT), which challenged Amgen in a major biotechnology patent case. Amgen in 1987 had gained its first patent on making Epogen, a drug used to stimulate the body’s production of red blood cells for patients suffering from anemia. Amgen and its licensee Johnson & Johnson earned $4 billion from Epogen sales in 1999, which made it the best-selling biotechnology product.

TKT used what it said was a different method to produce an experimental drug called Dynepo that worked the same as Epogen. Boston’s U.S. District Court judge ruled in early 2001 that Dynepo infringed on some but not all of Amgen’s Epogen patents. Thus ended the first round of what Managing Intellectual Property in February 2001 said was “one of the most eagerly-awaited trials in recent years.” Fish & Neave quickly announced that it would appeal this case on behalf of TKT.

In a Business Wire about the BIO 2001 International Biotechnology Convention in San Diego, Fish & Neave’s James F. Haley reported that about one-third of the firm’s work involved litigation and strategic planning for pharmaceutical or biotechnology companies. In addition, more than 30 Fish & Neave lawyers had doctorates in biotechnology disciplines.

Such advanced education reflected the increasingly complicated field of intellectual property law. For example, in 2002 it took two years or more and thousands of dollars to finally get a U.S. patent. To make matters even more complicated, courts found that almost half of contested patents were invalid, according to a University of Texas study reported in the September 2, 2002 Fortune.

Such were the challenges faced by Fish & Neave’s approximately 200 lawyers in the new millennium. Although many law firms were much larger, the firm remained preeminent in the field of intellectual property law. For example, the journal Managing Intellectual Property in 2000 honored the firm as the “Patent Litigation Team of the Year,” according to the firm’s Website. The American Lawyer ranked Fish & Neave with $96.5 million in 2001 annual revenue as number 154 in its annual listing of the nation’s top law firms.

Principal Competitors

Fenwick & West LLP; Wilson Sonsini Goodrich & Rosati.

Key Dates:

1878:: The firm begins with the solo practice of Frederick Fish in Boston.
1895:: Charles Neave opens the New York office.
1967:: The partnership hires its first female attorney.
1969:: Formally splitting the New York and Boston offices creates New York’s Fish & Neave.
Mid-1970s:: The firm begins serving high-tech clients in Silicon Valley.
1978:: The firm begins its biotechnology practice by advising Biogen.
1991:: Fish & Neave’s client Polaroid wins the largest patent infringement case in history.
Early 1990s:: The firm wins five lawsuits for Cyrix against Intel.
1998:: The firm wins settlement of $1.5 billion for Digital Equipment in a lawsuit against Intel.