An invention for a new kind of ammunition fueled a fast friendship between Joseph Benini and Stephen Peterson.
Joseph Benini was a small-town engineer with an idea about bullets. He never expected to find a big-city patent lawyer who would immediately grasp his concept--for a lead-free bullet that wouldn't ricochet--let alone become his friend.
In 1998 Benini, a self-described "rural person," journeyed to Washington, D.C., from his hometown of Kersey, Pennsylvania (population 6,000) to meet with Finnegan, Henderson, Farabow, Garrett & Dunner partner Stephen Peterson. He knew little about Peterson or his firm, but after only a few minutes of conversation, Benini, 51, recalls, "I was thinking it was almost too good to be true. There was a connection there."
Working out of his garage, Benini, an avid target shooter and a trained engineer, had developed a new kind of ammunition by combining copper and tin powder at a low heat. The resulting bullet could pass through soft material, like flesh. If it hit a hard object like a steel target, the bullet would crumble into dust, eliminating the possibility of ricochet. The bullet could also inflict minimal damage to the fuselage of an airplane, a crucial issue for armed air marshals after 9/11. It was also environmentally friendly, as it contained no lead.
The invention fell squarely within Peterson's sights. The 61-year-old Finnegan partner had studied material science as an undergraduate and in graduate school and had worked as a metallurgist. Peterson was well acquainted with firearms, having spent six years as an infantryman in the Marine Reserves in the early 1970s. And, in his spare time, Peterson likes to hunt and target shoot. "I knew the vocabulary," says Peterson, who has also worked on patents related to armored vehicles, antiarmor weapons, and ceramic superconductors. "It was easy to communicate with [Benini]."
The meeting was the start of an enduring professional relationship as Benini turned his idea into a small but thriving company known as SinterFire.
Patenting the original invention was crucial to his company's success. Benini had met with scientists at nearby Penn State University and outlined his concept for making ammunition. "They suggested I protect the idea, and Steve's name popped out of the mix," Benini says.
Peterson wrote the original patent application in 1998 covering the bullet and method of making it. The patent issued in July 2000. A second patent covering the cartridge was issued a year later. Peterson also secured eight design patents between 2000 and 2005, and worked with counsel abroad to patent the invention in 19 countries. In the United States, Peterson notes, the prosecution was speeded by the fact that there was "no existing technology, or prior art, that was legally troublesome."
SinterFire launched in 1999 and grossed more than $5 million in sales last year, says Benini. Customers include Alliant Techsystems Inc., Olin Corporation, and Winchester Ammunition. But with success came copycat products. "SinterFire is testing the bullets made by others and has an issue with a former employee who may have disclosed SinterFire technology," Peterson says, adding that they are "attempting to resolve these issues informally, but litigation is an option."
Peterson also continues to work with Benini on new patents, filing one new (although not yet public) application. On a recent trip to Kersey, the pair worked in the morning and spent the afternoon target shooting. Then Peterson stayed overnight with Benini and his family at their house.
As Benini puts it: "Aside from paying [Peterson] megabucks for IP work, we've developed a personal friendship that's based on honesty, trust, and understanding."
Small World
Foley's Stephen Maebius met MIT professor Angela Belcher in grade school, long before she started genetically manipulating viruses.
Neither Stephen Maebius nor Angela Belcher can quite recall their first meeting. "I think we both had Miss Sweeney for second grade," Belcher muses.
Maebius and Belcher both went to Cambridge Elementary School in San Antonio. She grew up to become a professor of materials science and biological engineering at Massachusetts Institute of Technology. Maebius became a partner in Foley & Lardner's Washington, D.C., office, where he specializes in prosecuting biology and nanotechnology-related patents.
They reconnected in 2002. Belcher, 39, had come up with an invention that seemed to have leaped straight off the pages of a science fiction novel: a method of genetically manipulating viruses to produce electronic components. She was poised to launch Cambrios Technologies Corporation, a biotech start-up based on her discoveries, and needed a patent lawyer. Clinton Bybee of Arch Venture Partners, which had invested in Cambrios, recommended Maebius. A former biotech patent examiner, Maebius, also 39, was familiar with both the relevant technology and the workings of the Patent and Trademark Office--indeed, his great-grandfather Lawrence Kingsland was PTO commissioner during the Truman administration.
At their first meeting as adults in Palo Alto, Belcher brought along an icebreaker--an old yearbook, featuring what Maebius describes as "a picture of me with very big hair." Their shared past provided them with an instant professional rapport. "It's easy to feel comfortable with him," says Belcher, a 2004 recipient of a MacArthur Foundation genius grant. "There's a bond, having both grown up in San Antonio," says Maebius.
Funny photos aside, the business at hand was serious. Belcher's work was at the crossroads of biology and electronics, and the patent issues were significant. The patent office, Maebius says, "has been wrestling with the classification system and how to direct [applications] to the right area. Any application that combines technology is a challenge."
The inspiration for Belcher's invention came from an abalone shell. The mollusk has the natural ability to use proteins to control crystal structure and create its shell of calcium carbonate. What Belcher did was mimic this process. Using genetic and protein engineering technology, she discovered peptide agents--tiny artificial proteins that control synthesis and assembly of inorganic materials. Then, she engineered bioparticles to recognize certain inorganic materials and grow them in crystal form. The result: an entirely new process for manufacturing electronic components like semiconductors, liquid crystal display screens, and batteries.
Maebius was impressed. "There was the potential to pursue some really fundamental patents," he says. They wouldn't be starting from scratch, however. Over the course of her academic career, Belcher had been affiliated with three universities: the University of California at Santa Barbara, the University of Texas, and MIT. The schools had already filed seven patent applications, and Belcher had secured agreements with the institutions that gave her exclusive license to the patents. The problem, says Maebius, was that "university applications are typically filed without a full understanding of the commercial applications, so the focus is naturally different."
Maebius took over prosecution of the pending applications. His first task, he says, was to "review the applications carefully and determine what the company's business objectives were." Maebius says he was able to add new claims into the applications.
Belcher, who remains a full-time faculty member at MIT, while serving on Cambrios's four-person board of directors, now has more than a dozen patents pending. None have yet issued, however. (Maebius notes that the patent process can move slowly for multidisciplinary technology.) Belcher's also learned something new. The whole patent process is "incredibly interesting," she says. "I didn't realize there was this back-and-forth with the examiner and the inventor and the lawyer, and that there's a strategy to it all."
Patents for the People
Robert Kahn wanted his inventions to stay in the public domain. David Feigenbaum helped.
Call him the anti-patent troll. A coinventor of the Internet, Robert Kahn has pursued a series of visionary patents over the last 20 years. But he has little interest in leveraging his patents for cash, he says. Instead, Kahn's goal is more altruistic--using his ideas "to help build a coherent national information infrastructure."
To do so, Kahn, 67, formed the nonprofit Corporation for National Research Initiatives in 1986. As he set about obtaining patents for what he describes as "some fairly fundamental things related to carrying out tasks on the Internet," he realized that he needed a patent lawyer. And in 1991, an old friend of Kahn's introduced the inventor to Fish & Richardson partner David Feigenbaum. The 58-year-old attorney had the expertise Kahn needed--Feigenbaum specializes in patents related to computers, microprocessors, software, and Internet business methods, for clients ranging from Intel Corporation to small start-ups.
Patents were new to Kahn, a 2006 inductee to the National Inventors Hall of Fame and recipient of the Presidential Medal of Freedom in 2005. "Without any experience in the area, I was essentially flying blind," he says. Kahn adds that it was never his intention to use patents offensively: "My number one concern is that if an idea is really good, with a solid patent, we can ensure that it's administered in the public interest and that another party won't be able to take the idea out of the public domain."
Kahn's greatest achievement, codesigning the Internet architecture and its Transmission Control Protocol/Internet Protocol, or TCP/IP, was never patented. Working for the Defense Department's Advanced Research Projects Agency, Kahn and his colleague Vinton Cerf, then at Stanford University, came up with what became the universal standard for communicating data over computer networks. After 13 years, Kahn left the government to launch the nonprofit Corporation for National Research Initiatives. Based in Northern Virginia, the organization presently employs about 40 people.
To date, Feigenbaum has secured four patents for Kahn, with several more in the pipeline. Among the first that Feigenbaum worked on related to the "handle system," a method of assigning unique and persistent identifiers, or handles, to digital objects. That way, for example, a user could find specific content on the Web even if its URL changed and be sure it was the real thing. Longtime users include the Library of Congress and the U.S. Defense Technical Information Center. More than 50 million digital objects are now uniquely identified via handle service sites.
A second set of patents deals with what Kahn dubbed "knowbots." This is an intelligent mobile program that can roam the network performing tasks for the benefit of a user. For example, someone might ask a knowbot to find the cost of five oranges in Tokyo, convert the price from yen to dollars, and report back the findings.
In the early days especially, Feigenbaum recalls, Kahn was an unusually active and inquisitive client. Sessions that might take an hour with a typical inventor could consume most of a day. "Bob questioned everything. Everything. ÔWhat about this? Why do that? I don't understand what you're saying.' [Kahn's] a guy who has to know how things work," says Feigenbaum. "It was fun."
Generally averse to traveling, Feigenbaum makes an exception for Kahn. When he flies to Washington, D.C., Kahn will sometimes pick him up at the airport, and then, says Feigenbaum, the two will throw themselves into the work "for hours on end."
Feigenbaum admits that it was challenging at times to manage Kahn's expectations about the patent process. "He couldn't understand why it was taking so long," he says. "I think he wondered whether I was really doing the job."
But over time, Kahn was convinced--and then some--of Feigenbaum's skills. In particular, Kahn says he was impressed with how Feigenbaum was able to broaden patent claims. "He'd say, ÔWhy restrict your invention that way? If you say it this way, it would be much more general. His formulation was often what we had in mind, but we just didn't know how to say it in that more general way."
Cleanup Crew
David Gay whipped Glen Evans's patent application into shape and helped land a multimillion-dollar pharma deal.
Glen Evans has lived the inventor's dream. He came up with a brilliant idea, founded a biotech start-up called Egea Biosciences, Inc., and then sold it to Johnson & Johnson in 2004 for millions of dollars.
"One could say that Egea was really built upon [a] patent," says Evans, 53. Getting that patent, however, was far from easy. When he first met with McDermott Will & Emery counsel David Gay in 2001, Evans had what he calls "a messy case." "[Evans] needed help and was sophisticated enough to know he needed help," says Gay, who was introduced to Evans by a venture capitalist who had invested in Egea.
A former leader of the Human Genome Project, Evans discovered a way to produce large molecules of DNA quickly and accurately. That meant he could create virtually any protein from scratch, most profitably applying the technology to improve upon existing protein-based drugs.
The University of Texas Southwestern Medical Center, where Evans was a professor, had filed an initial patent application. When Evans left the university to launch Egea in 2000, he had the patent assigned to him. But the university had all but dropped prosecution of the application in the United States, and the foreign applications had been unintentionally abandoned. "We were panicked at the time and could have lost the patent without rapid action," recalls Evans. But the 45-year-old Gay, who has a Ph.D. in biochemistry from Johns Hopkins University School of Medicine, impressed Evans with his grasp of the technology and his calm approach.
The first order of business was reviving the European patent application and "filling gaps and plugging holes" in the core filings in the U.S., says Gay. Part of the larger challenge was focusing the IP. "It was a patent attorney's dream," Gay says. "We could have gone down any path we wanted to." But as Gay told Evans at their second meeting, "You can't file a patent on everything. You'll go broke before achieving your goals." Gay ultimately filed six more U.S. patent applications for Egea, "solidifying the core technology beyond the basic initial filing," he says.
Evans describes his invention as "a typewriter for DNA." Previously, scientists could produce DNA molecules of up to 100 base pairs--the number of paired nucleotides, or building blocks, in a double-stranded DNA. Evans could produce molecules of up to 10,000 bases. He built a machine that automatically synthesized the pieces, and a robot that assembled them into a complete molecule, all within 24 hours.
It wasn't quite clear how to turn the technology into a viable company. "We adopted and abandoned one business model after another," says Evans. Gay was with him every step of the way, even attending Egea business meetings free of charge. "It was invaluable for me to know if the company was making a change," Gay says. "Making sure the IP is in sync with a company's business goals is vital."
Egea found its niche making protein-based drugs, most notably collaborating with Johnson & Johnson to create an improved version of J&J's multibillion-dollar anemia treatment, erythropoietin, or Epo (marketed as Epogen or Procrit).
In 2004 J&J, already an investor in Egea, bought the company outright for an undisclosed sum. Evans will say that if the company had remained independent and hit all its royalty milestones, it would have been valued at $160 million. Gay's role in the transaction was key--spearheading the IP due diligence. (Cooley Godward handled the corporate work.) Acting as a virtual in-house patent counsel, Gay defended Egea's IP against J&J's evaluation. If J&J had found a loopholes in the patents, the company could have leveraged those gaps to negotiate a lower price or simply declined to buy the company and used the technology freely. "This did not happen," says Evans.
Not one to rest on his laurels, Evans in late 2005 launched another biopharmaceutical start-up, PharMagic, Inc., with Gay as his patent counsel. "I can only imagine where he's going to take this new company," says Gay. "But this time, we're in a much better position because we can orchestrate the IP strategy from the ground up. I'm looking forward to working with him again."
