By Cynthia Price
Legal News
It is one thing to be at the top of your game in serving the patenting needs of what William Boudreaux calls “innovator-side pharmaceutical companies,” but quite another to be situated within a firm that can offer full services to those clients.
That was the main appeal of Barnes & Thornburg to Boudreaux and other members of the national life sciences group he has worked with for over a decade, which has now joined the national firm that started out in Indiana.
“I worked in-house with Eli Lilly in Bloomington years ago, so I’ve known about Barnes &?Thornburg for many years,” says Boudreaux, who is based in Ann Arbor. “But as they’ve grown, their name has kept coming up more and more.”
The move will result in nine partners, one associate, two patent agents, an IP technical analyst, four paralegals and additional support staff joining the Barnes & Thornburg team.
Boudreaux co-leads the practice team with Allen Baum, a respected intellectual property attorney in Raleigh-Durham, N.C., and their incorporation into B & T will result in three new offices for the firm, bringing the number to 18 locations. Barnes & Thornburg will now have a presence in the cities of both those attorneys as well as Salt Lake City, Utah. (Two life-science patent attorneys, Eric Babych and Ryan Marshall, will work there.)
In addition, Heidi Dare is part of the group and will work out of B & T’s existing Chicago office.
The firm’s Grand Rapids office, opened in 2003 and continuing its own expansion, was its first in the state of Michigan, where it has now added an office in Southfield/Detroit (see Grand Rapids Legal News 1/24/2019) and now one in Ann Arbor.
The fulfilment of at least two Barnes & Thornburg strategic goals – one in legal subject area and one geographic – is why Intellectual Property Department Chair Julia Spoor Gard says, “It was like the stars aligned. We’re really excited because this is an entire life sciences group with all kinds of technical expertise. And adding offices in Ann Arbor and in Raleigh just makes sense. Having the life sciences people in geographic locations where we were interested in growing anyway... it’s like it was just meant to be.”
As Barnes & Thornburg Managing Partner Robert T. Grand noted in a statement, “Bringing in a team of this caliber with their technical backgrounds, strong reputations, combination of client-side and firm experience, and presence across four different markets, continues Barnes & Thornburg’s growth story of the past decade.
“This latest step expands our geographic footprint... while adding to our already robust life sciences and IP capabilities.”
From Boudreaux’s perspective, the move is also of great benefit to his practice team’s existing clients.
He and many of the others who worked in the life sciences patent practice of the Chicago firm Brinks, Gilson & Lione (which he chaired) had previously been in-house lawyers with pharmaceutical companies.?“At Brinks, we had a good story to tell. We had a lot of in-depth knowledge because we had walked in the shoes of our clients,” Boudreaux says. “But as we helped particularly start-up companies in the patent area, we were seeing a lot of other legal needs arise. And there were a lot of things about Barnes that really fit. We were speaking with several firms, but in the end it was because of the firm’s philosophy.”
“One of the other things that is just so great about this opportunity is that the people, as we met them, were all just the kind of people you’d want to have as your partners, just like Bill,” said Gard.
Boudreaux added that B & T’s “no-generics” client policy is favorable for the group because it is difficult to straddle both sides of the industry.
Boudreaux, who is originally from Louisiana, received his B.S. in Biochemistry from Louisiana State University, and his J.D. from Louisiana State University Paul M. Hebert Law Center.
“I got into patent law fairly early. At age 25 I was working in the pharmaceutical industry and at 27 I was a patent attorney at a chemical company. You just learn by being there and being part of the discussions about drug development. If you’re young and you get involved in that it’s a great way to learn the process,” he says.
He worked for many years at Eli Lilly and then moved to Pfizer Inc.’s location in Ann Arbor. When the huge pharmaceutical company decided to eliminate its Ann Arbor complex, he was asked to come with them to New York City. “I could’ve transferred and stayed with Pfizer, but we were expecting another child and I asked myself, does it make sense for me to take my family to Manhattan right now? We thought about it and answered no.”
So in 2007, Boudreaux entered private practice; Brinks, Gilson & Lione allowed him to work from Ann Arbor, and he has stayed ever since.
Working with Boudreaux in that location will be Joshua Ney, a litigator who has both a B.A. (from Dartmouth College ) and Ph.D. (from University of Michigan) in Chemistry and J.D. from University of Michigan Law School; Robert Shereda, a patent agent with a Ph.D. from University of Wisconsin, in biomolecular chemistry (and an undergraduate degree from University of Michigan, in biochemistry); IP Technical Analyst Steve Sturlis, whose Ph.D. in Chemical Biology comes from University of Michigan; and legal assistant Diana Schmidt – “and a great one,” according to Boudreaux.
Boudreaux adds that the far-flung nature of the practice team has not been an obstacle. “Not a day goes by where we don’t talk with the others around the country. We’ve gotten very good at collaborating.”
In addition to Marshall and Babych from Salt Lake City and Dare in Chicago, there will be the whole team in Raleigh-Durham led by Baum, who has extensive experience in pharmaceuticals, biochemistry, biotechnology and other related fields. Other attorneys there include Bashir M. Ali, also a Ph.D. chemist; Amy Fix, who has experience with small-molecule drug development and was also previously in-house counsel; Aisha R. Hasan, a former scientific researcher; and Mark Jenkins, a strong IP strategist.
“Barnes & Thornburg has a stellar reputation in life sciences and intellectual property, and we are excited to be joining forces with them,” stated Baum. “We’re excited to leverage [the firm’s] full-service capabilities – which are increasingly important to clients given the way patent work is now so closely intertwined with regulatory matters and other related areas.”
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