San Francisco Daily Journal
May 21, 2007

Sideman Staffs New Intellectual Property Group

By William-Arthur Haynes
Daily Journal Staff Writer

SAN FRANCISCO - Why would two intellectual property attorneys lateral to a firm held in high esteem for its tax-controversy and white-collar criminal defense practices but not particularly known for its IP prowess?

Why, to cash in on cross-selling opportunities, of course, and to augment the intellectual property litigation capacity of Sideman & Bancroft, however unknown it might've been until now.

The 25-attorney San Francisco boutique announced the start of its intellectual property transaction and litigation group last week.

December lateral Polly A. Dinkel, a corporate and intellectual property transactions partner formerly with the Palo Alto-based Tomlinson Zisko, will lead the practice. Dinkel and associate Kelly P. McCarthy arrived together at the end of 2006 and will make up the transactional aspect of the group.

Dinkel has represented such companies as VeriSign, RSA Data Security and Hewlett-Packard on licensing matters.

Existing Sideman litigators will handle that portion of the practice.

According to Dinkel, the Sideman and Tomlinson firms had a cross-referral relationship. Tomlinson sent tax work Sideman's way; Sideman referred corporate and intellectual property matters.

"We knew the firm very well, so we got to talking about changing the relationship," Dinkel said.

When they arrived, Dinkel and McCarthy expected to get business from the firm's existing clients.

Coming from Tomlinson, "we were very comfortable with sort of forging our own IP practices and talking with other practitioners' clients about sending us their IP work," Dinkel said.

But because the firm, perhaps best-know for its tax-controversy, white-collar criminal defense and estate planning practices, wasn't marketing its intellectual property capabilities, attracting that work was difficult.

"Since we were really interested in building [an intellectual property practice within Sideman & Bancroft], we decided that we needed to make a more aggressive marketing move and put it out there for people," Dinkel said.

"Structuring a group would serve as much more than marketing the firm's capabilities," said Donald J. Putterman, firm managing partner and chair of its civil litigation group.

Establishing a practice would focus the firm internally on the interrelationship between the corporate and litigation sides, he said.

"There's a benefit to us as a firm internally, and yes, we also think it's important for people on the outside to understand not only have we had the capacity on the litigation side, we now have the capacity on the corporate, transaction and trademark side, as well," said Putterman, also a member of Dinkel's group.

Those identified as litigators in the group have been handling intellectual property work for some time, Putterman said.

Trade-secret and other intellectual-property work has been a part of Putterman's civil litigation practice for a decade, he said. The same can be said for the other partners in the group, including Robert R. Cross and Melvin D. Honowitz.

The litigation practices of Richard J. Nelson and Jeffrey C. Hallam have long encompassed criminal anti-counterfeiting, and Constance J. Yu's practice, focused primarily on complex business torts, includes intellectual property disputes.

But the firm was lacking the corporate and transactional capacity integral to an intellectual property group, Putterman said.

According to Dinkel, the practice will focus on copyright and trademark law, trade secrets and intellectual property contract disputes. Though the firm participates as co-counsel in patent litigation cases, that aspect of intellectual property law wouldn't be an emphasis.

Legal service consumers seeking patent litigation counsel expect a specialized, almost forensic knowledge of that particular area, Dinkel said.

"It's a highly specialized area, and clients in general really want to know they have someone with a lot of experience doing that," Putterman conceded.

That's not to say the firm wouldn't entertain the opportunity to gain that capability, should it arise, he added.

For a firm that's maintained stability and profitability by remaining small and focused on a handful of core practice areas, the addition of a specialized intellectual property practice and the recent addition of real estate and land use capabilities fit a general-practice firm.

James R. Janz joined the firm last week from Tomlinson Zisko, bringing specialization in real property transactions and land use issues. Susan T. Taylor, formerly of pre-merger Preston Gates & Ellis, is expected July 1 following an in-house stint at Equity Office Properties.

Although Dinkel perceives the firm as tending more toward full service, firm co-founder and chairman Richard J. Sideman said it's premature to be considered a general-practice firm.

"It still feels and acts to me as what I would call a good small firm," Sideman said.

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