A Brief History of the Founding of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

A

BRIEF HISTORY OF THE FOUNDING

OF Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

by Herbert H. Mintz

The cover design reproduces a work of art by Michael Bryan that hangs in the Reston, Virginia, office of the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and depicts the five name partners of the firm. Use on the cover is by permission of the artist, which is appreciated.

A BRIEF

HISTORY

OF THE FOUNDING OF Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

by Herbert H. Mintz

Copyright © 2016 by Herbert

All rights reserved

H. Mintz

Permission is granted to any partner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, to distribute this work in whole or part to anyone without charge. No permission is granted to incorporate this work in whole or in part in any other work or to charge or receive remuneration for this work, whether sold or given in whole, in part, or as incorporated in whole or part in any other work.

Dedicated to the memory of Marcus B. Finnegan (1927-1979)

founder, partner, colleague, mentor, friend

Special thanks to Ed Good, writing guru of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, for his review and editing of drafts of this history. Thanks also to Doug Henderson, Ford Farabow, Art Garrett, and Brian Brunsvold for their comments that provide the basis for many of the factual statements and quotes in this book. All of the individuals mentioned in this history not only played important roles in creating and building the firm for themselves and for future Finnegan lawyers and staff, but also were important to me and so many others in our careers with the firm. I thank them all for their friendship, wisdom, and tireless commitment to the practice that we all so highly value.

PREFACE

Sandwiched between the “Greatest Generation,” who fought in World War II, and the postwar “Baby Boomers,” Americans born in the late 1920s and 1930s grew up during the chaos and uncertainty of the Great Depression and the War. Given the somberness and struggles of that era, the members of that generation, known as “Traditionalists,” typically developed an appreciation for the opportunity to work and a strong commitment to achieving success.1

Traditionalists have been associated with traits such as hard work, loyalty to the team, respect for authority, and valuing conformity, commitment, and consistency. In the early 1960s, two of that generation, Marcus B. Finnegan and Douglas B. Henderson, each having experience in the practice of intellectual property (IP) law, decided to seek their success as partners forming their own law firm.

Under the Finnegan & Henderson banner, the two Washington, DC, lawyers opened their doors on March 1, 1965. Ford F. Farabow, Jr., also of their generation, joined them within a few months. Over the next five decades, the law firm eventually became Finnegan Henderson, Farabow, Garrett & Dunner, LLP, now known worldwide simply as “Finnegan,” and indeed achieved that success. It has ranked among the largest and best-recognized U.S. IP firms. Major international corporate clients have called upon the firm to represent them in connection with some of the most important inventions, products, and IP issues of the past half-century.

During Finnegan’s first 50 years, many changes affected the practice of IP law, including amendments to the patent, trademark, and copyright laws; precedentsetting judicial decisions; modernization of procedures in the agencies and courts before which IP lawyers appear; and changes in the competitive environment among the nation’s law firms. In response to those developments, as well as to the substantial growth of the firm from just two lawyers in March 1965 to hundreds over the next decades, the firm has always been able to adapt and prosper.

Various factors contributed to the steady rise of the firm, none more important than the high caliber of the men and women who have practiced there over the decades and the outstanding administrative and support personnel the firm has always employed. But the strong work ethic and Traditionalist principles on which Marc Finnegan and Doug Henderson founded the firm also played a vital role and lay at the core of this great American success story.

1 Characterizations of the generations of the 20th century can be found in various intergenerational studies, e.g., Sally Kane, Traditionalists (aka The Silent Generation), posted at http://legalcareers.about.com/od/ practicetips/a/Traditionalists.htm.

MARC FINNEGAN AND DOUG HENDERSON

Marcus Bartlett Finnegan was the older of the original partners.2 Born September 15, 1927, Marc graduated from the United States Military Academy at West Point and served in Korea as part of the Army Corps of Engineers during the Korean War.3 While still in uniform, he obtained his law degree from the University of Virginia (1955) and an LL.M. from George Washington University (1957). Marc earned membership in the Order of the Coif, attesting to his legal scholarship, and throughout his career, he was regarded in legal circles as a lawyer of exceptional caliber.

In 1957, Finnegan transferred to the Army Judge Advocate General’s Corps, serving as United States Patent Advisor to Japan until he resigned from the military in 1959 to join Morgan, Finnegan, Durham & Pine, his father’s IP firm in New York City.4 He gained valuable experience there as a litigator, the area of practice in which he would be engaged throughout the remainder of his career. Tragically, that career was cut short by his untimely death from cancer in April 1979.

After working at Morgan for several years, Marc, with his wife, Betsy, and their children, moved to Washington, DC, where he joined the local IP firm of Irons, Birch, Swindler & McKie. In one case, his client sued the federal government for patent infringement in the United States Court of Claims. Unfortunately for Marc and his colleagues, the trial judge, Donald E. Lane (1909-1979), ruled against their client.5

2 In addition to information about Marc Finnegan from firm partners—current and retired—who knew and worked with him, information about his life appears in his obituary, posted at http://www.west-point. org/users/usma1949/16815/.

3 After World War II, Korea, liberated from the Japanese, divided into two states—communist-backed North Korea and Western-aligned South Korea. The Korean War began in 1950 when the North invaded the South. The United Nations condemned the North Korean attack and authorized a fighting force commanded by U.S. General Douglas MacArthur. The Allies battled the North Koreans on the southern front, but in a bold move, General MacArthur led U.S. forces in a landing at the port of Inchon, which was behind enemy lines. The Inchon landing allowed the Allies to attack the North Koreans from two directions, thus changing the course of the war. See, e.g., www.history.com/topics/inchon. Marc Finnegan landed at Inchon and saw action in the war as part of the engineering corps that ensured the roads and bridges were able to handle the advance of the Allied troops.

4 Marc Finnegan’s father, George T. Finnegan, had been brought into the firm by his father-in-law, John Dana Morgan, Marc’s grandfather. George became well known as a patent litigator and a key figure in the Morgan firm.

5 At that time, “Commissioner” was the title of the trial judges at the Court of Claims. Donald Lane later became a federal appellate judge, and a number of future Finnegan lawyers worked for him as law clerks.

Doug Henderson worked for Judge Lane at the Court of Claims when the judge rendered that decision. It was the first contact between Finnegan and Henderson, but not a pleasant one because of Marc’s unhappiness with the ruling. When Doug later met members of the Irons firm at an interview lunch, Marc was anything but friendly to Judge Lane’s law clerk.

Douglas Boyd Henderson, born September 21, 1935, grew up in Pittsburgh, Pennsylvania, the son of a furniture manufacturer’s representative. He spent several years selling furniture for his father, acquiring business experience, and forming ideas that remained with him as he sought to build a law business and develop clients. He graduated from Pennsylvania State University with a degree in Industrial Engineering and went on to law school at George Washington University. He obtained his law degree, with honors, in 1963.

During the 1960s, a number of corporations had Washington, DC, offices staffed by inhouse patent attorneys. Those companies provided students with an opportunity to work in the IP field while attending law school. Doug worked at one such corporation, Swift & Co. There, he met and became friends with his future partner, Ford Farabow.

While Doug was in law school, the Court of Claims sought additional research assistants for the Commissioners. Judge Lane was a trained patent attorney and had a particularly large caseload. Doug accepted a position with the court as a law clerk working for Judge Lane on patent cases. Under the judge’s tutelage, Doug had the valuable experience of observing trials from a court’s perspective and learning how judges decide cases. Judge Lane became an important mentor to Henderson, and they remained close throughout the judge’s life.

Despite the chilly reception Marc gave Doug at the interview lunch, the Irons firm offered Doug a job as an associate attorney. Using his skills developed as a judge’s law clerk, Doug quickly proved himself a valuable addition to the firm. In one case, on very short notice, he provided Marc with a legal analysis that proved crucial to an argument Marc was presenting to expedite an appeal to a United States Court of Appeals. From that point on, Marc increasingly looked to Doug for assistance, and they developed a friendship, a productive working relationship, and strong confidence in each other that formed the basis for their eventual partnership.

Various factors led to their decision to leave Irons, but that firm’s failure to make new partners provided the main impetus. Indeed, the Irons members passed Marc over for partnership in 1963 and 1964 despite his major contribution through his clients and his excellent skills. In early 1965, Doug, who had a desire to start a firm at some point in his career, convinced Marc that it was the right time, and only fair, for them to open their own law office.6

6 Ford Farabow, who came to know Marc Finnegan as well as any colleague or friend, also believes Marc would not have agreed to start a firm, at least at that time, had he been a partner at Irons.

By the time he left Irons, Marc controlled a heavy litigation workload. Doug had been developing his own contacts in the profession and had a natural business sense. They thus had reason to believe they could generate work for a new firm over the long term. Nonetheless, while exciting and full of potential, the prospect of such a venture also carried significant risks. It would require a substantial financial investment, and it certainly came with no guarantee of success. Doug and his wife, Livi, had a young family, as did Marc and Betsy. They were making serious commitments of time, money, and emotional dedication for the foreseeable future. But that is what the Traditionalists of their generation did.

THE OPENING OF A FIRST-CLASS LAW FIRM

Doug has summed up his and Marc’s “business plan” as “mak[ing] our firm a first-class, full-service, intellectual property law firm doing top-quality work in a congenial and enjoyable atmosphere.” From the very beginning, Finnegan & Henderson distinguished itself from most other Washington, DC, IP firms by planning to provide “full-service,” which in its patent work, for example, meant conducting patent litigation in addition to drafting, filing, and prosecuting patent applications before the United States Patent Office (now the United States Patent and Trademark Office (PTO)). In those days, DC IP firms primarily did local associate work for out-of-town lawyers and located themselves near the PTO.7 The litigation firms typically were centered in the large, business-oriented cities, mainly New York and Chicago. Even though Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, has been well known and highly regarded for its PTO work, the largest part of its practice, from the start, has been the representation of clients in litigation in patent and other IP areas, including trademark, unfair trade, and trade-secret cases.

Finnegan & Henderson opened for business on March 1, 1965, in offices on the top floor of the Chanin Building, 815 Connecticut Avenue, NW, Washington, DC, with windows overlooking Farragut Square. The Chanin Building was then considered the most prestigious office building in the capital city, with many nationally known tenants. Marc and Doug had enough confidence in their future success that they took sufficient office space to accommodate five additional attorneys.

When the PTO moved in 1968 from the Commerce Building to a new office/ high-rise complex called “Crystal City” in Arlington, Virginia, IP law offices proliferated there. Finnegan & Henderson, however, remained in the District of Columbia, staying true to its original goal of developing a premier, full-service Washington, DC, IP law firm. It outgrew its initial offices in 1970 and moved to the new Suffridge Building at 1775 K Street, NW, where the firm would have its principal office for the next 20 years.

Marc and Doug felt that at many firms, keeping costs down was given too high a priority and limited the resources available to attorneys. In starting their own firm, they adopted a different approach. Committed to top quality in all aspects of their practice, they were willing to incur higher costs to obtain the best tools for the work and to achieve a first-class character. Their philosophy that “you are what you think you are” drove decisions they made in setting up shop in the Chanin Building. They put together physically attractive offices and a superior working environment as they sought to achieve excellence in every detail of their new firm. As Doug explains it:

7 The PTO was housed in the headquarters building of the U.S. Department of Commerce in Washington, DC.

Everything we could do we did first class. . . . Marc Finnegan would take his hands and run them down yellow pads and would say, “this yellow pad is too resistant. I want a smooth yellow pad.” Paper clips were not going to rust on our paper because we had the better quality paper clips. . . . [It was really a philosophy] from the very start. And we were fully in it.

A TRUE TEAM WITH A COMMON GOAL, NOT A HIERARCHY

Law firms commonly have a hierarchal structure: name and other senior partners, then junior partners, associate attorneys, management staff, secretaries, and other employees who fit somewhere in the firm pyramid. At many firms, partners rarely ate lunch with associates or secretaries, and the more senior partners would assert the clout that their status permitted. Henderson and Finnegan were determined to create a different atmosphere in their firm. Doug recalls that:

[W]e were going to go to lunch with our secretaries when appropriate, treat everybody as equal, and have no line on our letterhead. We knew from the very beginning that no distinction was going to be made between partners and associates. Everybody was a lawyer. We just sat down and said this is what we want.

Avoiding a line between partners and associates on the firm’s letterhead, which sharply departed from the usual practice, reinforced a basic tenet of the new firm: everyone there worked as part of a team whose purpose, above all, was to provide very high-quality legal service and achieve business success. People could be treated fairly and with equal respect even where there were inevitable differences in skills, responsibilities, and stature, and therefore in compensation or wages. The firm’s emphasis on teamwork as opposed to hierarchy would stand as a hallmark of the firm over the ensuing 50 years.

A technique Finnegan and Henderson adopted to help ensure the highest quality work product was “second-attorney review.” Before any paper left the office, someone other than the drafter had to read it. Having a second set of eyes reaped enormous benefits over the years, from catching typographical or editorial errors to improving the content and substantive arguments. Second-attorney review not only served as a valuable quality-control measure, but provided continuous mentoring opportunities. Moreover, it reinforced the concepts of equality and teamwork because work could be reviewed by less-experienced attorneys as well as by more-senior lawyers.

Finnegan attorneys typically have stories about their early experiences with second-attorney review. Herb Mintz recalls that not long after starting work as an associate at the firm in 1973, Ford Farabow asked him to review a draft brief. Surprised that he would be expected to offer an opinion on Farabow’s work product, but realizing Farabow’s sincerity in asking for his honest critique, Mintz conducted the second-attorney review. Ford’s treatment of him as a valuable team member not only demonstrated how second-attorney review ideally works, but left Herb with a clear and indelible understanding of the firm’s commitment to teamwork over hierarchy, which proved true over his 37-year career there.

FIRM CLIENTS, NOT INDIVIDUAL CLIENTS

Asignificant difference between employment in an ongoing firm and undertaking the creation of a new one is the burden of maintaining a sufficient level of business, an axiom no less true in practicing law than in making and selling widgets. When Marc Finnegan and Doug Henderson decided to leave Irons, they gave up the advantages of an established business with existing clients, partners with reputations that could draw prospective clients, and a cadre of attorneys to help retain current clients and attract new ones. Out on their own, Marc and Doug needed to ensure a stream of legal work to keep the new firm afloat.

They brought no Irons firm clients with them—only work that they had originated. For example, while at the Morgan firm, Marc had represented River Brand Rice Mills in various disputes with General Mills involving instant rice. The multifaceted litigation followed him to Irons, and he continued handling it at Finnegan & Henderson, along with other matters for River Brand. Though younger and less experienced than Marc, Doug also “had a number of clients I was fortunate to have at that age.”

With the legal work for those first clients, the new partners faced a critical threshold decision of how to divide profits. Typically, law firms based partner compensation on some formula keyed to the number and stature of the partner’s clients and the billings that could be attributed to the partner. Instead of that socalled “eat what you kill” approach, Doug notes that “we decided to work together and share our clients so that all clients would be ‘firm clients.’” This meant that profits would not be divided according to revenue obtained from one’s individual clients, a concept that “was really new at that point.”

Marc always showed generosity in sharing the firm’s revenue with the partners who came along. As Brian Brunsvold, the firm’s fifth partner, says: Marc Finnegan was an incredibly generous guy. . . . He was interested in making money, but not at the expense of unity in the firm or anything like that, and he set the tone, I think, on that score, for a long time. . . . [H]e wasn’t a guy who wanted administrative power at all. That helped a whole lot. In other words, [the firm] wasn’t his fiefdom.

Art Garrett, the firm’s fourth partner, saw sharing as the distinctive core value of the firm. “Marc taught us this, maybe not specifically, but by his actions.” And by sharing, Garrett meant in all aspects of the practice:

[You] share your knowledge, you share your expertise, you share your experiences with the rest of your fellow partners and attorneys. . . . And most importantly, [you] share the profits, share the money.

The commitments by Marc Finnegan and Doug Henderson to the unity and prosperity of the practice over personal gain set fundamental principles of the firm for the years to come:

• All clients are firm clients.

• Sharing knowledge, experience, and work, as opposed to hoarding for personal promotion, is a central value of the firm.

• Partner compensation is not calculated by a formula tied to individual client billings.

• Fairness and unity are primary factors in determining partner compensation and employee salaries.

THE FIRM QUICKLY BECOMES

FINNEGAN, HENDERSON & FARABOW

AClemson graduate, Ford Farabow moved to Washington, DC, to attend the law school at George Washington University, and like Doug Henderson, he planned to work in the patent field while pursuing his law degree. His father had been a long-time employee of Swift & Co., rising from work in the meat factory to a managing position in sales, so Ford naturally applied for a job in that company’s DC office.

Two spots were available at Swift. Farabow won one and Art Garrett was offered the other. Garrett, however, took a position with American Cyanamid Corp., which also maintained a small patent group in Washington. The position Garrett turned down became Doug Henderson’s.

Farabow was already working at Swift when Henderson started. Ford recalls that after he had registered for his law classes, he took Doug over to the school and helped with Doug’s registration. When they returned to the Swift offices, the manager, a patent agent named Frank Caffoe,8 chewed them out for taking work time for matters relating to their law-school attendance. But that early bonding between Doug and Ford at Swift and at law school would cement a lifelong relationship that formed part of the foundation of the firm.

After finishing law school in 1962, Ford joined a small South Carolina firm that handled general commercial and personal matters. Although he did no patent work during his two years there, he gained valuable litigation experience in trials with and without juries. In 1964, he took a patent-attorney position at Hercules Corp., a chemical company in Wilmington, Delaware, all the while keeping in touch with his friend Doug Henderson.

From the start, Doug had Ford in mind as a potential partner, and Ford was interested in the prospect of a private practice career in IP law. Not long after opening the firm, Doug invited Ford to Washington to meet Marc Finnegan. While Marc was open to the idea of adding another attorney whom Doug so strongly recommended, he had been adamant about keeping the firm name limited to Finnegan & Henderson.

Farabow and Finnegan talked over an extended meal and hit it off immediately. Any reservations Marc might have had before meeting Ford evaporated, and Ford was offered a position. He began with the firm in July 1965, just three months after its creation. He became a partner as of January 1, 1966, and a name partner

8 Although he attended law school, Frank Caffoe never became a licensed attorney. He did, however, meet the requirements of a “patent agent,” allowing him to practice before the PTO. Ford and Doug appreciated Caffoe as a mentor and teacher, and after Caffoe retired from Swift, they brought him to Finnegan to train young lawyers in PTO practice.

as of January 1, 1967. For many Finnegan attorneys over the ensuing decades, Ford Farabow served as a mentor and role model. He functioned as a key first-generation leader until his retirement at the end of 2013.

Ford and Marc became close friends working together at the firm, as they each were with Doug. They all cared about each other on both the professional and personal levels. They were equally on board with Marc’s instinct to share in all aspects of the firm’s practice and business. The relationship they projected became an integral part of the firm’s culture that later-hired attorneys found there. Wisely, as the firm started to grow, the founders sought partners who would thrive in that working environment, and they passed over candidates the existing partners did not think would fit in.

ART GARRETT JOINS THE FIRM

When Ford joined the firm, he prepared and prosecuted patent applications and litigated cases. The firm had a variety of work and at least enough revenue for Marc and Doug to give Ford a bonus at the end of 1965 along with an invitation to join them in partnership. Ford remembers asking Marc about a Christmas bonus, an issue that had not previously been discussed. As Ford tells it:

[Marc] talked to Doug and came back and gave me a check for $600. I said thank you very much and I went off and bought my Christmas presents. What I didn’t know is that Marc had said to Doug, “We’ve got $1,800 in the bank. Let’s give Ford $600, let’s you and I each take $600, and we’ll hope some more comes in before another bill hits the bank.” So they split up whatever money was in the bank.

Art Garrett had also been in Doug’s thoughts as a prospective hire. Although not a Swift & Co. alumnus, he was known to Doug and Ford through their time together conducting patent searching at the PTO for their respective employers. Garrett and his wife, Helen, were from Philadelphia, and he explains that:

I had always been determined to go back to Philadelphia. . . . [But] about a year after I went to Philadelphia, I became disillusioned with my long-term prospects, [as] I think Ford did in South Carolina, and I think we both wanted to come back to DC. And having spent all those years with [Doug and Ford], and having respected them as lawyers, I thought it would be great to join up with them in a business.

There was sufficient work and prospects for the partners to bring Art Garrett on board as an associate attorney in 1966, about a year after the firm was organized. He became a partner in 1968. He always subscribed to the basic teamwork/caring/sharing philosophy of the firm and agreed with the other partners that they should hire only lawyers who would be compatible with them and the firm culture they created:

[T]he atmosphere, it’s very friendly, it’s very caring. You see it on all levels and phases of the operation of the firm. People care about other people [and] right from the beginning, we sort of had this feeling that we didn’t want to hire anybody as an attorney for this firm if we didn’t eventually someday want to make [them] a partner, if we didn’t feel comfortable working with them. It didn’t matter how much work they had, how capable they were, how bright they were. . . . If they weren’t [someone] we wanted to have as a friend, we didn’t want them as a lawyer or eventual partner in this firm.

GETTING OVER THE HUMP

While the Finnegan partners weathered the earliest days well, a thriving practice requires a steady flow of clients and work because cases get resolved, projects are completed, and clients decide on outside counsel for a variety of reasons, all factors that are not necessarily predictable. And as a new practice with a few relatively young lawyers, the firm faced older, seasoned competitors in whom in-house counsel often instinctively had more confidence. Patent counsel for large corporations having significant litigation work, for example, feared the consequences to themselves of entrusting important cases to a small start-up law practice rather than a large, well-established firm in the event of a bad outcome. Opening the practice is one thing; sustaining it through the start-up years is another.

At sometime during the first few years, with some of the litigation settling and new work coming in too slowly, the partners experienced their lowest point in terms of workload and morale. Ford Farabow recalls a dinner spent discussing the next steps, including even the possibilities of splitting up or trying to merge with a larger firm. But as they slogged through this difficult period, Marc made a decision to take action that would have both immediate and long-term repercussions. As Ford recounts it:

Marc said, “I tell you what I’m going to do. I’m going to go on the road, and I’m going to get us some business.” And he planned a trip to Europe and he planned a trip to Japan . . . . [H]e had been in Japan as a patent advisor . . . , so he had some contacts over there. And hell, we didn’t have any money, but [he] was going to spend it all . . . .

Marc made the trip and gave the firm renewed life. He was able to establish new relationships with companies interested in representation before the PTO and courts, and brought back much-needed work. At no time since that point has the firm ever again felt in existential doubt.

Marc Finnegan proved to be a powerful “rainmaker.” He was involved in an array of activities—directly contacting current and prospective clients, writing articles aimed at IP attorneys, speaking at professional meetings, and participating in bar associations and similar organizations—which put him in touch with individuals who retained outside IP counsel for their companies, domestic and foreign. Herb Mintz worked with Marc in some of these activities:

I came to understand his sense of responsibility for maintaining a constantly increasing flow of clients and projects to the firm. In everything he did, Marc conveyed that to get the attention of potential clients and inspire their confidence, as well as to perform as a top-level firm attorney, required doing outstanding work at every turn, whether for clients or in “nonbillable” volunteer

activities like writing articles, teaching, or running a committee of a bar association. I think all of us who were starting out in private practice during the 1970s and made our careers with the firm were inspired by Marc’s and the other partners’ tireless commitment to these ideals, and we saw how the practice soared during that time.

The stage for the growth in the 1970s was set by the first-generation partnership of the 1960s. Marc Finnegan, Doug Henderson, Ford Farabow, and Art Garrett constituted a well-functioning group, practicing their notion of the right way to run a law firm. A further addition who fit in perfectly was Brian G. Brunsvold, who started in 1967. He had worked as a patent searcher at Swift after Doug and Ford left, but “they would occasionally stop in and take existing patent searchers to lunch,” and “I got to know Doug and Ford fairly well.”

During his last year at the George Washington University Law School night program, Brunsvold followed in Doug’s footsteps in working for Judge Lane as a law clerk. He remembers that a colleague at Swift, John Rice, who had been at the company when Doug and Ford were there, gave him “strong advice” that “if you can get a job offer from these guys, go with them, because you may struggle for a few years, but they are going to do very well.” When he graduated, Brian started at the firm.

He painted this picture of the firm in those early years: Well, it was a very collegial group; really collegial. It was fun to be there because everybody was really trying to build the firm. Marc was the most enthusiastic guy about doing that that you could ever imagine. . . . [O]ne of the customs that I liked was that you’d come in the morning and all the mail was in the library and you could see what new business, if any, had come in, and if a big piece of new business had come in, you’d always have a big lunch to celebrate. And even though I was an associate, and the only associate for a couple of years, I almost always went to lunch with those guys. . . . [T]he only times I didn’t was when there would be a partnership meeting and they were discussing finances, but [given] Marc’s tendencies, [even] the finances were pretty open.

Each of the first five partners brought solid educational credentials and at least some work experience. Henderson, Farabow, and Garrett each had been trained in small corporate patent offices and had private-practice experience before joining the firm. Finnegan was the most senior of the group and had been on the front lines of patent litigation. Brunsvold was the most junior of the group but still had learned essentials of the trade working in the corporate setting and clerking for a federal judge. So if, as is sometimes said, it takes a good five years for a new business to establish itself, the original Finnegan group in its first five years comprised very talented individuals with tremendous potential to make a go of it. And in their small-firm atmosphere, they were able to do so under the “all for one, one for all” philosophy to which their enterprise was anchored.

SEEKING OUT NEW BUSINESS

Marc Finnegan’s solicitation of new clients abroad was one of several approaches the partners used to expand recognition of the firm and generate work. They attended bar association and other professional conferences, wrote papers, and gave lectures. They also pursued meetings with potential clients, usually the patent counsel of companies that employed outside IP counsel for litigation or prosecution matters.

Marc and Doug brought certain personal qualities to the creation of the firm that made them natural work attracters. They each possessed an openness, warmth, and companionable nature that served them well in developing business relationships. They also shared the attribute of real enjoyment in meeting and getting to know the people they encountered. Marc did not hesitate to mention articles he had written in speeches he gave, and he invited attendees to leave their business cards so that he could mail copies to them. It was an effective technique of initiating communications with others in the profession, including potential clients. Both Marc and Doug kept meticulous track of their contacts as matters of good business-development practice and true personal interest and style.

Those who knew Marc often were amazed at his ability to recall information about people he met in his travels. He had an exceptional memory for names and faces. He would not only recognize individuals, but typically also remembered information about their work and even their families, if those subjects had previously been discussed. Many of the people Marc and Doug encountered became friends, and some became clients.

The early partners set an example of the seriousness of pursuing business to the survival and prosperity of the firm, and the variety of ways of doing so. The firm has always encouraged its attorneys to put nonbillable time into such efforts. Importantly, the original partners gave later firm attorneys wide latitude to choose activities they were best able to do and felt to be promising. For some it might be writing and teaching; for others perhaps actively participating in bar or other professional associations. Among their endeavors, Finnegan lawyers have taught at law schools, served as officers and Board members of the most prominent IP bar groups, and published course books and journal articles. From the earliest days, the partners recognized the value of these efforts, were willing to finance them, and, most crucially, trusted each other to act in the best interests of the firm.

The Finnegan partners’ ideas and their implementation in the first five years would pay off handsomely as the firm entered the 1970s, a decade that would prove to be the launching pad of the firm that would come to be recognized as a giant in the IP profession.

Marc Finnegan - West Point

Doug Henderson and Marc Finnegan

Doug Henderson, 1970

Doug Henderson, 1970

Marc Finnegan

Tip Jennings - 1976

Larry O’Rourke and Nellie Rockefeller

Marc Finnegan and Art Garrett

Marc Finnegan

Marc Finnegan Portrait - 2005

ADDING TO THE FIRST-GENERATION PARTNERSHIP

As of 1970, the partnership comprised Finnegan, Henderson, Farabow, and Garrett. These early partners had significant work in hand and clients who were sending in new projects. The business and reputation of the firm were growing. Brian Brunsvold became a partner in 1972. By that time, the partners felt they could use some additional experienced attorneys to provide meaningful assistance with current clients and potentially enlarge the work over the long term. They brought in four lawyers they knew: Tipton D. Jennings IV, Jerry D. Voight, Laurence R. Hefter, and Kenneth E. Payne. The Finnegan partners were confident that these individuals, all working in the IP field, would easily fit into the firm culture and bring skills that would help the firm thrive.

Each of the four had a technical background, was a registered patent attorney, and had worked on patent and other IP matters in previous positions. Tip Jennings started his career as a patent examiner in the PTO and spent more than a decade as a corporate IP attorney before joining Finnegan. Larry Hefter had also been in corporate practice and, for a time, had worked with Tip Jennings. However, he left the corporate world for private practice. He was a name partner in a New York City law firm, but withdrew to join Finnegan because of the people there and his confidence in the future of the firm. Both Jerry Voight and Ken Payne started their careers as patent examiners and later worked at the Irons firm.9 In their prior positions, they each acquired experience in patent prosecution, contract matters, and IP litigation.

With their varied backgrounds, experiences, and skills, Jennings, Voight, Hefter, and Payne significantly broadened the capabilities of the firm. They provided immediate help on the firm’s existing caseload, and over the ensuing years, they would prove to be among the firm’s most important leaders. They all became partners relatively quickly and represented a second wave of the first generation of Finnegan partners.

9 Voight, in fact, was hired by the Irons firm to fill the personnel void Finnegan’s and Henderson’s departures had created. He joined Irons the day Finnegan and Henderson left.

FIRM SPECIALTIES

Over the first half-century, the firm developed various specialty areas for which it became well known and highly regarded. These pockets of expertise within the broader IP practice led to satisfying and rewarding work. As individual attorneys achieved expert knowledge and ability in these specialty areas, opportunities to write and lecture on the subjects likewise grew, which proved to be valuable vehicles for meeting prospective clients and acquire new projects.

The idea of pursuing various specialties while going forward with patent and trademark prosecution in the PTO and IP litigation in the courts helped the firm realize the founders’ vision of a full-service IP law firm. The success of this approach over the years was rooted in the early partners’ decision to trust each other to make good choices in undertaking activities that might enhance the firm’s reputation and lead to new work. This strategy came to fruition during the 1970s, when cultivation of areas of expertise by firm attorneys and participation in programs and other activities in the IP profession flourished at Finnegan.

Licensing

Marc Finnegan set the example of specialty expertise through his activity in IP licensing. Licensing of IP—patents, trade secrets, know-how—personally interested him. He was exposed to issues of licensing and technology transfer as patent advisor in post-World War II Japan. In the firm’s early years, he actively participated in the Licensing Executives Society (LES), the principal association devoted to the licensing field. A number of Finnegan attorneys would follow in Marc’s footsteps at LES over the ensuing years.

LES was formed in the United States in 1965 by in-house corporate attorneys and business managers engaged in IP licensing. There had been no organization to which those involved in the various aspects of licensing and transfer of IP rights could turn to acquire practical knowledge. The principal objective of LES was to provide members with a means of sharing experiences and developing information about licensing. LES held meetings, put on educational programs, and published materials on the myriad topics and issues relating to patent and know-how licensing, transfer of technology, and negotiation of agreements involving technological subjects.

In addition to rapidly attracting members in the United States, LES generated interest abroad. As early as 1967, LES expanded internationally with the formation of LES (United Kingdom). Marc attended the inaugural meeting in London of the U.K. group in January 1968. Chapters formed in other nations over the next several years, and, ultimately, an international umbrella organization, LES International (LESI), was created.

While the majority of LES members came from the ranks of in-house licensing personnel, private-practice attorneys also were admitted. Marc was well received by the Society, and as noted in a history of the organization, he gave it significant service:

[A]t the Midwest Regional meeting in Bloomington, Minnesota [in early 1969], Marcus B. Finnegan, senior partner of Finnegan, Henderson, Farabow & Garrett, spoke on “Bureaucracy Run Amok—Problems Involving Licenses for Foreign Filing of Patent Applications.” Marc Finnegan would become extremely active in U.S. and international LES activities, and eventually would be awarded the LESI Gold Medal in recognition of his achievements.10

He played a key role in the evolution of LES as chairman of a committee created in 1972 to “recommend an administrative structure reflecting the international character of the Society, and organization of a North American LES Chapter that could deal efficiently with LES matters.”11 Under his leadership, the committee put together the framework for LESI, and in 1973, a constitutional meeting was convened in London to discuss and adopt a governance structure.12 The convention was chaired by Charles H. Chappell, the President of LES USA, but Marc provided the agenda, and according to one of the delegates, Norman A. Jacobs, it was Marc Finnegan and LES founding member Dudley Smith who set the stage “to make LES truly an international organization.”13 In Jacobs’s view, [t]hey had the foresight and courage to give that body [LESI] a superior role rather than be a subsidiary of the U.S. organization. They knew that would never fly with other people in the world, and they knew if they really wanted to achieve their dream of LES being a worldwide organization that organization had to be on top. I was involved, but they were the leaders.14

The new organization was approved by the Society, and, eventually, Marc served as President of both LES USA and LESI. In 1977, he was awarded the Society’s highest honor, its Gold Medal, created by LESI to recognize “individuals whose achievements have definitely contributed to the practice of licensing, or the utilization of technology, or to the promotion of the professional standing of individuals engaged in the practice of licensing or the utilization of technology.”15

10 “The History of LES,” http://www.lesusacanada.org/docs/default-document-library/the-history-of-les. pdf?sfvrsn=3, at 31.

11 Id. at 38-39.

12 Id. at 39-42.

13 Id. at 40.

14 Id.

15 Id. at 135.

Marc took every opportunity to develop and promote his and the firm’s expertise in IP licensing by attending conferences, writing, and lecturing in the United States and abroad. He brought Brian Brunsvold into licensing-related activities. They coauthored various articles, many for les Nouvelles, the publication of LESI, and a textbook on patent and know-how licensing that formed the basis of a course they taught at the George Washington University Law School.

Adding Ken Payne and Tip Jennings, both of whom had worked on licensing matters before joining Finnegan, enhanced the firm’s licensing practice and its reputation as having expertise in this specialty. Before coming to the firm, Ken Payne had served as Assistant General Counsel for the U.S. Department of Commerce, as a U.S. Department of State delegate to the Inter-American Commission on Science and Technology Transfer, and as a consultant to the United Nations on matters involving the transfer of technology to developing countries. He therefore brought further licensing expertise to the firm, and, like Marc, he lectured and wrote extensively on licensing and technology transfer. He followed Marc in devoting substantial time and effort in LES. During the 1980s, he served as President of LESI and President of LES USA/Canada, and he was awarded the LES Gold Medal in 1994.

D. Patrick O’Reilley, a 1975 law-school graduate, assisted Marc in licensingrelated work and writing. Pat picked up the knowledge and skill to become a recognized licensing expert and continued the Finnegan tradition of active involvement in LES and LESI. He eventually served as President of both those organizations.

Marc Finnegan’s commitment to LES and his international prominence in the licensing arena put him in contact with many corporate managers responsible for IP, all prospective clients of the firm. The efforts made by Marc Finnegan, Brian Brunsvold, Ken Payne, and others in IP licensing demonstrated the potential of investing time and money in a specialty area. It produced additional work for the firm and fostered relationships that resulted in new clients and a range of IP projects.

Patent Interferences

Adversarial proceedings in the PTO to determine which applicant for a patent on the same invention should be awarded the patent, known as “patent interferences,” represented another specialty area that led to significant work. That type of contest had its own rules, procedures, and customs. Jerry Voight was one of the relatively few attorneys who had mastered interference practice. His experience included work at the Irons firm on an exceedingly complex, hotly fought set of multiparty interferences concerning the manufacture of polypropylene and related plastics, which were among the most commercially important inventions of the time.

Over his years at Finnegan, Jerry brought together his knowledge of the intricacies of interference procedure, an understanding of the strategic choices inherent in the proceeding, and his skill as a patent litigator. He became known as one of the nation’s preeminent interference experts. He trained a cadre of Finnegan attorneys in the specialty and taught it to others in the profession as a lecturer in

continuing legal-education programs. Ultimately, through his efforts and those of other attorneys at Finnegan whom he trained, the firm became known for its expertise in interference practice.

Not only were the interferences handled by the firm financially rewarding in themselves, but they also opened doors to other valuable work, including related complex patent prosecution. Sometimes, the interference proceeding was one piece of a wider confrontation between competitors, and the firm’s reputation in litigation as well as interference practice led to the representation of the client on both fronts. In other circumstances, clients satisfied with the firm’s work in the interference area turned to Finnegan to handle different types of projects as well.

For example, the patent counsel for Stauffer Chemical Co., a manufacturer of commercial agricultural products such as herbicides and insecticides, knew Doug Henderson, and when the company needed help with an interference in the fall of 1973, they met with Doug and Jerry Voight. After discussing the case, they asked the firm to handle it, and Jerry took the lead. During the pendency of that interference, another arose on a different subject matter and against a different adversary. Jerry also took on that case and began providing legal opinions on other issues as well. Stauffer eventually was acquired, and further acquisitions, mergers, and demergers occurred over time. The firm’s initial representation of Stauffer in the 1970s, based on its expertise in a specialty area, led to work on a broad variety of matters, including patent and trademark litigation, for the successor companies during the ensuing three decades.

A Pure Trademark Practice

Larry Hefter and Tip Jennings each had experience in the trademark field. In the 1960s and 1970s, patent attorneys usually also handled trademark registrations, oppositions to registration, petitions for cancellation of trademarks, and some unfaircompetition issues, such as trademark infringement and trade-name misappropriation (all these areas collectively referred to here as the “trademark field”). Some firms, however, worked exclusively in the trademark field without any patent matters. Larry Hefter learned that clients with large trademark portfolios did not consider patent firms for their most important work, preferring such “pure” trademark firms. Hefter proposed a high-quality trademark group in the firm that would acquire a reputation of excellence comparable to any so-called “pure” trademark firm.

He pursued this plan, gradually shifting his focus from patent law to the trademark field. Supporting Hefter’s effort, the firm brought in lawyers who were committed to this specialty area and who trained for it rather than patent work, including one of the most prominent lawyers in the country—Saul Lefkowitz, former Chairman of the PTO Trademark Trial and Appeals Board. Over time, Larry built the practice he envisioned, successfully cultivating recognition of Finnegan as a toptier firm in the trademark field. The firm would later add Art Levine, a prominent private practice copyright attorney who had been Executive Director of the National Commission on New Technological Uses of Copyrighted Works (CONTU), further establishing Finnegan as a full-service firm handling all aspects of IP law.

A PARTNERSHIP THAT COULD GROW AND HOLD TOGETHER

Adding Tip Jennings, Jerry Voight, Larry Hefter, and Ken Payne in 19721973—all having partner-level experience—represented a major expansion of the firm, but it carried substantial risk. If they proved incompatible with the earlier partners or could not accept the basic principles and culture of the firm, the conflict and disruption could have altered the firm’s trajectory of growth and success. Jennings, Voight, Hefter, and Payne took risks of their own in throwing their lot in with the relatively young firm. To provide everyone with an opportunity to assess the fit, none of the four was brought in as a partner. Each would spend a twoyear period as a firm associate before entering the partnership. It worked out well: Jennings and Voight became partners in 1974; Hefter and Payne in 1975.

The custom of delaying equity partnership, regardless of the experience or status of the incoming individual, endured over the firm’s first half-century. While that policy might have eliminated some potential candidates and frustrated some who did join the firm, it has served both Finnegan and the individual. It gave time for all to satisfy themselves that the working relationship could succeed for the long term, especially given a firm culture where all clients were considered firm clients, a worksharing and credit-sharing philosophy prevailed, and the focus was on the firm rather than the individual.

From the start, the Finnegan partners looked at potential candidates with a longterm perspective. They hoped to bring in attorneys capable of performing legal work at the highest-quality level, working well with clients, and attracting new work to keep them and others busy. In addition, they wanted compatible partners with whom they could maintain the spirit of the culture they had created. And by bringing in experienced lawyers and working with them for some period of time, they increased the likelihood of successful career-long partnerships.

The prospects of attorneys with fewer years of experience (or even no experience) were less certain. But younger hires were increasingly needed as the work of the firm continued to grow. Nevertheless, the attitude of the early partners remained that any candidate should be someone who could be envisioned as a partner, not a temporary addition to help with current workload without regard to the possibility of a future with the firm.

BEGINNING A SECOND GENERATION

The first member of the second generation was Herb Mintz, who became a partner in 1978. Born in April 1946, within a year of the end of World War II, Mintz was one of the earliest members of the Baby Boomer generation (typically regarded as encompassing people born between 1946 and 1964). After working as a patent examiner while attending the night law-school program at George Washington University, he clerked for Judge Lane at the U.S. Court of Customs and Patent Appeals (CCPA) from 1971 to 1973. Within a few months of Herb’s starting at the court, Judge Lane introduced him to the judge’s former law clerk, Doug Henderson:

I remember Judge Lane saying to me that he wanted me to meet an “important lawyer in Washington.” He took me to the University Club, where he was a member and frequently ate lunch, and it was there that I first met Doug. A year later, when I was looking for an associate attorney position for after my clerkship, I naturally interviewed at Finnegan, and of all the firms I contacted, I was most comfortable with Finnegan. I liked the lawyers I met, they were very welcoming to me, and they seemed to like each other, which created an overall friendly atmosphere. Plus they were very enthusiastic about the firm. That was evident. I did not know enough about private practice to really be capable of evaluating the potential of each firm, but Finnegan definitely seemed like an exciting place that was on the rise. So I was very happy to get their offer, and started with the firm in September 1973, just a few days after Ken Payne. It proved to be a great group to join.

Over the remainder of the 1970s, other attorneys who would become partners in due course started with the firm. Some were Baby Boomers; others were of an older generation. Five who joined the partnership before the end of the decade besides Herb Mintz, were Donald R. Dunner, C. Larry O’Rourke, Albert J. Santorelli, Michael C. Elmer, and Richard H. Smith. This group came with a variety of legal backgrounds: Larry O’Rourke and Dick Smith had worked in corporate patent departments; Al Santorelli came from private practice in the patent field (including the Irons firm); and Mike Elmer gained litigation experience as a lawyer in the Judge Advocate General’s corps of the Army.

Mintz, O’Rourke, and Santorelli came into the partnership as of January 1, 1978. Each would spend the rest of his career at Finnegan and play significant roles in the management of the firm; the leadership and training of less experienced attorneys who came along in the 1980s, 1990s, and 2000s; and the development of new business. Larry O’Rourke would open the firm’s first regional office in Palo Alto,

A Brief History of the Founding of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

California, with Mike Elmer joining him. All of these Finnegan lawyers saw, and were part of, the many changes that took place over the ensuing years of the firm’s first half-century.

DON DUNNER

Don Dunner occupies a category of his own. A name partner in a Washington, DC, firm—Lane, Aiken, Dunner & Ziems—he already enjoyed high respect in the IP field as a counselor, litigator, writer, and law teacher. Marc Finnegan and Doug Henderson were Dunner’s contemporaries and friends, and they had long hoped to bring him into their firm. By the mid-1970s, a future with the dynamic and increasingly successful Finnegan partners looked promising to Dunner, and he made the move in 1978. He became a name partner in 1979.

Don fit into the firm well. His tireless commitment to clients, and the superior skill he brought to their legal matters, significantly helped the firm achieve its goal of being viewed as a top-drawer, full-service IP firm. He engaged in a seemingly endless stream of nonbillable activity in bar associations, writing, and educational programming, which led to clients, work, and a stellar reputation in the IP field. When he joined Finnegan, he was on the ladder to assume the presidency of the American Patent Law Association (APLA), the foremost organization of lawyers focused on patent, trademark, and copyright law.16 He would later serve as Chair of the American Bar Association’s Section on Intellectual Property Law (1996-1997), the other major IP bar association.17

A former law clerk at the CCPA,18 Don had a particular interest in CCPA rules and practice, and he taught a course at the George Washington University Law School based on a textbook he coauthored with CCPA Clerk of the Court George E. Hutchinson.19 During the 1970s (and continuing into the 1990s), he coauthored the treatise Patent Law Perspectives with respected IP scholars Irving Kayton, James Gambrell, and Martin Adelman. Given his prominence in the field, his reputation as one of the most knowledgeable and keen advocates in patent law, and his unparalleled experience in patent appellate litigation, Dunner would eventually be perceived as the Dean of the Federal Circuit bar. But even when he started with Finnegan, he had

16 Don was President of APLA (subsequently renamed the American Intellectual Property Law Association (AIPLA)), 1979-1980.

17 As of this writing, Dunner is a member of the ABA Board of Governors (2014-2017), a Fellow of the American College of Trial Lawyers (since 1995), and an inductee into the American Academy of Appellate Lawyers (2004). In 2008, the Legal Times recognized him as one of thirty visionaries who helped shape the legal community in Washington, DC, over the preceding 30 years.

18 Don obtained his law degree from Georgetown University, attending the night program while working first as a patent examiner, and later as a law clerk for CCPA Chief Judge Noble Johnson. In that era, the judges hired law students as clerks.

19 George Hutchinson is a revered member of the bar. He started his career at the age of 15 as a page at the Supreme Court of the United States, served in World War II, and then returned to the Supreme Court until eventually moving to the Clerk’s office at the CCPA. Along the way, while working, he earned his undergraduate and law degrees. When the CCPA merged with the U.S. Court of Claims to form the U.S. Court of Appeals for the Federal Circuit in 1982, Hutchinson was appointed Clerk of the new court. After retiring from the federal government in 1985, he joined Finnegan as Of Counsel and has spent a second career there.

such a high stature in the IP bar that he was called upon to testify before Congress on the issues that eventually led to the creation of the Federal Circuit. He later led that court’s prestigious Advisory Committee for many years.

Unfortunately, Marc Finnegan was fighting his battle with cancer as Don Dunner was settling into the firm. An idea that Don was brought in to replace Marc floated in some quarters of the profession, but that had not been the firm’s plan. By the mid-1970s, the firm was blossoming into the type of force that Marc and Doug had hoped for: a full-service IP practice with a growing clientele, workload, and reputation. They knew Don well, were confident that he would fit into the firm’s culture, and thought that bringing him into the mix to practice with Marc, Doug, Ford, and the others would powerfully help propel the firm forward. Indeed, with his personal work ethic, adherence to the Traditionalist generation view of developing and valuing business for the firm, and a willingness to adapt to the culture that the early Finnegan partners had developed, Don would function over the decades as one of the most important senior partners and leaders of the firm.

FINNEGAN BECOMES

MULTIGENERATIONAL

One of the great strengths of the firm has been its successful evolution into a multigenerational firm, with the Traditionalists, their successors the Baby Boomers, then Generation Xers, and more recently Millennials, ultimately coexisting and transforming the firm from a mid-20th century small law practice to a large 21st century powerhouse. The first test of the adaptability of the firm’s culture came with the inevitable introduction of Baby Boomers into the partnership.

Born between 1946 and 1964, the Baby Boomers shared the work-centric, goaloriented, competitive traits of their parent Traditionalist generation.20

Baby Boomers are extremely hardworking and motivated by position, perks and prestige. Baby Boomers relish long work weeks and define themselves by their profession.21

But the Baby Boomers grew up in the relative prosperity and security of postWWII America—an environment quite different from the one that nurtured the Traditionalists. As one analysis puts it:

Baby Boomers are confident, independent and self-reliant. This generation grew up in an era of reform and believe they can change the world. They question[] established authority systems and challenge[] the status quo. In the legal workplace, Baby Boomers are not afraid of confrontation and will not hesitate to challenge established practices.22

Because of some of the fundamental differences between the Baby Boomer lawyers joining firms during the 1970s, 1980s, and early 1990s and the Traditionalist leaders of those firms, the potential for conflict existed throughout the legal profession. At Finnegan, that possibility was enhanced, in theory, by the firm’s consensus-based approach to significant decision-making, requiring unanimity, or at least the absence of serious objection, within the partnership. But the culture created by the founding and first-generation Finnegan partners actually proved a favorable groundwork for the assimilation of the Baby Boomers and the continued growth of the firm. The lack of a rigid hierarchy, the sharing culture, and the support for individual partner discretion in pursuing new business all fit comfortably with the Baby Boomers’ instincts about what constituted a good workplace. And the strong work ethic and focused commitment to the firm matched their own personality traits. While the

20 See Sally Kane, Baby Boomers, http://legalcareers.about.com/od/practicetips/a/Babyboomers.htm.

21 Id.

22 Id.

consensus style of leadership would become increasingly difficult to maintain as the firm grew larger, it was workable and effective at the time that a new generation of lawyers was being absorbed by the early partners.

NEW GROWTH: INCREASING THE FIRM’S POTENTIAL

From the start, the firm’s partners sought to add lawyers who were proven or could be expected to perform at a high level of quality and commitment, and fit into the firm’s culture. That objective remained as the firm expanded in the 1970s. It was one thing to bring in partner-level lawyers. To grow realistically, the firm also needed to add attorneys with whom they were not necessarily personally familiar, including younger, less-experienced individuals. For those, the partners looked to other indicia of likely success, such as federal-court law-clerk experience. They could rely on the judges’ recommendations. Future partners Herb Mintz, John Romary, Allen Sokal, Dave Hill, Rich Stroup, Charley Lipsey, Bill Lewris, and Marty Fuchs, for example, all worked for federal judges during the 1970s. Over the ensuing decades, the partners continued to seek court law clerks, particularly from the Federal Circuit, and many later partners came to the firm through that passage. Tom Winland and Steve Peterson both worked for a client, Battelle Memorial Institute, and were recommended by people the partners knew. Don Dunner brought Bob Bajefsky and Carol Einaudi with him. All of these attorneys became valuable partners in the firm.

Beginning with the hiring of Bruce Zotter and Pat O’Reilley as law clerks while they were attending law school at George Washington University, work programs for law students gave the firm a chance to evaluate future attorney candidates firsthand. Later, law students who were also registered to practice before the PTO and had some experience in prosecution were given the status of student associates, and in time, a summer-associate program was developed, primarily for students between their second and third years of law school. These programs became the principal sources of entry-level attorneys in later years, including future partners Tom Irving and Marty Fuchs.

THE FIRM GOES INTERNATIONAL

Over the decades, the firm has represented major European and Asian clients before American agencies and courts. Early on, Marc Finnegan recognized the potential of pursuing foreign companies, especially in Japan, with which he was familiar and comfortable from his work there in the 1950s. Before his death, Marc had been the principal face of the firm in Japan. Jerry Voight and Dave Hill also were involved in the effort to develop the reputation of the firm in the Japanese business community and obtain IP work from Japanese companies. A significant achievement in that arena had been an arrangement for Toshiba to open an IP branch in the firm’s Washington offices. Sadly, however, Marc died before that plan came to fruition.

Japanese clients had some concern about whether the firm would survive Marc’s death and wanted to meet with the other founding partner. At the time, Doug Henderson had a heavy trial schedule, but recognized the importance of such a trip. Doug, Jerry, and Dave visited all of the firm’s Japanese clients over a two-week period, reassuring them of the vitality of the firm. They succeeded in inspiring the confidence of those companies and so reassured Toshiba that it went ahead with opening its office in Finnegan’s headquarters.

Toshiba’s action sent a strong signal to other Japanese clients that the firm would continue at its high level of excellence, and it eliminated questions about the firm’s survival. It also represented a major step forward for the firm in its connection with foreign clients. Finnegan would eventually open offices in Tokyo and other foreign cities, which helped the firm retain long-lasting clients. The relationship between Finnegan and Toshiba itself has continued over the ensuing decades, with the company maintaining a presence in the firm’s DC offices throughout, even moving with Finnegan as the firm changed locations.

END OF AN ERA

Marc Finnegan’s death from cancer on April 13, 1979, marked the end of the first phase of the firm. Over the course of the preceding decade, he led a number of litigations. In one, he, Ford, and others represented client Cope Allman in an antitrust lawsuit that involved extensive, time-consuming discovery, including lengthy depositions in Europe, before the parties reached a settlement. It was a major case for the firm and brought Marc and Ford into a close working relationship, which they carried forward in a trade-secret case for a Baltimore chemical company, Alcolac, Inc.

Several employees of Alcolac had set up their own business making the same chemicals as Alcolac by methods that Alcolac claimed used its proprietary technology. Alcolac sued the former employees and their company in Maryland state court for misappropriation of trade secrets. The firm achieved a victory at trial for Alcolac. Sharing the experience of developing the case and trying it together further forged the litigation team of Marc Finnegan and Ford Farabow.

In both the Cope Allman and Alcolac cases, Marc served as the lead counsel and Ford backed him up as second in charge. They each were working on other litigations as well. Marc was asked by PPG Industries to lead a patent-infringement case against Bausch & Lomb (B&L) on a patent concerning the chemical strengthening of lenses. PPG’s inventor had developed a method of heating lenses for glasses in a molten salt bath to increase their resistance to shattering. The method was enjoying substantial commercial use, and B&L sought to invalidate the PPG patent on several different grounds, resulting in a lengthy trial in 1979.

While the PPG case was in progress, Ford was handling a major patentinfringement case for Crucible Steel. When Marc became ill and the possibility of his unavailability for the PPG trial had to be considered, in-house counsel for PPG asked Ford to come in and try the case. Though he had his hands full with the Crucible case and other matters for which he had responsibility, Ford jumped in. In such situations, a client would often consider moving the case to another firm with a lead counsel of experience and reputation at the same level as Marc Finnegan’s. To Ford’s credit, PPG wanted the firm to continue to handle the case. They made a wise decision as Ford went on to lead the team to victory for PPG at trial.

It was a difficult time for Ford: leading the Crucible case, which he also won, and replacing Marc in the PPG action, all while his close friend and partner tried to overcome a deadly illness. Everyone in the firm deeply felt the prospect of losing their founder. When he succumbed, the partners travelled in sadness to West Point, New York, for his funeral. A few weeks later, in a May 13, 1979, letter to the “Office Family,” Betsy Finnegan wrote:

Words are inadequate to thank you for your loving friendship during this great inexplicable tragedy in our lives. Both Marc and I had such firm belief that he would recover, regardless of his setbacks, that I still find it hard to believe he is gone. . . .

The concern and encouragement from all of you at Finnegan, Henderson, Farabow & Garrett kept his spirits high and his one aim was to return to his law firm. He was not only a brilliant lawyer but also a kind and gentle man—a wonderful husband and father—and it will take a long, long time for our hearts to stop aching.

Marc Finnegan remained an inspiration for those who knew him, and an iconic figure for all firm members, throughout the first half-century of the firm. Fortunately, he left the firm in excellent hands. All the partners stepped up to the challenge of filling the void and moving forward under the guiding principles the first-generation partners had developed. Rather than losing ground in the unhappy circumstances of the spring of 1979, the firm was in fact poised for extraordinary growth over the next decades. A new era in the history of the firm was about to begin.

ABOUT THE AUTHOR

Herb Mintz retired as a partner in the Finnegan law firm in 2010. He is a PastPresident of the Federal Circuit Bar Association and current member of the Board of Trustees of the Federal Circuit Historical Society. He has been an editor and writer for the annual Journal of the Federal Circuit Historical Society since its inception. Articles he wrote or coauthored for the Journal include The Wisdom of Howard T. Markey “In His Own Words” (with David M. Cohen, vol. 1, 2007, p. 19); A History of the Article III Status of the U.S. Court of Appeals for the Federal Circuit (vol. 2, 2008, p. 151); William Thornton, Founder of Washington, D.C., Architect of the United States Capitol Building, and Superintendent of the Early United States Patent Office (with George E. Hutchinson, vol. 5, 2011, p. 45); and Federal Circuit Chief Judge Helen Wilson Nies (1925-1996): An Extraordinary Life as Lawyer, Judge, Wife and Mother (vol. 8, 2014, p. 7).