Reed Heimbecher, the new leader of the 11-person Minneapolis law office of Dykema wants to go big in more ways than one. Heimbecher hopes to expand not only the number of attorneys in his office — which opened in 2013 and doesn’t yet fill the space it rents on the 39th and 40th floors of the Wells Fargo Center — but also the scope of the work they do. “We would love to have this office be a general practice office and we’ll get there,” Heimbecher said. “Right now, it’s heavily biased toward IP [intellectual property] because that’s what I do.” Last fall, Heimbecher was appointed the office managing member of Dykema’s Minneapolis office. During an interview, Heimbecher talked about patent work and how he wants to expand the local office’s scope to better reflect Dykema’s general-practice capabilities by adding corporate, tax, financial services, health care, real estate and lending, litigation, and other groups.
Q: What are your short-term goals for this year?
A: We are looking for a head count in this office. We would like to build out that space below us and have a good reason to do that. We have a lot of things in the works and several people are involved in it. This is a good time of year for the firms that are calendar-year based; this is the right time because the comp decisions that they got from last year, if they got treated well, if they got the bonus they wanted, if they are getting the correct equity share that they expect for this year, those decisions are being made. If we wait until the end of the year, people are like ‘Oh, I’m doing pretty well.’ We recognize the fact that we want to be more aggressive here in growth and so we are having a lot of conversations.
Q: Are there challenges recruiting talent here in the Twin Cities?
A: The Minneapolis legal market is fairly small. Practicing attorneys in Minnesota average around 23,000 to 25,000 total, and if you look at the last couple years, it has grown less than 1 percent. The last three years, 70 lawyers were added statewide to the number of practicing attorneys. That includes ones leaving and ones coming in. Seventy lawyers spread across all those firms, it’s a tough environment to recruit. Everyone is going after the partners that have a practice. You want the people who are doing well, but if they are doing well they are probably happy where they are at or they are getting treated fair where they are at so it’s harder to get them to come over. It’s challenging and some of the people we are talking with have nice practices and they say they are portable and can bring them with them. But they just can’t make that decision to pack up their stuff and come over.
Q: You indicated that your firm is looking for experienced attorneys. For younger, less experienced lawyers is there a large learning curve to patent work?
A: There can be. Some of the schools here have clinics and they teach lawyers how to draft patent applications. There is that old Supreme Court case that says that drafting a patent application is the toughest document any lawyer writes because you are dealing with new technology. Maybe it has never existed before. You have to be able to write it up in a way that you explain why it’s new. Infringers are smart. When you write it, you have to talk a little bit about the background. The main part is you have to describe it in enough detail that somebody of ordinary skills can read it and make and use the invention without undue experimentation. It’s very tough. You are trying to figure out not only what the client should get entitled to but what are the smart infringers going to do five to 10 years from now to avoid what you’ve said. For the most part, that takes time in the saddle.
Q: What’s your process of writing a patent application?
A: We don’t use templates really. There’s some boilerplate language in there, but it’s very little. I start with a blank piece of paper. If it’s mechanical, which is what most of the stuff I do is, I get drawings and spread them all over one of these tables and then spend four hours dictating what it is and how it works. Before you do that, you really get the client to think outside the box. ‘You designed this. How would you get around it?’ And have them think about three or four different ways.
Q: Recently, the Supreme Court has heard some key intellectual property cases. What are some cases to keep on the radar?
A: Some people speculate that that’s [the Supreme Court being] concerned about the federal circuit because they hear all of the patent appeals now so they need to look at more of those because they are their only review. There are a few interesting ones. There is the SAS case [SAS Institute Inc. v. Matal], which deals with whether the Patent Trial and Appeal Board must review all of the patent claims during an inter partes review proceeding, and of course the oil states case [Oil States Energy Services, LLC v. Greene’s Energy Group, LLC] that deals with the constitutionality of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board.