LAURA MILLER Powerhouse Patent Attorney TacklesComplex International Issuesby Pat Milhizer

Laura Beth Miller sees an 18-wheel truckand can tell you how the inside of theGerman-made transmission works. Whenshe opens a new version of Microsoft Word,she wonders what’s changed and whatpatents might be behind it.

Indeed, Miller looks at some things with adifferent lens. But when clients face severalmillions of dollars in potential penalties forproduct infringement, they rely on her tohelp them figure a way out of it.

“You pick up a CD and look at the musicand see what songs are on it. I’ll open it andI’ll see if there are copyright notices on it. I’llsee if there are patent notices. So maybethat’s kind of geeky. I’m sure it’s geeky, butit just adds another dimension to life—thethings you run into every day,” Miller said.

And one day last year, Miller and six otherBrinks Hofer Gilson & Lione lawyers made history.

They successfully won the first case inthe 75-year existence, at the time, of theU.S. International Trade Commission inwhich an administrative law judge in apatent enforcement proceeding ruled for arespondent, the defendants in such cases.The complaint had sought more than $40million in penalties in a case involving thesoftware that controls a truck transmission,and all were denied.

“This case lays out the road map for howa company should handle itself when it hasbeen found to infringe a patent,” said GaryRopski, firm president. “It tells you exactlythe right way to do things, and it really helpsother companies better protect themselves.”

Miller mostly represents manufacturers inpatent and trademark litigation cases, andmost cases feature companies that havebeen charged with patent infringement ofproducts or methods of operating Web sites.

“They’re not unexpectedly disappointedwith the Patent Office that the patent gotissued in the first place. But I think mostclients are sophisticated enough torecognize that patent litigation these days issomewhat like any other kind of litigation.It’s an expected business expense that theyhave to address. You try to avoid infringementthe best you can, and there are ways to tryto predict whether your product is going torun into some issues. So they just deal withit, and they come to us to try to help them,”Miller said.

As part of her practice, she representscompanies in proceedings before the ITC,which provides a forum for American and foreign businesses to stop theimportation of infringing products and otherunfair competition.

Hospital work—not for herMiller, 46, grew up in Virginia outside of

Washington, D.C., and initially thought she’dbe helping people in a hospital. Aftervolunteering in an emergency room for asemester while attending the University ofVirginia, she was convinced that the medicalfield wasn’t for her.

“I went to college thinking I was pre-medbut came to realize that I wasn’t going tomake it as a doctor,” she said. So sheheaded to law school at the College ofWilliam and Mary, Marshall Wythe School ofLaw in Williamsburg, Va.

There, the dean of the school said, “law school is the haven of the vocationally undecided.”

Miller was no exception.“I realized that law school would expand

my career options. Before going to lawschool, my job experience was limited toworking as a swim instructor at a summercamp. Looking back, that might not havebeen such a bad job choice, but at thattime, it didn’t seem like a realistic option,”Miller said.

She was drawn to litigation and workedfor the U.S. attorney’s office in Norfolk aspart of a class, earning a law degree in 1982.

She settled in Chicago by chance, aftervisiting the city for a friend’s wedding.

“It was unlike any cities on the east coastor west coast. I remember walking downMichigan Avenue and thinking how beautifulthe lake was from the hotel room,” Millersaid. “It was one of those rare, warm and

sunny Labor Day weekends. Sometimes Iwonder how my life would have beendifferent if I had first visited Chicago in the winter.”

In 1985, she started a job with Chadwell& Kayser handling general litigation andsome patent litigation. She took a leave ofabsence to work in the abuse and neglectdivision of the Cook County public guardian’soffice from 1989 to 1990.

While Miller was working for the county,Chadwell & Kayser dissolved, and she wentto work for Davis, Mannix & McGrath. Thefirm handled intellectual property andcommercial litigation cases, and Miller usedher early mornings and lunch breaks toattend biology and chemistry classes at theUniversity of Illinois at Chicago so she couldeventually sit for the patent bar.

“And the rest is history,” Miller said.

Getting better and betterShe joined the Chicago office of

Brinks Hofer Gilson & Lione in 1996, andMiller now chairs the International TradeCommission group.

“She’s the best person to do thatbecause of her experience at the ITC,”Ropski said.

“We have in our firm, I think, some of thebest intellectual property attorneys in thecountry, and Laura is one of them… she’s aterrific asset to the firm,” Ropski said. “Shejust keeps getting better and better. Shetackles a complex problem and makes itsimple. She’s able to respond to client

needs no matter where she is.”When asked what is the best part of her

job, Miller said it’s the people she sees inthe firm’s NBC Tower office every day.

“You spend so much time working that ifyou don’t like the people you’re working with,it makes for a very long day,” Miller said.

She has the same attitude about herclients. “You become part of a team,working with the clients to help them avoidsimilar challenges in the future and toidentify what path will meet clients’ long-term business strategies.”

The most challenging part of her job alsohappens to be the most interesting part, she said.

“With patent cases, each patent ispresumed to have a new invention in it, soit’s often cutting-edge technology. Soyou’ve got to understand what the patent isabout. You’ve got to understand what yourclient’s product is or how their systemworks. Each patent is different and eachtechnology is different,” Miller said.

“Each new case, you have an opportunityto learn something new.”

Miller also has learned how to balancework and family life, with a daughter atLaSalle Language Academy and a son atWalter Payton College Prep.

At Walter Payton, she serves on the localschool council, which was responsible thisyear for selecting a new principal.

She also teaches as an adjunct professorat John Marshall Law School, team-teaching a patent (Continued on Page 217)

law class with her partners at the firm. Theschool has a relationship with a patent officein China, and many of her students werepatent examiners from China coming tolearn about U.S. patent law. She enjoyedteaching the class so much that she endedup taking a Chinese language class throughthe Confucius Institute, a joint venturebetween the city of Chicago and theChinese government.

More women in the fieldIn her free time, she rides her bike along

Lake Michigan and attends her childrens’fencing events.

It’s tricky to balance her work and home life.

“If you can get three months organized,you’re pretty good. It seems like just as youget one school quarter set up, it ends. Then,before you know it, it’s June; and you’rewondering now what? There are a lot ofthings you can’t do, and you don’t worryabout it,” Miller said.

More women, Miller said, are entering theintellectual property field.

“It’s traditionally been male-dominatedbecause you have to have a science orengineering background,” Miller said. “Soit’s not unusual for me to be the only womanin the courtroom or the only woman on the phone call. But you quickly forget that dynamic.”

In fact, Miller recalled a case earlier in hercareer when she was representing acompany who was facing a product liabilitycase over an allegedly defective tire. TheCook County jury ultimately found that thetire wasn’t defective.

Miller had defended the company withanother woman, and the judge let them askthe jury questions after the trial.

“The jurors interestingly commented thatwhen they first saw two women defendinga tire company, they thought it was kind ofa ploy on their sympathy. But they quicklyrealized that (gender) wasn’t an issue andforgot whether we were women or men,”Miller said.

“As soon as they realized we knew whatwe were talking about, how a tire is madeand how in this case it couldn’t have beendefective, they said gender became aneutral issue after the first five minutes in thecourtroom. In law practice, that’s the case.People might notice when you first walk inthe room that you’re the only woman. Butfive minutes after the conversation starts,they pretty much forget it,” Miller said.

Since she started practicing law, she saidthe biggest change she’s noticed is thatbusinesses are savvier about the value ofintellectual property.

“In the past, most patent cases involvedcompetitors, with one party owning a patentand the other allegedly infringing the patent.The patentee was interested in obtaining acompetitive advantage in the marketplace,by enjoining the competition from using thepatented invention. Today, its notuncommon to find that the plaintiff is a

patent holding company, whose solebusiness is to leverage the value of thepatents either through litigation and/orlicensing,” Miller said.

What makes the job so enjoyable, Millersaid, “is there’s always something new.Even though it’s the same basic law—infringement law or invalidity—the legalstructure doesn’t change much. But thefacts are always interesting… there’s alwaysthe next case, client or invention. You’re notdoing the same thing over and over.” ■