Sharon received the 2013 American Inns of Court Professionalism award for the 7th Circuit and the 2011 Women of Vision award from the Women’s Bar Association of Illinois. She was named one of the 50 Most Influential Minority Lawyers in America by the National Law Journal in 2008 and an Illinois “Super Lawyer” by Law & Politics Media Inc. (2005-2011) for her intellectual property litigation work.

She is a graduate of Syracuse University where she earned a bachelor’s degree in psychology and went on to receive a law degree from the University of Michigan Law School.

Tell us a bit about your background and how you became an intellectual property (IP) lawyer.

I practiced in Cleveland, Ohio, and did primarily general commercial work and M&A [mergers and acquisitions] work and some litigation, so a smattering of things. It did not hold my intellectual curiosity, so I started looking for something that would both challenge me and stimulate me intellectually and also have a platform for a long career. In my undergraduate studies, I spent a lot of time in the sciences; I have a B.S. in psychology, which required me to take a lot of science courses.

My first introduction to intellectual property was with Karon, Morrison & Savikas, a specialty IP litigation firm. My very first case was Hughes Aircraft Co. v. United States¹ involving aircraft and geosynchronous space. It had been going on since 1963, and I had the benefit of getting involved with it in 1985. The case was heard by the Federal Circuit when it first came into existence. It also went up to the Supreme Court twice while I was working on it. It was and continues to be one of the largest patent infringement cases against the U.S. government and one that involved a lot of seminal technology that we still use today. Geosynchronous satellites are why we have GPS and cell phones. It was a truly fascinating case to get involved in for the first time. From that day until today, intellectual property has been my passion.

What a tremendous way to start your career.

Yes, my seminal training in intellectual property was on the Hughes Aircraft case and working with the folks at Karon, Morrison & Savikas, which was acquired by Keck, Mahin & Cate. I spent 10 years there learning intellectual property on some very fascinating and stimulating cases.

Can you tell us about your transition to Foley & Lardner and then your ascension through the ranks?

I joined Foley at the beginning of 1996, shortly after I had my first child. My first son was born in February 1995, and I took off almost a year. It was during that time that I decided that IP litigation was all-consuming, and that it was impossible for me to bill 2500 hours a year, build a client base and start a family. One of the reasons I chose to go to Foley is that it would allow me to continue to work on increasing my knowledge and expertise and provide support for me to build a client base.

At that time, Foley was looking to start an IP practice in Chicago. It already had a very substantial IP practice in its headquarters in Milwaukee and a very significant biotech practice in its D.C. office. With my background in biological sciences, it was very intriguing to go to a firm that had a biotech group. There was a lot of scientific research going on in biotech, but there were no biotech products. As an IP lawyer, I could see that down the road there were going to be a lot of IP disputes around that technology. My first leadership position at Foley was to build an IP practice in the Chicago office that complemented the practices in Milwaukee and in D.C.

My second leadership position was to chair Foley’s national IP litigation group. That group had folks in all of the major offices—Washington, Milwaukee, San Diego, San Francisco, Florida. My role was to continue to build the IP litigation practice. The IP litigation practice grew to be a national powerhouse.

During that time, I was also elected to the firm’s management committee, which ran the entire firm of about 1,200 lawyers. I continued to run the IP litigation practice group and built an IP practice that included IP counseling, transactions, and litigation. I was able to recruit top young talent to Foley because I gave them a chance to build good careers and get good experience.

The next leadership position was as the IP department chair for Foley, which I did for three years, before I left for the government.

What was it like being a law firm leader as a mother and a woman of color?

Both as a mother and a woman of color, there were challenges in not only just working, but also building a practice and having management and leadership responsibilities. From my perspective, none of those things could happen without support and a good team both at work and at home. To Foley’s credit, they did not put obstacles in my way when I was trying to be a manager and a leader and the mother of three. In fact, they were very supportive of the compromises I needed in order to make it work. For example, I took about a year off with my twins. When I came back, I was working on a case that I had started working on the first month I got to Foley and was still going on four years later. Ultimately, I took that case to trial.

I felt very supported when I returned from maternity leave. I was still nursing, and I didn’t want to travel when I got back. The compromise I made with my team was I would stay and write the briefs and do the work in Chicago, while they went out and took depositions around the country and around the globe. Having good support and people who would work with me through that period of time was very important for me.

I eventually traveled for work again. I opened up the Shanghai office and the Tokyo office while I was at Foley. My kids were small—around three and six years old. I took them with me because I would be there for long periods of time. I would take my sister or my nanny with me so that she could watch the kids. The other thing I would do was to take in-house counsel clients to places where we could all bring our children, like Disney on Ice. We were all struggling with how to both have our careers and spend time with our family, so for me, that was a good way to network and build client relationships.

At home, my husband is also a lawyer. The compromise we made was that he would take a job that had less trial work. He went to the U.S. Treasury, which became the Department of Homeland Security, where he had a much more stable work environment.

There were also challenges and opportunities being a woman of color. Frequently in intellectual property, especially when I started in the mid – to late 1980s, there were not a lot of people around who looked like me. I had to prove myself in terms of intellectual rigor and capacity to the males in that area and in litigation; it was a double challenge. I felt like I had to work harder and be better in many instances than my counterparts to demonstrate skill and capability. I saw it as a challenge and an opportunity as opposed to a brick around my feet.

You were having a successful career at Foley. Was it hard for you to leave a lucrative private practice and go into public service at the United States Patent and Trademark Office (USPTO)?

It wasn’t hard, but it was scary. I grew up in law firms, so I knew how they functioned. I had a very successful career with a platform of people whom I respected and who respected me. The notion of leaving all that I knew behind and jumping into the wild and crazy world of politics was a scary proposition.

At the time, I had become more focused on policy issues that impacted intellectual property. I cochaired an ABA IP policy committee. That committee drafted the first draft of what became the America Invents Act. I also cochaired an American Intellectual Property Law Association committee focused on policy and wrote articles on policy issues.

I was finding policy issues that were adversely impacting intellectual property so much so that I was concerned about the viability of intellectual property in the future. I felt like I could give back by going to the government and applying my knowledge and experience in this space. In the end, it wasn’t hard for me because of my passion for intellectual property and its importance to the long-term sustainability of our country.

The second thing was the incredible opportunity to work for the first African American president. I worked on President Obama’s campaign when he ran for Senate, and I worked on it when he ran for president. I felt incredibly honored to be able to go work in his administration in an area where I brought some expertise.

What would you say was the most challenging aspect of your transition from private practice to government service?

I would probably say the most challenging part was working more hours than I worked in private practice, which I didn’t think was possible. The thing about government service at the appointee level is that it is an incredible opportunity to get engaged at the highest level of government and have an impact. I am a voracious learner, so the ability to understand government functionality both from the United States and on an international basis and then have an impact on that consumed me. I wanted to drink up as much of that learning as I could.

It seems like you did a lot of traveling overseas and working on international issues during your time at the USPTO.

Growing up in the Midwest, we make stuff you can feel and touch. In private practice, I saw the migration of manufacturing to Japan and then to China. The reason I got engaged from an international perspective in the first place was because that’s where the clients were going as part of my private practice, so that’s where we migrated as well. What I began to understand on the policy side and at the government was that trend was going to continue, and that for U.S. companies to be successful, we needed to have IP laws in other countries that allowed us to compete fairly, i.e., not have our intellectual property stolen and used to compete against us.

On the government side, I worked with the BRIC countries [Brazil, Russia, India, and China] because their IP laws were still in their formation and infancy. It was important to get good, sustainable uptake from them on enforcement and the continued need to have strong IP laws in their countries. It really was a continuation of the work that I had done in private practice, which is why I focused on international issues.

You had a very vibrant career at the USPTO as well. Do you feel like you accomplished the goals and the objectives you set when you left for that service?

Once I got there and looked at where I could have a meaningful impact in the amount of time that I told the administration I would stay, which was only 18 months to two years, I tried to find places where I could make a measurable difference. One of those big differences was having a viable, strategic plan for them to address the issues that are actually impacting the USPTO, like the amount of patent applications that were unexamined, how to keep that number from growing, and how to measure success in that area. Some of the other issues included how to improve employee morale and how to engage with the international community on the importance of intellectual property. It took a lot of work and a lot of stakeholders to get a strategic plan ready, which was required by Congress to be filed in 2010.

The second thing I wanted to work on was getting employee morale right and better. It is an incredible opportunity to work for the USPTO; it has incredible jobs that pay well. We’re lucky to have smart people who are willing to work for the government.

There was a disconnect there for me on why the morale wasn’t better, so I spent a lot of time meeting with employees, doing focus groups trying to raise morale, and trying to think of systemic things that would keep morale where it should be in the organization. The international engagement, the strategic plan, and the employee morale were three things that I wanted to work on while I was there and make a meaningful difference. I do think that I was able to do those things in the time that I was there.

How was that return from the USPTO back into private practice?

It was more difficult than I thought it would be and for reasons that I probably hadn’t thought of. I knew I would have to go back and rebuild a practice because I’d given my clients away, and I didn’t really feel like I should come back and take them back. My goal was to be able to demonstrate how you could rebuild a practice after being in government service better and even stronger than before. In my firm, there is reluctance for people to go into government service and come back. It wasn’t rebuilding the practice that I had a difficult time doing; in six months, I had rebuilt my practice. The problem was that the kind of work was really different from the heady, government policy stuff I got involved with at the USPTO. It wasn’t as intellectually stimulating. The struggle was getting my head back into the day-to-day issues that my clients had.

Is that why you transitioned from private practice to in-house counsel?

Yes. It was quite fortuitous. Cummins had been my client for about 15 years. I wasn’t really looking, but it just so happened that the general counsel (GC) got a promotion. I was working with her a lot when I was trying to build a new practice dealing with the BRIC countries and the IP issues more than the day-to-day litigation issues in the United States. At any rate, she was promoted and wondered if I might be interested in the GC job at Cummins.

The more I talked with folks at Cummins, the more it seemed like an evolution of my career rather than a revolution in my career. At Cummins as a GC, I get a lot of different issues on my plate. I get policy issues, the kind that I dealt with in government but from the client side. I get lots of exposure to government officials, but from the customer or stakeholder side. I get a broad range of legal issues that are very intellectually stimulating, many of which have never come across anybody’s desk before. It stimulates my intellectual curiosity to learn new things at work every week.

What I found as I started to investigate going in-house at this level was that I could indeed have the same kind of intellectual stimulation that I was missing in private practice, but also work on the continued development in-house of building great teams. There were a number of important factors in deciding to move in-house. It was a company that I knew. I knew the people with whom I worked. It was a company whose values I respect related to social justice, education, and the environment. It was a company that was global, so I could continue to work on global problems for the company as well as domestic problems.

Would you agree that it’s rare for an IP attorney to become a GC?

Yes, although I clearly am not the first. Bob Armitage became the general counsel of Eli Lilly. It’s still not the norm, but I do think as intellectual property becomes more important to the overall value proposition of companies, it won’t be as rare going forward. IP lawyers have to be very much a part of the business of the company and where it is going not just today but five or 10 years down the road in order to help protect and give value to the company.

It’s that integral relationship with the overall company strategy that allows IP lawyers to move to places like the GC’s office, because a lot of what I do is not just legal work. It’s true integration of law and business, and law and policy, and law and strategy that’s making it more efficient and possible for the businesses to achieve their business results. You have to be a quick learner and student to be able to handle all the other things in addition to the intellectual property, but it’s going to be more common.

Do you see the use of outside counsel growing or remaining constant or declining in the near future?

I personally think it will remain constant and grow depending on what happens with the economy for the following reasons. I believe that my outside counsel are extensions of our resources. My outside counsel are a part of my team and the way I deliver good, quality, consistent work to the businesses. They’re an integral part of how we deliver services, and I don’t think that will change. There are lots of things that outside counsel bring to the table that we just don’t have time to become specialists on in-house. Only a portion of what we do is what I would call straight legal work. A lot of our value comes from being able to advise the business on the integration between business and law. It’s not straight practicing law, it is also how to flex law in with your business goals. Because we’re also doing that, we don’t have time to do as much straight legal work, and that’s why outside counsel has always been an integral part of being able to deliver services to the business.

Have you received any unsolicited material from outside counsel who were not doing work for you that was so good and helpful that it made you think, “Um, I wish I had thought of that when I was in private practice?”

The answer to that question is no, and it’s interesting because I actually spend time telling the outside counsel how they’re not doing enough to figure out what our business is. One of the things that I would do with my clients is to figure out where the industry is going or what the specific problems are and then tell them how, even if you don’t know you have this problem now, you’re going to have this problem because everybody else in the industry is having it. We’re a publicly traded company, so a lot of what we’re doing is in our annual reports, in our sustainability report, and few people doing the work for us read it. They don’t think of ways they can help before we’ve thought of it ourselves.

If outside counsel came to you with something along those lines whom you wanted to work with, would it make you think, “Hmm, maybe we should consider giving them a piece of business”?

I would eat it up with a spoon. Now that I’ve been talking to outside counsel about this for a couple of years, they’re doing better in terms of being more creative and suggesting ways in which they can help the in-house lawyers. They’re doing a better job of being creative about it, but I certainly am interested. I continue to be interested in folks who have enough creativity to think of new tools they can bring to us and the fortitude to get that past the initial, “You know, that’s another thing I have to read today.”

What piece of advice would you give to an IP attorney who’s trying to climb up the ladder to GC?

I would say make your value known in the IP area and outside. Inside the organization, don’t just stick to intellectual property. It’s making the value of that to the business known more broadly. The first step is, “I’m not just an IP lawyer, I’m your business partner.” Then, the second would be to make sure that you’re continuing to demonstrate your expertise internally and externally: having a bigger market than just your internal company, demonstrating that credibility and capacity outside your organization in the trade associations by reading, writing, and speaking.

What would you say is the best piece of advice that you received?

The best piece of advice I ever got was to get out of my comfort zone. When Ralph Boer, then the CEO at Foley, wanted to promote me to the chair of the department, I said no. At the time, I had been the chair of IP litigation practice for about three years. I felt like we were really hitting our stride and doing some great things. I wanted to continue in that success. I explained to him why I wanted to stay, and he said, “Yeah, but you already know how to do that. You need to get out of your comfort zone and do something different. You know, you need to stretch yourself.” Now I tell people all the time: “You have to get out of your comfort zone because that’s the only way you’re going to grow.” That’s the advice I cherish the most.

It sounds like you live like that, so I’m going to ask you, what’s next for you when you get comfortable at Cummins?

That’s a question that my CEO has asked me, too: what next? I don’t know that I’ve discovered what’s next for me yet.

Endnotes

1. See Hughes XIII, 86 F.3d 1566 (Fed. Cir. 1996).