Intellectual Property Law

Podcast: Larry Maxham

Welcome to Intangible Assets: The IP Law Section Podcast, a podcast for & about the California Lawyers Association Intellectual Property Law Section, hosted by David Lizerbram. Today’s guest is Lawrence A. Maxham, founder of The Maxham Law Firm in San Diego. Larry has been practicing patent and trademark law for more than fifty years and has been involved with the IP Law Section for many of those years, so I hope you’ll find his insights over the evolution of IP law and the IP Law Section as fascinating as I did.

If you want to follow up with Larry, please go to https://www.maxhamfirm.com/

If you’re interested in joining the Intellectual Property Law Section of the California Lawyers Association, visit calawyers.org/joinip

Finally, if you want to send us an email about the show, you can send it to IPPodcast@CALawyers.org – we look forward to hearing from you.

Lawrence Maxham
Click here for podcast transcript

David Lizerbram: Hello, and thanks for tuning in to Intangible Assets, a podcast by the Intellectual Property Law Section of the California Lawyers Association. I’m your host, David Lizerbram.

David Lizerbram: The California Lawyers Association is the bar association for all California attorneys. Our mission is to promote excellence, diversity, and inclusion, in the legal profession, and fairness in the administration of justice and the rule of law. In this episode, I’ll be talking to Lawrence A. Maxham, the founder of the San Diego patent law firm, the Maxham Firm.

David Lizerbram: Larry has been practicing patent and trademark law for more than 50 years. That’s five-O, and has been involved with the IP Law Section for many of those years, so I hope you’ll find his insights over the evolution of IP law and the IP Law Section as fascinating as I did. Larry Maxham, welcome to the podcast.

Larry Maxham: Thank you very much, David.

David Lizerbram: So, let’s kind of start at the beginning. Where did you grow up?

Larry Maxham: Northern Vermont, on a little dairy farm, dirt road, one-room school, that sort of thing.

David Lizerbram: Okay. What did you like to do when you were a kid?

Larry Maxham: I read a lot because I was essentially an only child. I have two older brothers, and a younger brother, and younger sister, but they’re all distant in years, so I was pretty much on my own. And my father died when I was nine, so … And the neighbors were all working farm kids, mostly at a significant distance, so I was pretty much alone.

David Lizerbram: Did you know any attorneys?

Larry Maxham: One of the first attorneys I ever met was me. Really, we didn’t have any in Vermont in the sticks, and I don’t think I met any when I was in college, so really, I didn’t know any.

David Lizerbram: What did you intend to do when you went to college?

Larry Maxham: I liked the idea of technology, and from a basic, simple, high school in northern Vermont, you don’t have much of any technology. We did have physics class and geometry class, but we didn’t have any of the wonderful things that kids in the city-type schools have, like in Newton, Mass, or something like that, where they have all kinds of advantages. So, I didn’t know much about it, but it seemed like something that interested me.

David Lizerbram: As you were getting out of college, what were you thinking about doing?

Larry Maxham: That’s a great question, because I was in electronic engineering at Tufts University in the Boston area, and I knew that I liked technology, but I didn’t want to be necessarily confined to a really tiny bit of technology and become the world’s greatest expert. I liked technology more in general.

Larry Maxham: So, the idea, from a friend, came to me of doing patent law. He didn’t know what it was. I didn’t know what it was. Well, I did interview at Western Electric, the patent attorneys there, they have some of the first attorneys I ever met, in the autumn of my senior year of college, and that was kind of on a lark, you might say. And I also did some interviewing on the way down to New York in electronic … in possibly getting a job in the future, because I had three years in the Navy ahead of me.

David Lizerbram: What years were this? What year did you graduate from college?

Larry Maxham: A long time ago, 1960, so I’m approaching the 60th year. I’m in the 60th year, and next year will be the 60th anniversary. So, strangely enough, this is just 15 years after World War II, but at that time, it seemed like forever in the past. And then looking back I realize that, wow, things were so different then.

Larry Maxham: So, I spent three years in the Navy thinking about, “Do I want to be an engineer? Do I want to be a lawyer?” And again, I didn’t know anything about it, but it all just seemed better to go to law school from the Navy, and that’s what I did.

David Lizerbram: And what did you do in the Navy?

Larry Maxham: The Navy put me through college, and so I came out as an officer, a regular line officer, same kind of commission you get from the academy. And I was on a World War II destroyer, a little, old, World War II destroyer, out of San Diego. And I finished as operations officer, which was third in command on the ship at that time. Of course, you only have maybe 12 or 14 officers. It’s not a large ship.

David Lizerbram: And was that your first opportunity to come to California?

Larry Maxham: Yes. Yes, it was.

David Lizerbram: And you enjoyed it?

Larry Maxham: Yeah. I fell in love with San Diego, and even though in those days … You can imagine, 1960 to ’63, it was a very different city than it is now. But, I really loved it and I was thinking for 18 years in Boston in law school and practice, of how can I get back here.

David Lizerbram: Okay. So, you went back to Boston for law school?

Larry Maxham: I did.

David Lizerbram: Where’d you go?

Larry Maxham: Boston College Law School.

David Lizerbram: Okay. And did you focus on patent or intellectual property?

Larry Maxham: They did not have those options in those days, so I just focused on getting a law degree, because there was nothing … At that time, only, I think, the Georgetown, and George Washington, might have been the only law schools that had any kind of intellectual property classes.

David Lizerbram: Okay. So, you got your law degree, and what was your first job out of law school?

Larry Maxham: I had done some part-time work in senior year for a lawyer in the Boston area, and he said he didn’t have a full-time job for me at the end. He recommended me to a friend. The friend turned out to be … He had been in Boston since World War II. He had trained, at that point, about half the patent attorneys in Boston. You know, we’re talking about 1966, and so I joined that firm, and I was there 15 years. And it became [Weingarten 00:05:50], Maxham, and [Shurgan 00:05:52] in 1970, or thereabouts.

David Lizerbram: And you were doing patent from the beginning?

Larry Maxham: Patent, trademark, copyright. I consider myself a throwback patent attorney, which is, I didn’t specialize in one kind of IP. We did all IP, and we didn’t have the word, IP, in those days.

David Lizerbram: Well, what did you call it?

Larry Maxham: Patent attorneys.

David Lizerbram: Okay.

Larry Maxham: And everybody knew what a patent attorney was. But then, we realized in the late ’70s that, “Oh my gosh. People think that patent attorneys only do patent law,” so then we came up with the idea of intellectual property, and we’ve been stuck with that ever since.

David Lizerbram: How do you feel about that term?

Larry Maxham: Well, it seems to work, but I do get people coming in and say, “I want to get a trademark, and I think I’d like to get some intellectual property, too,” so that confuses people.

David Lizerbram: Sure. Of course. Yeah. We all have those conversations.

Larry Maxham: I’m sure we do.

David Lizerbram: So, what were some of the interesting things you were working on as you kind of got started with patent law?

Larry Maxham: Well, you know, everything under the sun, basically. As the Supreme Court, and I guess the Court of Appeals, says, “Everything under the sun is patentable if it is made by man,” type of thing, which is not true now, but that’s beside the point.

Larry Maxham: I did all kinds of stuff. I did heart pacers. I did little electrical power cubes. That was the name of the company called, Power Cube, and there are some of those sitting on the moon right now. They were little one-inch cubes that dissipated a lot of power and worked very well with the space program.

Larry Maxham: So, there are all kinds of sensors, distance and rotational sensors. My mentor and senior partner was a co-founder of a company in that business. So, I did quite a lot of work in that sense. You can sense something down to a thousandth of a degree in rotation, for example. It was fascinating.

David Lizerbram: And were most of the companies local? Did you get to know the clients?

Larry Maxham: Yes. I did get to know the clients. They were pretty much local, in the Boston area at that point. I did develop some international work starting with a trip to Europe in 1971, but I did not have to generate clients. The senior partner knew everybody in Boston who was in technology, and he’s the kind of guy who, when you’re on an airplane between Los Angeles and Boston, would know half the people on the plane by the time he got there. I would typically not know my seat mate, so a different kind of person.

Larry Maxham: But, he generated the business. I didn’t have to do it, so it was a whole different kind of thing. And they were all corporate, very, very few individual inventors in those days in Boston. That was the beginning of the high tech. Route 128 was high tech, and followed by Stanford on the west coast. MIT and 128 was where all the high tech created in the ’50s and ’60s.

David Lizerbram: What was your experience working with the patent office at that time, compared to now?

Larry Maxham: Well, that’s a prime question. I started in ’66, so took my first trip to the patent office in, probably end of the summer in ’66. I flew down with one of the partners of the firm, and he showed me what was going on, and in those days, it was in the 14th Street, the old Commerce Building. The patent office was just kind of a vast, open space, and you had cubicles, cubicles in a sense, but they were floor-to-ceiling cubicles for the examiners. So, he showed me how to interview examiners and how to do searching.

Larry Maxham: And next time I went down, which was probably a year or two later, the patent office had moved. They had gone across the river to Virginia, Crystal City. And I was flabbergasted, because I had just had my head down, working, and I wasn’t even paying any attention. So, that was kind of interesting, and it’s a whole different thing.

Larry Maxham: But, we went through a period of, in I guess the late ’70s, when the official actions were hand-written in a bingo-sheet-type form. They would fill in 102, and write out a few words, then fill in 103, and write out a few words, and they were ridiculed by many in the New York Times. You know, here we have the bastion of technology and advancement, and they were doing hand-written official actions. And that really went on for a few years, not a lot, but a few years, before they actually started printing it.

Larry Maxham: And now, to make a big jump forward, they now have examiners who are told, “You’ve got to write out everything,” so I get a 28-page official action where everything is handled piece by piece, one by one. I’m doing an appeal right now, which is becoming voluminous because of that, whereas I used to have one or two prior art pieces for a obviousness rejection, and they would do that in three, or four, or five, or seven pages, so it’s really changed.

David Lizerbram: And how does that change how you communicate and work with the clients?

Larry Maxham: It complicates it because I have to explain more, and maybe they understand less, I think, because, well, the examiners really try to lay it out still in patent legal lingo, and so, it’s not as simple to report anymore. I just have to ask them to look at the prior art, and say, “Tell me what the difference is between each piece of prior art and what they think the invention is,” and then I have to kind of create from there.

David Lizerbram: Hm. Do you think the clients have become more sophisticated in understanding these areas? Or …

Larry Maxham: I do not. I’ve not seen that clients, in general, are any more understanding of what obviousness or novelty or any of those other things mean, than they did before. And in San Diego, there’s a lot more individual and startup-type things than there was in my 15 years in Boston, so it’s a whole different ballgame here. So, you have to start from scratch with most-

David Lizerbram: Well, that’s why they need you.

Larry Maxham: Well, I hope they miss them.

David Lizerbram: We all do. So, okay. Let’s get to San Diego. What brought you to the west coast?

Larry Maxham: Well, as I said, I fell in love with San Diego, and I applied to one west coast, which was in Oregon, law school, and three in Boston. I got accepted in all, but Harvard, which in those days, they didn’t like technology people, so they stated that very specifically in their books, their manuals, whatever it is. All right. So, anyway, I didn’t get in.

Larry Maxham: Since all my relatives and everybody I knew was in the Boston area, or New England, I decided to go there, but with the thought that I would really like to be in San Diego. So, I spent 18 years thinking about that.

David Lizerbram: And how did you make the move?

Larry Maxham: Well, I had already had the personal divorce. Then came the professional divorce. And I figured that, “Now is the least connection that I will ever have to Boston,” still a strong connection, but it’s the weakest. This is the time to do it. So, I took a trip out here in, say, March or so, of 1981, and interviewed from San Francisco on down to San Diego. I had gotten to know all these people over the years.

David Lizerbram: And you got a job with a firm here?

Larry Maxham: I did. I got an offer in San Francisco, I got an offer in San Diego, but I knew how much I loved San Diego. San Francisco is a great city, but I’m not sure I would enjoy living there.

David Lizerbram: And how long did you stay with the firm before you went on your own? Or was there other work in between?

Larry Maxham: I joined the firm here in September of ’81, and then things got a little uncomfortable. So, four of us left in the middle of 1984, and formed what was then, Baker, Maxham, Callan, and Jester.

David Lizerbram: So, you’ve worked at different sizes of firms. You’ve been-

Larry Maxham: Well, that’s a size … As they say, “Size matters.” I don’t know. I’ve never been in a big firm. The largest in San Diego ever, was 13 lawyers. The largest ever in Boston, was 9. So, I don’t have any concept of the politics, or any of the other aspects of working in a two, or three, or four hundred-person firm, or even a 25 or 50-person firm.

David Lizerbram: But, even compared to having several partners, versus solo, is there one that you prefer, or just kind of worked out the way it did?

Larry Maxham: Like everything, it’s not all good, and not all bad. When I had partners, I used to envision, “What would it be like to be a sole practitioner?” I didn’t like what it looked like. But when the rest of them all left, I’m a sole practitioner. I don’t have anybody to talk to, and that’s the biggest part. I really enjoy talking intellectual property matters with other attorneys, you know, in the next office, across the hall office, and that doesn’t exist. That is probably the biggest drawback. But I don’t have to ask anybody for permission to do anything, so that’s another aspect of, a plus, for a solo practice.

David Lizerbram: So, that kind of leads me gently in to the IP Section, another group of intellectual property attorneys that you get to interact with. How did you first get involve with the IP Section?

Larry Maxham: My mentor in Boston was always one who was involved in the profession, and he, at one point, became president of the Boston Patent Law Association, which by the way, is still the Boston Patent Law Association, and did not change it to IP Law. I was elected president of the Boston Patent Law Association, and never served, because I left just before I was going to be involved as president. So, I’ve always been involved, and I joined the San Diego Patent Law Association when I got here. And as soon as I found out that there was a state program after I had passed the state bar, I joined that, and then I decided to become part of the executive committee, which I did in late ’80s. You can look in the regular magazine to see when it was. I keep looking it up saying, “When was it, actually?” But I think it was around late ’88 or thereabouts.

Larry Maxham: And I was out of the room when they were asking for people to be chair coming up. I always wanted to be chair, but the thought didn’t ever occur when I was there. I guess I’d gone to the restroom, or something. So, I served out my three years. But, I’ve been going to the meetings ever since. I’ve missed very few over the years of the annual institute.

David Lizerbram: What was the group like when you joined?

Larry Maxham: Well, the same as it is now. It’s a group of nice people. I really have always enjoyed the practice of patent, trademark, intellectual property, law, because they’re nice people, and I have always learned something. Every time I go to a meeting, I learn something almost invariably helps me with a client matter within the next three weeks. And that’s been true whether I go to international meetings, or national meetings, or local meetings. It’s uncanny how that happens.

David Lizerbram: Well, that’s quite a good advertisement for the IP Section. I’m sure everybody’s going to be happy to hear that. So, kind of fast-forwarding now, just looking with the perspective of having practiced what we now call, intellectual property law for 50-some years, how would you say that it’s changed? I know you’ve mentioned the clients are different, because in California it’s more start-up oriented than what you were exposed to in Boston, but in terms of the practice of law, the process of going through, you know, working through a matter with a client, what would you say have been some of the big changes, positive, negative, or otherwise?

Larry Maxham: Well, the biggest changes have come from the Court of Appeals for the Federal circuit, Congress, and the Supreme Court of the United States, and we do not now write patent applications in any way, shape, or form, the way we wrote them 35 years ago. The court has essentially said, “What we were saying for about a hundred years was fine.” They say, “Ah-ha. Got you. This is invalid because of what you say.” And it has really caused us to be so cognizant of what the courts are saying, and then this is what I learn when go to meetings like this. The ALPLA, or the county bar, or the state bar IP Section meetings. I’m getting reinforced from those things that I have seen now on the internet, since I get those kind of reports every day, patent and trademark reports from people that are on top of it all the time.

Larry Maxham: And so, I try to keep aware, so that I don’t make the mistakes that somebody got caught with in the latest court case, and says, “Oh, well, what you used to say was good. It is not any longer good.” So, that has changed a lot, and it has accelerated.

Larry Maxham: The patent office changes have accelerated. In the late ’70s, there was a guy named, [Rosenberg 00:19:05], who was in charge of rule changes. He did it himself, and he had one or two a year. Now they have one or two a day, or a week, and they have a whole department. I was talking with the director, Mr. Iancu, at one of the state bar meetings recently, and he said … I asked him how many people were in that department now, of essentially keeping up with changes and in proposing changes, and I think there was some number like 27 or 30, or some incredible number. Mr. Rosenberg used to do it all himself, and he had plenty of time to be an examiner at the same time.

David Lizerbram: Well, that’s quite a change. Well, thank you so much for taking your time with us, Larry. Is there anything I didn’t cover, or anything else you wanted to share with the members of the section?

Larry Maxham: Yes. People have been asking me for about 20 years now, when I plan to retire, and I say, “You know, with different legal and technical challenges, two or three or four every single day, why on earth would I think about retiring? It keeps the mind active. There’s always something. There’s always examiners that say, “How could he possibly do that?” But it’s a different challenge every single day. And I have no intention of retiring because not, what would I do, but what a mental challenge this is.

David Lizerbram: Absolutely. Well, thank you for sharing that and for spending your time, and for those members who are listening, who want to connect with Larry, we will put the link to his website and so forth on here, and thanks a lot for your time.

Larry Maxham: You’re welcome.

David Lizerbram: Thank you for listening to Intangible Assets, a podcast by the Intellectual Property Law Section of the California Lawyers Association. The 44th Annual Intellectual Property Law Section Institute is coming up soon. It’s scheduled for November 14th through 16th, 2019. The theme this year is, IP Without Borders, and fittingly, it’s the first time the event will be held outside of California. So, I hope you’ll join us this November in fabulous Las Vegas, Nevada, for the Intellectual Property Law Section’s signature annual event. For more info, or to sign up, go to calawyers.org/ipevents.

David Lizerbram: We also have several MCLE webinars coming up, including one on Attribution, Integrity, and the US Copyright Office. For more information about the webinars, you can go to the same website, which again is, calawyers.org/ipevents.

David Lizerbram: And if you’re interested in joining the Intellectual Property Law Section of the California Lawyers Association, visit calawyers.org/joinip. That’s calawyers.org/joinip.

David Lizerbram: Finally, if you want to send us an email about the show, you can send it to ippodcast@calawyers.org. We look forward to hearing from you, and I’m looking forward to speaking with you next time on Intangible Assets.

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