United States: Wisconsin

Firms

1
Andrus Intellectual Property Law LLP
Foley & Lardner LLP
Michael Best & Friedrich LLP
Perkins Coie LLP
2
Boyle Fredrickson SC
Casimir Jones SC
DeWitt Ross & Stevens SC
Quarles & Brady LLP
Andrus Intellectual Property Law LLP
IP boutique Andrus acquits itself with distinction on both sides of the contentious/non-contentious divide. Adopting a partner-led approach to legal work and client service, the firm turns out a product that meets the highest standards of quality, accuracy and commerciality. The team delivers fantastic results at a reassuringly sensitive price point and as a result, consistently entices instructions that might otherwise go to some full-service Chicago outfit. On the prosecution front, the practice has seen steady growth in the past year as existing clients send more work from more divisions its way. Industrial conglomerate the Marmon Group is one entity that has increasingly capitalised on all that lawyers such as Peter Holsen and Benjamin Imhoff have to offer. “Exceptional” mechanical and electro-mechanical ace Holsen “understands complex inventions quickly and works with the greatest efficiency”. “He always suggests courses of action that are in the commercial best interests of the client.” A medical technology maestro, IAM Patent 1000 debutant Imhoff gets a similarly glowing write up: “You can rely on Ben to handle your most complex matters and get great outcomes; he proves to be particularly adept at navigating US Patent and Trademark Office (USPTO) objections under Section 101 of Title 35 of the United States Code.” Also at home in the medical device field is head of prosecution Joseph Kuborn, who has been partnering with Imhoff to guide General Electric through the patenting process to obtain watertight protection for its biomedical inventions. The firm is lucky to have Tambryn VanHeyningen as the helmswoman of a buzzing life sciences practice, which plays an important role protecting chemical, pharmaceutical and biotechnological innovations for the Wisconsin Alumni Research Foundation. “Tambryn is a brilliant prosecutor who thinks not only about patent scope, but also paths to successful commercialisation. She sees round corners and also really cares about her clients as people. In addition, her invoices are some of the easiest to deal with.” Meanwhile, leading the line on litigation is Aaron Olejniczak, who has been on the money in recent appearances before the USPTO’s Patent Trial and Appeal Board (PTAB). Reflecting on his experience, one source comments: “Aaron has yet to display a weakness – and I don’t ever expect him to do so; he is proficient in every respect, and incredibly responsive, too.”
Boyle Fredrickson SC
A popular name in the Badger State, Boyle Fredrickson renders a comprehensive suite of patent services to a diverse assortment of innovators. The firm has one of the largest teams and abundant resources of which to take advantage; the individuals listed in the IAM Patent 1000 alone could see to all the counselling, prosecution, litigation and transactional needs of the firm’s clients. Founding partner James Boyle is a litigator who takes pains to align trial strategies with the commercial concerns of clients, while “Andrew McConnell has seen just about everything in patent prosecution and is an extremely client-focused professional with superb interpersonal skills”. Charles Leeck also has a refined bedside manner, which serves him well in his role as a trusted adviser to research institutions and emerging biopharmaceutical and chemical companies; a seasoned pro in all areas of intellectual property, Michael Gratz is a strong voice in Wisconsin’s IP milieu – he writes and lectures extensively and has occupied leadership roles in multiple local IP associations.
Casimir Jones SC
Casimir Jones is a compact Madison-based boutique warmly recommended for the hands-on, personalised guidance it provides. All Casimir attorneys have either an advanced technical degree or experience in industry or academia – or some combination thereof – they have walked in the shoes of inventors and business executives and know what they are looking to get out of an interaction, which makes for a seamless and efficient service. Life sciences and medical device sage David Casimir has prosecuted over 1,000 patent applications – experience which has given him a gimlet eye for quality and an ability to neatly navigate around any obstacle the USPTO might throw up. However, far from being just a prosecutor, he has done just about everything that can be done with a patent once granted, which lends his advice a much-valued practical edge.
DeWitt Ross & Stevens SC
DeWitt Ross & Stevens allows its partners an uncommon degree of autonomy to mould their service – and the fee structures attending it – around the individual needs of clients; cookie-cutter solutions are out and tailormade advice is in. The diversity of the firm’s client base makes this all the more impressive and gives lawyers such as Joseph Miotke ample opportunity to showcase their range and versatility. Patent litigator, deal broker, commercial counsellor – Miotke is all these things, as well as a true community leader in Wisconsin who undertakes extensive extra-curricular work relating to innovation and entrepreneurship. Attentive to his clients’ every need, “Joe works in a timely fashion and is always available – you never have to ask twice for something, he just delivers”. In the past 12 months, much of his time has been devoted to negotiating IP-dense deals, often between international energy companies. “He is a great resource when it comes to sales, licensing and joint development agreements to which intellectual property is of fundamental importance; he has a deep tactical playbook to get you to the end goal.” In the context of freedom to operate studies, “he is methodical and extremely thorough, and explains everything in plain English so you can understand the practical implications of the advice”. Another name for the address book is Charles Sara, who focuses his attention on prosecution and transactions in the biotechnology, pharmaceutical, food and nutrition and agriculture areas. A teacher and scientist before entering the law, he knows how to work with people and with technology – and get the best out of both.
Foley & Lardner LLP
Foley & Lardner has everything that discerning rights holders now look for; an efficient and cost-effective prosecution practice; a résumé replete with inter partes, covered business method and post-grant review wins; and a team of high-flying litigators that do not flinch when everything is on the line. The organisation has many specialists on its roster, but also cultivates superbly well-rounded professionals. In this regard, Milwaukee residents Jeffrey Gundersen and Joseph Ziebert come to mind: IP department vice chair Gundersen acquires, enforces and monetises patents with the deftest touch and is a go-to lawyer for some of Wisconsin’s premiere businesses. He is currently acting for Douglas Dynamics, the leading manufacturer of snow and ice control gear in America, in connection with its $206 million acquisition of Dejana Truck & Utility Equipment. Ziebert, who has previously chaired the firm’s electronics practice, can manage all of a company’s IP needs and is often sought out by clients to fill a quasi-general counsel position; his commercial sensibility makes him perfect for the role. He is also a key member of a hand-picked inter-office unit delivering top-drawer services to Broadcom. Strategic counselling is the forte of electrical engineer Scott Anderson, a patent attorney whom clients like to bring in at the ideation stage – and keep around for the long haul.
Michael Best & Friedrich LLP
A robust national outfit and “stand-out” firm in Wisconsin, Michael Best & Friedrich is a major player in intellectual property. Maintaining a division of nearly 150 IP professionals – many of whom have advanced degrees and business experience in the technology world – the firm can answer any patent question with confidence and poise. Home to a number of the set’s top lawyers, the Milwaukee office is an epicentre of mechanical and electro-mechanical expertise. Take prosecution maven Daniel Jones and litigator Jonathan Margolies, for example: Jones knows his way around an engine as well as anybody and is well-versed in areas such as hydraulics. An innovator when it comes to customer service – he has previously won a Client Choice Award – he also consistently satisfies the demands of technology companies even as they seek more for less from their outside patent counsel. Margolies has carved out multimillion-dollar wins for trailer manufacturers and fought acrimonious international disputes over agricultural machinery. For companies looking to get and keep products on the shelf – and competitors off – Billie Jean Smith fits the bill perfectly with her blend of patent and trademark protection and enforcement expertise. Flying the firm’s flag in Waukesha, Richard Kaiser crafts portfolios like an artisan, drawing on his rich utility and design patent experience. Running things in Madison is Donald Best, an indefatigable litigator with an outstanding performance history across all areas of intellectual property.
Perkins Coie LLP
A powerhouse home to more than 225 patent professionals, Perkins Coie is one of the top choices for intellectual property in the United States – and is unique among general practice firms given its strength in depth in litigation and prosecution and in high-tech and the life sciences. The Madison office is home to a triumvirate of formidable litigators in Christopher Hanewicz, Michelle Umberger and John Skilton; each is comfortable running the most complex suits independently, but they regularly collaborate in cases of vital commercial importance. All three are held in the highest esteem by both peers and competitors alike: Hanewicz is a “tremendous litigator” and a “smart, energetic advocate who puts on a very credible case”; Umberger “does a terrific job simplifying the most complex matters – the hallmark of a talented lawyer”; while Skilton is hailed as an elder statesman with incredible experience. All three cross technical divides without breaking a sweat.
Quarles & Brady LLP
Wisconsin-headquartered AmLaw 200 firm Quarles & Brady cuts a dash in patent litigation with lawyers who advocate zealously for their clients, but do so efficiently and with business objectives in mind. Former national IP litigation chair Anthony Tomaselli knows how bring a jury around to his cause and has earned many eight and nine-figure verdicts for clients. Another lawyer not to be trifled with is David Cross; by readying each case for trial from the get-go and maintaining a laser focus on his most compelling arguments, he puts himself in the best position possible should a dispute go the distance or be brought to an early settlement. Switching gears, Quarles & Brady also plays host to a standout life sciences prosecution practice, the engines of which are Milwaukee’s Jean Baker and Madison’s Bennett Berson. Baker is a thought leader on the topics of transgenic organisms and recombinant DNA technology, while Berson is an authority on the subject of stem cells.

Individuals: prosecution

Scott D Anderson - Foley & Lardner LLP
Jean Baker - Quarles & Brady LLP
Bennett J Berson - Quarles & Brady LLP
James F Boyle - Boyle Fredrickson SC
David A Casimir - Casimir Jones SC
Jeffrey S Gundersen - Foley & Lardner LLP
Peter T Holsen - Andrus Intellectual Property Law LLP
Benjamin R Imhoff - Andrus Intellectual Property Law LLP
Daniel S Jones - Michael Best & Friedrich LLP
Richard Kaiser - Michael Best & Friedrich LLP
Joseph D Kuborn - Andrus Intellectual Property Law LLP
Charles L Leeck - Boyle Fredrickson SC
Andrew S McConnell - Boyle Fredrickson SC
Joseph T Miotke - DeWitt Ross & Stevens SC
Charles Sara - DeWitt Ross & Stevens SC
Rebecca B Scarr - McNeill Baur
Billie Jean Smith - Michael Best & Friedrich LLP
Tambryn K VanHeyningen - Andrus Intellectual Property Law LLP
Joseph Ziebert - Foley & Lardner LLP

Individuals: litigation

Donald Best - Michael Best & Friedrich LLP
James F Boyle - Boyle Fredrickson SC
David R Cross - Quarles & Brady LLP
Michael J Gratz - Boyle Fredrickson SC
Christopher G Hanewicz - Perkins Coie LLP
David G Hanson - Reinhart Boerner Van Deuren SC
Jonathan H Margolies - Michael Best & Friedrich LLP
Andrew S McConnell - Boyle Fredrickson SC
Joseph T Miotke - DeWitt Ross & Stevens SC
Aaron T Olejniczak - Andrus Intellectual Property Law LLP
John Skilton - Perkins Coie LLP
Anthony A Tomaselli - Quarles & Brady LLP
Michelle Umberger - Perkins Coie LLP
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Issue 90