Amin Talati Upadhye, LLP
Amin Talati Upadhye may previously have lacked dedicated patent professionals and resources, but that all changed at the tail end of 2014, when cutting-edge life sciences litigators Shashank Upadhye
and Joseph Cwik
came on board. They have cannily manoeuvred the firm into the high-end pharmaceutical litigation space, attracting headlines for their stellar work on behalf of generic drug manufacturers and biotechnology companies along the way. Cwik, for example, recently acted as lead trial counsel for Gnosis against Merck, achieving the first successful invalidation of pharmaceutical patents via inter partes
review – a ruling which was affirmed by the Federal Circuit. “Joe is a great person and a great lawyer, who displays wisdom and excellent judgement.” Upadhye, meanwhile, has been working his magic in Paragraph IV litigations on behalf of Alkem against several originators. The firm chose a resolute helmsman for its IP practice in Upadhye: he has served as head of intellectual property at no fewer than three leading pharmaceutical companies. He always has clever and innovative strategies up his sleeve and brings profound regulatory and commercial expertise to the table.
Banner & Witcoff, Ltd
Storied boutique Banner & Witcoff offers one of the most well-rounded patent services in the country; it files well over 1,000 US utility patents annually, handles a large volume of important litigations and post-grant proceedings, and maintains the country’s leading design patent procurement service. With respect to the Chicago team, clients shine a spotlight on its contentious proficiency, drawing particular attention to classy operators Christopher Renk
and Timothy Meece
. Renk’s recent activities include actions for Nike – in one case, he obtained a preliminary injunction for the sports giant after a Chinese enterprise infringed its design patents. “Chris is intelligent, friendly and practical; he understands business and can clearly explain complicated patent issues to non-IP folks.” “Tim Meece provides amazingly thorough legal opinions which reflect his structured understanding of clients’ businesses, and which aid decision making. He provides excellent insight on multi-jurisdictional strategies and can think outside the box as a commercial adviser.” Of late, his work has included a crucial victory at the Federal Circuit for Lexmark International concerning the scope of the first sale doctrine under patent law; the case is now pending before the Supreme Court.
Bartlit Beck Herman Palenchar & Scott
The following peer recommendation concisely summarises the verdict on litigation supremo Bartlit Beck Herman Palenchar & Scott: “It is a wonderful group of people, full of customer-focused, smart, trial and litigation-savvy lawyers who are great on their feet and who have a lot of experience in the courtroom. They find a way to win and focus all their efforts on pursuing it. There is a clear difference between Bartlit Beck, which is a trial firm, and others, which are litigation firms.” Philip Beck
needs no introduction as one of the nation’s top trial and appellate lawyers in any discipline. He and Chris Lind
– who was born and raised in the state – have the most diverse commercial contentious practices of any individuals in the IAM Patent 1000
and as a result their presentation skills are honed to the sharpest point. For Adam Mortara
, patent litigation is a primary focus; he puts in artful performances in complex, high-value life sciences suits, but is equally comfortable duking it out over electrical and computer technologies.
Brinks Gilson & Lione
This year marks the centenary of “Chicago IP stalwart” and top US boutique Brinks Gilson & Lione. With deep reservoirs of prosecution and litigation experience to tap into, the illustrious ensemble furnishes clients with trenchant solutions to just about any patent problem. A robust bench of trial lawyers is one of the set’s most notable features: six of its individuals are featured in this edition of the IAM Patent 1000
, which puts it in joint-first place with national powerhouses Sidley Austin and Winston & Strawn. Newly listed this year is seasoned trial lawyer Dominic Zanfardino
, who has lately been doing great things for Cook Medical; for instance, he got all asserted patents in actions brought by LifePort Sciences dismissed and secured summary judgment against another NPE, Endotach. Zanfardino’s style is understated yet authoritative, and he has a gift for clearly and eloquently articulating the key issues in a case. He joins IAM Patent 1000
regulars James Sobieraj
, Ralph Gabric
, Gary Ropski
, Laura Beth Miller
and William Frankel
, all of whom take on central roles in must-win cases with consummate professionalism. The president of the firm, Sobieraj sets an example in the aggressive pursuit of client-defined wins. An awesome orator who instantly connects with juries, litigation group co-chair Gabric is also persuasive before the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO) and has handled plenty of inter partes
review proceedings lately. Ropski has even more experience than Gabric – four decades, as opposed to three – and is a veteran of triple-digit litigations spanning all areas of intellectual property; he can always see the wood through the trees and works tirelessly to bring about commercial resolutions to conflicts. A high-energy operator, Miller shines in rocket-docket jurisdictions and at the International Trade Commission (ITC). She has a real enthusiasm for technology, but never gets side-tracked from her mission of conveying succinct and compelling arguments. Frankel has a dynamic practice that encompasses the protection, enforcement and monetisation of all IP rights. Unlike some competitors with successful litigation practices, Brinks has not turned a blind eye to prosecution and continues to file patents and advise on strategy with striking proficiency. “Joseph Hetz
is one of the best prosecutors in the market. He is really focused on what is commercially important for clients and is not just about getting patents issued – he does a great job understanding the business strategy and meeting the needs of that with the protection he gets.” Information technology looms large in his practice. Displaying similar traits to Hetz, but in the mechanical arts, is former aerospace engineer Andrew Stover
. He is a great person to get in at the ground level, as he brings strategic insights that can set a portfolio moving in the right direction.
DLA Piper LLP (US)
DLA Piper’s Chicago group is more than capable of functioning independently, but it readily exploits the firm’s abundant international resources effectively in multi-front technology wars. Bucking the downward trend in US patent infringement litigation, Paul Steadman
and his local crew continue to be exceptionally busy, coming out on top for leading Asian car companies in skirmishes with aggressive plaintiffs. A nationally recognised first-chair trial lawyer, Steadman makes litigation choices that are always strategic and is renowned for his “cleverly thought-out tactics”. An expert in materials science and the electrical arts, he also earns credit for his “stand-out technical skills”. Although he is closely engaged in the automotive sector, Steadman offers a bespoke service and captains a litigation team which has enabled him to quickly diversify the practice into other industries. When Steadman and Matthew Satchwell
join forces, great things inevitably happen. Satchwell focuses on the end game from the moment a case is filed, which means he is thoroughly prepared for trial, but equally well placed to end disputes with a business resolution before trial. Having filed inter partes
reviews within a week of them becoming available under the America Invents Act, Steadman and Satchwell are comfortable in the post-grant arena; their trial strategies make the most judicious use of all available options.
Drinker Biddle & Reath LLP
Acquitting itself with distinction in all areas of patent practice, Drinker Biddle & Reath dispenses business-oriented advice that resonates with rights holders. “Patrick Kelleher
and Brian Rupp
always keep the commercial goal in mind and don’t just litigate for the sake of it. They understand their role perfectly and see litigation as a means to an end.” Kelleher is a trial lawyer with a global client base of innovators in an array of industries, from electronics to medical devices and energy; Rupp has a more varied practice which blends litigation with plentiful procurement and licensing activities. He makes an invaluable contribution to what is a very vigorous transactional practice, anchored in Chicago by Ira Kalina
. A full-time IP and technology deal maker, Kalina helps to shape the patent policies of some of the most sophisticated and IP-sensitive companies; he is an excellent ally to have on side when making strategic investments.
A one-of-a-kind firm, Global IP Law Group demonstrates brilliance in all aspects of patent monetisation. Although its sales activity has picked up within the past year, the set continues its evolution from a sales-focused operation to a superbly well-rounded licensing and strategic counselling practice; for those looking to get value out of their patents in the way that works best for their business, Global IP identifies the most effective paths to prosperity. Managing partner Steven Steger
has held multiple senior in-house positions during his career and has a 360-degree perspective on the commercial side of the practice; he can analyse a portfolio and help clients take the optimal decisions at a management level. Steger founded the unique ensemble with David Berten
, a former Kirkland & Ellis associate and Bartlit Beck partner who brings serious litigation prowess to the mix. Berten shot to prominence after taking the lead on the monetisation of Nortel’s patent portfolio and its subsequent record-breaking sale; he has been in hot demand ever since. Steger and Berten have surrounded themselves with a cohort of exceptional strategists. “C Graham Gerst
is incredibly smart and has posted some major results, getting big money for his clients from portfolio sales.” Like Berten, he knows exactly what to do in a contentious setting and negotiating favourable litigation settlements is one of his specialities. A former director of Ocean Tomo’s patent transactions group, licensing mastermind Ragnar Olson
is another partner with outstanding credentials.
Debuting in the IAM Patent 1000
this year, Green, Griffith & Borg-Breen is a specialist biopharmaceutical outfit that has been making serious waves in the market. Collectively, its three founding partners have several decades of experience representing drug companies – on both the generic and branded sides – in Hatch-Waxman litigation, and there has been no let-up for them recently; for example, the team has been representing Horizon Therapeutics in a series of litigations against defendant generic companies. The firm also has some interesting non-Hatch-Waxman cases on its books and is acting for Clarus Therapeutics in one of the last pending patent interferences. As for the Green Griffith modus operandi
, the group is tirelessly committed to helping patrons succeed; rather than just picking something up when the time comes to file a lawsuit, its practitioners are closely involved with clients as strategic partners – albeit partners who happen to be excellent at litigation. The senior figure in the group, Robert F Green
is a “terrific strategist, a force in the courtroom and a great lawyer who is at the top of his game”.
Greenberg Traurig LLP
Greenberg Traurig’s lawyers are given the flexibility to build their practices as they see fit and to devise alternative billing arrangements that make the best sense for their clients; a uniquely tailored service is the result, which is unusual in a firm of this size. In Chicago, Herbert Finn
and Richard Harris
have built a diverse practice which encompasses litigation, prosecution and transactions in the areas of patent, trademark and copyright law, and can therefore soothe any IP headache. However, patent litigation is their predominant focus – in this domain they have lately been representing a leading Korean electronics company in arbitration and several inter partes
reviews. Harris serves as co-chair of both the Chicago IP and technology division and the firm’s global patent litigation practice.
Jenner & Block
“Jenner & Block is an excellent and well-established Chicago name” which “accomplishes great things in patent infringement cases”. Serving an enviable line-up of prestigious clients, the formidable contentious shop is a key port of call when wins in complex cases involving cutting-edge technology are a necessity. Making headlines, the set recently emerged victorious from a high-profile CRISPR gene-editing dispute when it secured a PTAB ruling in favour of the Broad Institute of MIT and Harvard. The group’s creativity and technical acumen also lend themselves well to litigation in the area of biologic drugs and biosimilars, in which it is intimately involved. Always seeing things through to the end, Jenner & Block has also “had a ton of appellate success lately”. Co-chair of the patent litigation and counselling practice, Bradford Lyerla
litigates with tact and guile. His constructive approach resonates with judges and juries: he does not go into the courtroom seeking to criticise and attack the other side, but rather presents a positive case that he believes in and wants to talk about. Leadership is also provided by Lyerla’s co-chair – and managing partner – Terrence Truax
. Not just an outstanding patent litigator, he personifies the ensemble’s strong sense of public service and gives much to the legal and Chicago communities in a variety of roles. Reginald Hill
also generously dedicates much of his time to activities outside the law; within his legal practice, he has been developing a fine track record in litigation in the automotive sector in recent years. The former AT&T and Motorola engineer is the real deal, in terms of his technical grounding.
With the market for major competitor-on-competitor patent infringement litigation looking healthy, Jones Day is firing on all cylinders right now. It has one of the best-rounded toolkits for tackling mission-critical disputes: in particular, it draws on a deep bench of first-chair trial lawyers, extensive post-grant experience, a redoubtable appellate group and international resources. Peers in Chicago have wonderful things to say about the firm: “Collegial and collaborative, it is open to sharing ideas and is always good to work with.” “It stays focused and plays things straight – you can really take its word.” Blue-chip patrons are equally impressed: “Jones Day lawyers are completely focused on the needs of the customer, and not their own. Their bills are always very clean and, for the top-notch representation they deliver, reasonable too.” There is no shortage of praise for individual IAM Patent 1000
inductees, either. “David Witcoff
is a fantastic problem solver and a humble, responsive and flexible lawyer who cooperates well with others. In addition, he is extremely sharp on technical issues, patent law and litigation strategy.” He is currently defending Kyocera in a case involving abstruse damages and technical complexities. “William Devitt
has an interesting background and previously worked as an engineer for the Central Intelligence Agency. Within the law, he is very good at nurturing long-term client relationships – people tend to stay loyal to him.” “John Marlott
is technically and legally excellent and someone you can rely on for a variety of actions. He does really well positioning cases to meet whatever commercial objectives you have.” Lately, he has acted for IBM and SAS Institute in several software-related post-grant proceedings. Sasha Mayergoyz
is a veritable font of insight and analysis on appellate matters, but – like colleagues Witcoff, Devitt and Marlott – is also an accomplished patent litigator in any forum. He recently obtained favourable results for Google at the PTAB.
Katten Muchin Rosenman LLP
Katten’s tenacious patent litigation team has experience in weighty cases across virtually every type of technology and all relevant forums. With Chicago lawyers Brian Sodikoff
and Stephen Benson
leading from the frontline, it has been expanding its activities and client base in the life sciences of late. This sector has always been a stronghold for the firm and as a result of its experience, the group can provide much-needed certainty on timing of legal spend and level of overall spend for any particular case – as well as quality representation. Sodikoff has a keen appreciation of the commercial and regulatory underpinnings of the pharmaceutical industry. He captains the national patent litigation division, which judiciously draws on Katten’s wider dispute resolution resources to give patrons all the firepower they need. Benson’s finely honed presentation skills shine through in both his written and oral advocacy. Outside of the biopharmaceutical area, Katten has proven particularly effective at picking holes in the arguments of patent assertion entities, and has a refined yet assertive approach when getting rights holders quickly and painlessly out of NPE litigation.
“Kirkland & Ellis has a lot of intelligent, skilful and aggressive lawyers, and the depth of its bench is really impressive – it can field litigation teams which are strong from top to bottom. You see a very polished product coming out of the firm.” Although the Chicago contingent has trimmed down in recent years, it remains home to some true heavyweights of US patent litigation and is still one of the best-resourced groups in the city, if not the country. Worldwide management committee member James Hurst
is “certainly a source of strength for the firm”. “With his solid patent law pedigree, he has enhanced Kirkland’s credibility since he moved there. He isn’t one of those scorched-earth types – his approach is very strategic.” The name of this American College of Trial Lawyers fellow reverberates in the life sciences, a field in which he has long set litigation benchmarks; however, his razor-sharp trial skills translate well in any kind of patent case. Vociferous praise sets Kenneth R Adamo
apart as another best-in-class advocate. “Ken practised patent litigation well before it came into vogue, and has unrivalled experience and a rare depth of substantive patent law knowledge. He takes the time to get to know your business and goals, and will protect your interests zealously. He also does a good job training and developing new talent for the next generation of representation for his clients – a lot of senior lawyers take their eye off that particular ball, but not Ken.” Among his peers, he is lauded as a “laser-focused, high-energy lawyer who does an awful lot of work without ever getting flustered”. In hotly contested inter partes
review proceedings, he recently recorded success for IBM and Capital One against Intellectual Ventures. Russell Levine
elicits similarly effusive endorsements: “A top-notch litigator with an ability to connect with business people as well as engineers, he is proactive with his strategic recommendations and is always thinking a few steps ahead of opposing counsel”. “He thinks and acts like a business owner, and it is truly comforting knowing that he is always looking out for your bottom line.” Gianni Cutri
and Bryan S Hales
are additional touchpoints for leaders of the technology world. Cutri is well accustomed to fighting on all fronts – in district courts, the ITC, the PTAB and the Federal Circuit – and always strikes the right tone. A medical device maven, Hales has a contentious perspective which is informed by his licensing know-how. A dedicated set of transactional specialists means that Kirkland is as good at monetising patents as it is at enforcing them. Seth Traxler
is a crack negotiator who leverages litigation experience to broker strategic deals designed to stand the test of time. He co-chairs the global technology and IP transactions group, in which fellow Chicagoans Jeffery S Norman
and Gregg Kirchhoefer
are also leading lights. For Norman, billion-dollar acquisitions and buy-outs are all in a day’s work; while Kirchhoefer is an outsourcing guru.
Latham & Watkins LLP
“Latham & Watkins gets people from multiple offices together in a way that is seamless and fields a really strong team for every case.” The set packs a serious punch in life sciences litigation, particularly when Chicago’s Kenneth Schuler
is in the ring. “Ken is an honest-to-goodness pharmaceutical patent litigator who has been doing hard-core cases for years. He is an indefatigable, smart and analytical guy who is fun to work with – excellent in all respects.” The global IP litigation co-chair recently represented Mallinckrodt Pharmaceuticals as patent owner in 11 inter partes
review proceedings, winning complete victories in 10 of them while enabling an asserted claim to survive in the eleventh. He achieved this feat alongside “highly focused, ferocious litigator” David Callahan
– “one of the best in Chicago”. “David has military experience on his résumé and brings a lot of tenacity to his cases.” Medical devices suits are a forte for him, but the former army captain is equally adept at getting to grips with the technical minutiae whatever the field.
Leydig Voit & Mayer Ltd
“Leydig Voit & Mayer is first rate in patent practice,” enthuse peers. “It is full of really smart folks with lots of excellent training.” The client feedback echoes these assertions: “It is an intellectual thought partner on IP strategy and has deep domain experts who can quickly understand your technology and the nuances of competition in your market. When significant commercial decisions need to be made, they lay out the issues clearly and help you get to the right answer.” Its service capability is comprehensive and nothing comes through the door which has not been seen or handled before – be it high-stakes litigation or prosecution, counselling or transactional briefs. Most notably, the firm has become one of the pre-eminent post-grant specialists in Chicago; technical dexterity, profound USPTO experience and the leadership of John Kilyk
have seen to that. A guru on interference law, Kilyk took to the America Invents Act post-grant mechanisms like a duck to water. “Wonderfully strategic and excellent with clients, John is an amazing lawyer with an encyclopaedic knowledge of chemistry and life sciences patents”, and “outstanding problem-solving and negotiation skills”. In addition to post-grant proceedings, he oversees patent applications for prestigious organisations, including the National Institutes of Health. The firm exhibits a real breadth of strategic prosecution nous and Charles H Mottier
is another lawyer capable of getting watertight patents on deck for key clients, Caterpillar being a prime example. “Level-headed and totally trustworthy, Chip is a lawyer who will never let you down.” Of late he has been expanding the portfolio of Fresenius Medical Care North America – and conducting significant due diligence for the company – together with John Conklin
. Conklin is one of several versatile patent lawyers who add tangible value in many different ways. Listed alongside him on the IAM Patent 1000
litigation table are other protean professionals including John Augustyn
, Michael Hartmann
and Bruce Gagala
. Augustyn – who makes his debut in the guide this year – is a fountain of wisdom on all aspects of patent practice and is therefore a popular pick for those seeking an opinion. Born in Germany and a fluent German speaker, Hartmann has been in the game for over four decades and, among US lawyers, has a rare degree of percipience when it comes to European patent law and proceedings. Gagala is an ace on all things chemistry.
Marshall, Gerstein & Borun is alert and attentive to clients’ every conceivable prosecution need and has a broad technical bench that sets it apart not only locally, but also nationwide. Taking centre stage is one of the best biotechnology and life sciences groups in the business, led by “brilliant strategic lawyer” Heather Kissling
. She has fostered a collaborative ethos, with partners Jeffrey Sharp
, Li-Hsien Rin-Laures
, Katherine Neville
and Michael Muczynski
constantly riffing off one another to present clients with the best possible options. “Jeff Sharp is not just a very accomplished attorney; he works cooperatively and won’t argue over trivial things, which is refreshing. You can really take him at his word.” Doctor of medicine Rin-Laures draws on deep regulatory expertise in her practice, but also understands the business side of things, having served as general counsel at a public biotechnology company. A deft global portfolio manager, immunology PhD Neville is a repository of trust for big pharma, start-ups and non-profits alike; while Muczynski helms the chemical sciences section with a sure hand. One striking thing about this group – as well as the firm more broadly – is its unrivalled sense of continuity, as one peer observes: “Marshall Gerstein is not a place where people come and go quickly – this makes it reliable and very effective at building long-term relationships with clients.” The inspiring leadership of individuals such as Kissling, Muczynski and prosecution chief Jeremy Kriegel
is instrumental in this regard. Kriegal hails from a mechanical engineering background, as does Michael Furmanek
; they carry the firm’s name effectively outside the life sciences domain in diverse sectors such as automotive and clean energy. Prosecution is by no means the organisation’s only speciality – it also litigates at a high level. As an example, it filed the fourth ever biosimilar case under the Biologics Price Competition and Innovation Act, acting on behalf of loyal patron Amgen. Kevin Flowers
and John Labbe
are in charge of this brief, but are also teaming up with Mark Izraelewicz
on another biosimilar case for Amgen, this time against AbbVie. Benjamin Horton
, who captains the litigation team, focuses his efforts on high-technology lawsuits and is an adroit performer before district courts and the PTAB. Marshall Gerstein’s capabilities in the transactional space are similarly impressive. Simplifying daunting, almost cost-prohibitive approaches to market for clients and staying the course in protracted negotiations, Pamela Cox
stands out as a leading transactional light. “Her ability to forcefully protect your rights while quickly and nimbly resolving the most complex issues in negotiations is remarkable.” As section chair, she does a wonderful job translating lessons learned into a better practice structure. Passionate about finding and executing integrated solutions, Robert Gerstein
is another lodestar for companies looking to seal deals.
Mayer Brown LLP
With a 100-strong team of IP practitioners spread across its US, European and Asian offices, Mayer Brown is geared up to provide truly global IP solutions. Astutely pooling inter-office resources, it undertakes substantial litigation in numerous technical fields; the Chicago contingent, however, is most renowned for its dexterity in pharmaceutical patent litigation. Joseph Mahoney
, who co-chairs the IP practice and the life sciences division, recently mounted a successful defence for two Orange Book listed patents for Mallinckrodt Pharmaceuticals in USPTO re-examination proceedings. He has also been engaged in some significant transactional projects and recently linked up with a Frankfurt-based colleague to architect a major biotechnology licensing and collaboration deal for Nestlé Health Science. James Ferguson
, meanwhile, has been acting for Gilead Pharmaceuticals in a complex licensing dispute. The American College of Trial Lawyers fellow maintains a wide-ranging commercial, IP and white-collar crime practice; “he has a lot of experience and skill in district court litigation” and, whatever case he is working on, “can immediately zero in on the key issues”.
McAndrews, Held & Malloy’s practitioners understand what it takes to win patent infringement actions in any forum – it never cuts corners in the planning stages, is quick to manoeuvre when circumstances change and is constantly thinking about closing arguments at trial. For a single-office boutique of its size, it has a virtually unrivalled track record in ground-breaking cases and is constantly adding to its résumé; for example, in 2016 it earned a Supreme Court victory on behalf of Stryker against Zimmer, which helped to shape the law on enhanced damages and wilfulness. In the past year, representation of Abbott Laboratories has also been a big part of the firm’s story – this activity has included US and foreign lawsuits, as well as USPTO proceedings. At the forefront of the Abbott relationship is Edward Mas, a veteran trial and appellate lawyer who really stands in the shoes of clients in order to drive business resolutions to their disputes. President Robert Surrette is a key part of the team servicing Stryker. He is entering the prime of his career and his practice is skyrocketing on both the litigation and transactional fronts. Also moving up the field is Wil Rao, “an attorney you can rely on in difficult situations”. “Wil always takes into account your business goals when discussing or recommending an approach to a dispute, which may or may not include litigation.” He has been working for one of the world’s premier consumer electronics companies together with Christopher Carani, a thought leader on design patents. For everyone in this dynamic team of litigators, founding partner, chairman and expert trial lawyer Timothy Malloy serves as a mentor. McAndrews, Held & Malloy has seen more action at the PTAB, per capita, than the vast majority of its competitors. Post-grant genius Herbert Hart is primarily responsible for growing this practice; he is steeped in post-grant know-how – going back to his interference days – and recently authored the amicus brief for the American Intellectual Property Law Association in Cuozzo Speed Technologies v Lee concerning the PTAB’s use of the broadest reasonable interpretation standard for claim construction in America Invents Act trial proceedings. Although the firm is famed for its contentious might, it also has impressive prosecution credentials and the portfolios it obtains and manages are of a consistently high quality.
McDermott Will & Emery
Pharmaceutical and medical device patent litigation is a trump card for McDermott Will & Emery. With William Gaede out on the West Coast, Thomas Steindler in Washington DC, Sarah Chapin Columbia in Boston and Jeffrey Gargano
in Chicago, the firm has a redoubtable national crew of first-chair life sciences litigators to put at the disposal of its clients. “A prominent figure in the abbreviated new drug application (ANDA) space”, Gargano is “a real workhorse and a brilliant trial guy”. “People love partnering with him – he is outgoing and has a great sense of humour.” He has been doing great things for Biomet (now Zimmer Biomet) against NPE Bonutti Skeletal Innovations, executing an aggressive strategy to bring about a favourable settlement. There is definitely no shortage of talent in other technical areas in Chicago, though. Charles McMahon
has been instrumental in building momentum in the firm’s ITC Section 337 practice, in tandem with Washington DC-based Jay Reiziss. The duo collaborate exceptionally well and recently handled an investigation for Bestway; together they have also gone out to bat for ZTE in various district court and PTAB litigations. Another mechanical and electrical aficionado is Brent Hawkins
, who recently secured a total victory for SynapSense and Panduit in a case relating to the monitoring and visualisation of sensor technology. Margaret Duncan
covers life sciences and high-technology matters and patent, trademark and copyright litigation, and is the set’s resident all-rounder. McDermott Will & Emery can meaningfully support innovators in many different ways and is unique as a general practice which provides a robust prosecution and portfolio management offering to match its litigation service. IAM Patent 1000
newcomer and former Cisco Systems web developer Ahsan Shaikh
prosecutes computer technology and software patents with aplomb. His clever application of analytics enables him to identify which arguments, post-Alice
, are most effective before different examiners, making his advice gold dust to software companies.
McDonnell Boehnen Hulbert & Berghoff’s compelling life sciences offering spans the gamut of contentious and non-contentious services. Kevin Noonan
and Donald Zuhn
are the anchors of its top biotechnology and pharmaceutical prosecution operation; Noonan is a vastly experienced molecular biologist and an authoritative commentator on all the latest developments in pharmaceutical patent law. He and Zuhn co-author the Patent Docs blog, which is dedicated to providing rights holders and other market stakeholders with up-to-the-minute news and insight on relevant cases and legal developments. The pair work hand in glove with commercially attuned senior advocates Paul Berghoff
and Daniel Boehnen
, who spearhead a growing biosimilar litigation practice. The dividing line between prosecutor and litigator is even less distinct on the electrical side of the practice; recommended in the IAM Patent 1000
for prosecution, Bradley Hulbert
and Marcus Thymian
are also adept courtroom litigators. Chair of the litigation and appellate practices, Leif Sigmond
has lately enjoyed a string of successes in the software and hardware realms.
Morgan Lewis & Bockius LLP
Morgan Lewis & Bockius’s contentious patent practice received a shot in the arm when Michael Abernathy
joined from K&L Gates in February 2016. Capitalising on his new firm’s exemplary technical capabilities, Abernathy has enjoyed an extraordinarily busy period since, working on a major piece of ITC litigation for a top US bioscience and medical products company, increasing headcount in Chicago and expanding the firm’s sphere of influence in the life sciences field. Peers lavishly applaud his wonderful trial skills, calling him a “tireless lawyer who leaves no stone unturned”. “Clients get a first-rate service as a result of his ability to focus and work extremely hard. He is a down-to-earth guy with impressive analytical skills and he does thorough, excellent work.”
Nixon Peabody LLP
Nixon Peabody’s patent practice is all-encompassing: the firm is replete with technical specialists – many of whom possess in-house experience – who collectively cover all scientific disciplines. It also has plenty of senior litigators on hand to mastermind enforcement campaigns. For the Chicago band, strategic prosecution is a particular focus. A counsellor par excellence
, Janet Garetto
is great at establishing connections both in the boardroom and in the lab, and excels at creating IP value. She builds long-term relationships with her clients, including one of the world’s top chemical companies.
Perkins Coie LLP
With almost 250 specialised professionals in its prosecution, litigation and transactional groups, Perkins Coie is among the most pre-eminent full-service patent providers in the United States. The litigation team is particularly prolific and is a constant presence in courtrooms across the nation, as well as at the ITC. Chicago-based Timothy Carroll
is the driving force behind the national practice. He resolves disputes – as opposed to merely fighting them – and supplements his knowledge of law and technology with an intensely strategic mind-set. Michael Warnecke
served as patent litigation co-chair until 2015 and then moved into an of counsel role in 2016. He has proved his mettle on countless patent infringement and trade secret cases and is a wellspring of insight on litigation tactics.
Quinn Emanuel Urquhart & Sullivan LLP
No stranger to headline-grabbing patent cases, leading contentious player Quinn Emanuel has a sizeable set of high-calibre trial lawyers with a vast selection of attack plans at the ready and continues to outperform many of its peers in the US legal market. A key player in Chicago – and co-chair of the firm’s national IP litigation practice – David Nelson
has a particularly ardent following among marquee technology companies. “Solid in all facets of litigation, he is a really superb trial lawyer for electrical engineering cases.” Among his most noteworthy recent successes was a complete victory for Alcatel-Lucent against noted NPE Acacia, in the wake of which Acacia’s CEO resigned; Nelson’s subsequent motion for attorneys’ fees was also approved.
Rakoczy Molino Mazzochi Siwik LLP
Rakoczy Molino Mazzochi Siwik is unique as a firm dedicated to servicing the IP litigation and counselling needs of the pharmaceutical industry. “It can bring a lot of efficiency to the table, being more focused and leanly set up than many of its contemporaries.” Its litigators “are very convincing and credible in the courtroom” – none more so than William Rakoczy
, “a king of life sciences litigation”. “Bill is a pragmatic and level-headed advocate. He is a consummate litigator, but also a good business attorney.”
Ropes & Gray may be in the process of spinning off its patent rights management and prosecution practice, but it remains a force to be reckoned with in patent litigation. The chair of its national IP litigation division is Chicago’s Richard T McCaulley Jr, who has a pristine service record representing pharmaceutical and medical device companies. “Rick is a very talented litigator and an excellent storyteller who can take complex subject matter and present it in an interesting and elegant fashion. He has all the qualities that make an effective oral advocate and is a likeable guy who has grown his firm’s presence in Chicago markedly.”
Sidley Austin LLP
“Sidley Austin’s approach to litigation is steady and level-headed – its lawyers completely understand the complexities of the issues they face and are very strategic in how they handle cases. They bring a lot of judgement and good sense to the table, and vigorously protect clients in a uniquely intelligent way.” Its roster of first-chair trial lawyers – both in Chicago and nationwide – is stacked, but in addition, “it can throw a lot of weight behind a case, with its highly experienced second and third-chair attorneys”. Providing intelligent leadership to the national IP practice is “visionary” David Pritikin
, a “wonderful lawyer who cuts through immaterial points to get right to the heart of a matter”. He recently prevailed at the Federal Circuit for Amgen in one of the first pieces of biosimilar litigation in the United States. Big names on his team include Richard Cederoth
, a “super-smart lawyer who is brilliant in every sense”; “beautiful writer” William Baumgartner
; Chicago IP head and American College of Trial Lawyers fellow Thomas Rein
; and pharmaceutical and medical device whizz Lisa Schneider
. Schneider makes a valuable contribution to the success of the firm’s illustrious appellate and Supreme Court practice, which is chaired by Constantine Trela
. Sidley aligns itself as a key commercial partner to rights holders and its deal-making skills are as refined as its trial skills; a dedicated national transactions group, co-led by Jeffrey Rothstein
, has enjoyed a record year in terms of deal volume and overall productivity. Rothstein maximises the potential of Sidley’s data privacy and competition law groups – among others – to sew up the most complicated big-ticket transactions with minimum fuss. He recently represented Monsanto in the sale of commercial rights from its alfalfa research collaboration with Forage Genetics International.
Steptoe & Johnson LLP
Steptoe & Johnson’s Chicago office is home to several nationally recognised patent trial lawyers and is a nerve centre of the firm’s life sciences litigation practice. A master of Hatch-Waxman cases, Thomas Filarski
is the most famous member of the gang. “He is great at boiling down technical concepts and principles and explaining them in common English. Clients find him to be really affable and easy to relate to.” Although pharmaceutical briefs are his bread and butter, “he has diverse expertise and is great on non-pharma stuff – his knowledge across the IP piste is tremendous and not all that common”. John Abramic
also knows the pharmaceutical and medical device industries inside out but – like Filarski – also crosses into mechanical and electrical areas without breaking a sweat. A seasoned pro of many textbook-worthy cross-examinations, James Nuttall
litigates with a business eye; he has also won commercially vital cases in many different sectors.
Taft Stettinius & Hollister LLP
Patent litigation in the life sciences sector is a focal point for the robust IP group at Taft. Generic drug companies love the firm’s combination of cutting-edge Hatch-Waxman and Biologics Price Competition and Innovation Act competency with reasonable rates, and repeatedly make beelines to Stephen Auten
and Richard Ruzich
when they need to get results. At any one time, Auten – who commands the pharmaceutical litigation practice – is litigating cases over generic versions of myriad drugs; as a result, and through his extensive blogging activities, he keeps abreast of industry trends and developments in the most meaningful way. Ruzich is another esteemed and assured ANDA litigator, but also stands ready to counsel clients strategically at any stage of their business.
Industry-defining competitor-on-competitor litigation is the name of the game for Winston & Strawn, which competes in the big leagues. It is among the leading firms in the country both in terms of the volume of trial work undertaken and as a result of the number of victories it has notched up; marquee companies trust it when the stakes are at their highest. Pharmaceutical patent litigation is one of its strongest suits and George Lombardi
has “distinguished himself as a leader” in this area of practice. “A classic trial lawyer, he is strategically and tactically strong and brilliant on his feet. He is a formidable adversary and when you face him, you know you will be dealing with the best possible arguments.” He recently represented five generic drug manufacturers, including Teva and Apotex, challenging the validity of patents covering a blood clot preventative treatment; the PTAB instituted an inter partes
review of the patents and ruled that all 53 claims in question were unpatentable as obvious. Maureen Rurka
and Samuel Park
also played central roles on this brief, and earn their debuts in the IAM Patent 1000
this year thanks to their sterling work and positive endorsements. “Maureen has developed into a great courtroom trial lawyer and is a rising star to keep your eye on.” Another highlight for Park was a summary judgment win for Celltrion Healthcare, which invalidated the patent protecting the active ingredient in Johnson & Johnson’s blockbuster Remicade drug – one of the first cases litigated under the Biologics Price Competition and Innovation Act. Michael Nutter
is yet another Hatch-Waxman and biosimilar litigation devotee who has enjoyed multiple victories in the last year. For example, in August 2016 he won a case for Actavis (now Teva) against Eli Lilly on its home turf in Indiana; this was a nine-day trial involving a slew of experts and Nutter put on a masterclass in cross-examination. Ample talent on the high-technology side can also be found in the Chicago office. IP co-chair Michael Brody
is a trailblazer in the field of telecommunications – he acts for Comcast and Cox Communications – and an authority in many other technical fields. He has been instrumental in building Winston & Strawn’s West Coast presence and also maintains a desk in Silicon Valley. Communications is likewise one of Jonathan Retsky
’s fortes; he has been acting for ARRIS Group, as petitioner, in inter partes
review proceedings. Not just an experienced trial lawyer, Retsky also procures patents, handles transactional assignments and issues opinions on non-infringement and invalidity. Overseeing the litigation department in his role as firm co-chairman, luminary Dan Webb
lends sagacity to any case.