Alston & Bird LLP
On the West Coast, Alston & Bird runs a vibrant biotechnology patent prosecution practice through two outstanding lawyers: Romy Celli
and Joe Liebeschuetz
. Celli has the magic touch when it comes to the strategic development of global portfolios and, with her rigorous analytical mind, is quick to identify validity and enforceability issues, as well as appropriate solutions. Genetics PhD Liebeschuetz has all the qualities you would expect of a top patent drafter in the United States, but also has extensive expertise in European oppositions. He has lately been offering a tailored prosecution service to mid-sized biotech company Seattle Genetics; private clinical-stage biotherapeutics entity NoNO Inc; and late-stage clinical company Prothena, which is looking to alter the playing field in the fight against progressive diseases. Jonathan Gordon
is another key asset in California and a touchpoint for high-technology innovators engaging in IP-driven transactions. “Jon’s foresight and experience allow you to mitigate your exposure and operate without fear of competitors. He can think through all possible scenarios that could potentially develop in the future and hedge for them, and is a brilliant negotiator.” Alston & Bird also has patent litigators stationed in the Golden State and can offer a comprehensive suite of patent services to patrons in a way that few general practice firms can.
Arnold & Porter Kaye Scholer LLP
Both Arnold & Porter and Kaye Scholer successfully gained traction on the West Coast in recent years, but their January 2017 merger creates a new player a couple of rungs up the ladder from either. Particularly given the biotechnology expertise of both legacy firms, the union made a whole lot of sense. Brilliant Kaye Scholer life sciences litigators Michael Malecek
and Deborah Fishman
, for example, now have support from ace strategic biopharmaceutical counsellor Ginger Dreger
from the Arnold & Porter side; and, of course, it goes both ways. Malecek, the former chief advocacy counsel at Silicon Valley biotechnology company Affymetrix, is a celebrated litigator with abundant jury trial experience: “He has an in-house perspective, but a non-traditional one. At Affy, he wasn’t just hiring external counsel and watching them from the sidelines – he basically was the company’s primary litigator. He is extremely articulate and has a natural ability for explaining things clearly and simply; you can imagine the value of that to a judge and jury faced with the most complex technology.” “He fields a small team and works within budget while getting great results. He understands his clients’ businesses extremely well, knows how to try a case and remains calm under the intense pressure that a trial puts on attorneys. Also a pleasure to cooperate with, he is a true star.” Though best known for his life sciences prowess, he has become a leading force in the tech space and is masterminding a slew of cases for Google concerning its core search and advertising functions. Fellow contentious maven Fishman has played the litigation game through to the end many times, so when she picks up a new matter, she is immediately thinking about its trial positioning – she inspires confidence in clients with her astute management of a case’s risk profile. Hired as replacement counsel, she got a great result for Elan Pharmaceuticals in the form of a summary judgment and dismissal with prejudice against the Alzheimer’s Institute of America – as well the highest ‘exceptional case’ fee award since the Supreme Court's Octane
decisions. Like Malecek, Arnold & Porter trial lawyer Michael Berta
has been providing contentious counsel to Google; the dynamic hardware, software and internet expert will help his new colleagues to diversify their practice out from the life sciences, while also adding to his own pharmaceutical litigation skill set. Working in close cooperation with the litigation section, transactional specialist Thomas Magnani
is a miracle worker at the settlement negotiation table. He has a robust standalone deal practice too, and is regularly called upon by both technology industry leaders and emerging companies to sew up strategic business agreements.
Blakely Sokoloff Taylor & Zafman LLP
It takes a lot to stand out for quality in an IP legal market as competitive as California’s, but everybody toasts the name of Blakely Sokoloff Taylor & Zafman. The boutique provides one of the most assured patent protection and counselling services of any outfit native to the state and also delivers crisp results in post-grant and litigation settings. A strong bench makes it difficult to pick out individuals, but James Scheller
of the Silicon Valley office is one of the most seasoned heads on the roster. Having spent a considerable portion of his career litigating, he knows how to make a patent enforceable; rather than obtaining patents for the sake of it, he creates real commercial value for his electronic, computer and internet clients.
Bozicevic Field & Francis LLP
Bozicevic Field & Francis “continues to be stellar” in the biotechnology patent prosecution space and earns its first inclusion in the IAM Patent 1000
this year. Founding partners Karl Bozicevic
and Carol Francis
both attract warm praise. “Karl’s business-oriented approach is much appreciated by biotechnology start-ups and he is one of the most knowledgeable patent attorneys in Silicon Valley.” “Down to all exceptions and oddities, Carol knows domestic and global prosecution. She is always keenly aware of long-term goals and partners closely with clients.”
Cooley’s life sciences practice is among the best in the country, particularly for transactions, and its industry-focused unit headed by Barbara Kosacz
is a compelling option for large public companies and emerging enterprises alike. As a negotiator and counsellor, Kosacz “gets to the crux of any matter” and wastes no time identifying and implementing the most strategic collaborations for her clients. Adored by the C-suite, she has a shrewd business brain to complement her legal chops. Robert Jones
is another practitioner with an all-seeing corporate eye: he has dedicated his professional life to helping biotechnology companies to advance their commercial interests and is a thought leader on licensing. Fellow industry savant Marya Postner
also focuses on transactions; with a background in prosecution and counselling, and outstanding technical credentials, she is always in a strong negotiating position. In June 2016 the firm deepened its life sciences squad – and its Palo Alto prosecution capabilities – with the recruitment of “excellent prosecutor” and “leading woman in the tech field” Mika Reiner Mayer
, who joined from Morrison & Foerster. Patent litigation is another bastion of strength for Cooley and its group, which includes San Franciscans Thomas Friel
and Michael Rhodes
, and Palo Alto-based Heidi Keefe
. “Deft on his feet in trial”, Friel is a “terrific first-chair litigator” and a “salt-of-the-earth type who can relate to and communicate with just about anybody”. Co-chair of the internet and privacy and data protection sections, Rhodes maintains one of the broadest litigation practices of anyone here, the common thread within which is his representation of leading technology companies. “Heidi Keefe knows patent law and is very dynamic in the courtroom and highly effective in a bench trial. She keeps a lot of top clients happy.” Constantly busy in district courts, she has also developed flourishing Patent Trial and Appeal Board (PTAB) and Federal Circuit practices.
Covington & Burling LLP
Covington has deep domain expertise in the life sciences and shining transactional lights stationed on both the East and West Coasts. Abundant commercial insight is provided by San Francisco residents Amy Toro
and James Snipes
, both of whom know what it takes to get global strategic alliances over the line for pharmaceutical and biotechnology companies. Outside of the life sciences, Toro demonstrates a deft touch on the commercialisation of standard-essential patents (SEPs); Snipes handles high-technology matters with finesse too, and has carved a niche in the esoteric field of art law. The firm also has a sizeable set of high-calibre trial lawyers ready to deploy from either coast. The top name on the fight card is Silicon Valley’s Robert Haslam
, an American College of Trial Lawyers fellow celebrated for his sure-footed courtroom performances in high-rolling patent and IP infringement disputes. Fellow senior counsel Alan Blankenheimer
, based in Los Angeles, relishes sweeping multi-patent cases with plenty at stake, adding value with his knowledge of the intersection between IP and antitrust law. A former co-chair of the patent litigation group, Robert Fram
has a sophisticated take on licensing and SEP disputes. Kurt Calia
also litigates with aplomb, leveraging his patent prosecution know-how to tease out the specific strengths and weaknesses of the patents he is defending or attacking.
“Dentons gives a business more options with its vast catalogue of IP professionals and resources – it covers all the bases.” Recommended in the IAM Patent 1000
for both prosecution and litigation, the firm runs a highly integrated IP practice in California. Its blended contentious and non-contentious capabilities help to explain why it has been so busy in the post-grant space of late; by way of example, a team led by Kevin Greenleaf
acted for Ford Global Technologies in filing one of the largest-ever collections of inter partes
reviews from a single company – and successfully represented the automotive industry leader in challenging several patents. A prolific writer and speaker on post-grant topics, Greenleaf keeps his ear to the ground in terms of developments in the practice, and patent law and policy more broadly; his percipient counsel is in hot demand. The litigation and prosecution groups also boast consistent records of success, thanks to the efforts of Robert Kramer
and Stephanie Seidman
respectively. Co-chair of the patent litigation section, Kramer makes his debut in the guide for 2017, having enjoyed a banner 12 months in the courtroom. Among other wins, he scored a total victory for Nistica in a bet-the-farm case – one of the largest in the Northern District of California – knocking out four of the six patents in suit on summary judgment and winning on the remaining patents at trial. Gifted biotechnologist Seidman “works on every patent application as if the invention were her own – a rare and sought-after attribute. Extremely well educated, she also has remarkable practical experience”. Straddling the contentious and prosecution groups, Renzo Rocchegiani
is a versatile asset for patrons; he has lately led litigation teams to success, while at the same time running international filing programmes for several large companies. As a former examiner and a clerk at the then Board of Patent Appeals and Interferences, he has a 360-degree view of patent protection and enforcement.
DLA Piper LLP
Although it doesn’t represent patent assertion entities or frequently take on many local counsel roles, DLA Piper undertakes a massive amount of patent litigation; it is such a popular option as it has a deeper technical bench than virtually all other general practices, as well as a glittering line-up of lead litigators with extensive trial experience. A near-unparalleled international footprint gives it a further edge: and with boots on the ground in the United Kingdom, Germany, China and other patent litigation hotspots, it is in pole position to tackle global infringement troubles. Some of the group’s biggest hitters are stationed on the West Coast, including global and US IP co-chair John Allcock
in San Diego and global and US patent litigation co-chair Mark Fowler
in Silicon Valley. A dynamic force and habitual winner, Allcock has been on the frontlines in a flurry of trials in recent years. He has also promoted a collegiate ethos among the group, with lawyers keen to share and put the best-placed talent at clients’ disposal. Fowler is frequently selected by leaders in the high-technology industry to anchor sprawling district court cases with multiple patents in suit; a well-armed combatant in any forum, he has seen plenty of action in the International Trade Commission (ITC) too. Of late, DLA has raised its profile in the life sciences and medical device sectors – partly through major expansion in the Boston market, but also thanks to the sterling work of Allcock and Kathryn Riley Grasso
, a young partner with buckets of first-chair trial experience on her résumé. Microbiology and immunology PhD Lisa Haile
has certainly helped the litigators in this regard. The life sciences team co-chair, Haile is an authority on patentability, infringement and validity questions, and a whizz on US and international patent prosecution and due diligence. Interested parties should also take note of the firm’s dedicated patent and technology transactions wing, of which the Silicon Valley office is a hub. Local resident Mark Radcliffe
“has seen it all” as a veteran deal broker, and is someone who “takes care of business by focusing on all the right issues”. Creating bespoke IP commercialisation strategies is his metier.
Durie Tangri LLP
“The US legal market is undergoing a shift: many top trial lawyers are beginning to see that the mega-firm model does not work for them. If you look at the most successful outfits of late, such as Durie Tangri, you can see a return to the boutique model of partnership, in which all partners have a voice and care about issues beyond the bottom line.” Clients are flocking to this next-gen set-up for its “absolutely brilliant lawyers who invest themselves in their cases”. “Because it isn’t too large, you deal with a handful of excellent individuals, rather than millions of staff members running around.” All of the founding partners draw superb feedback from market commentators, but perhaps none more so than Daralyn Durie
. “Daralyn is more incisive than any other patent litigator and frames a question and an answer so crisply – it is extraordinary.” “Effective in court, a great writer and strategically smart, she is an incredibly versatile lawyer.” “She is super-smart on the nuances of where the law is going”, too. Ragesh Tangri
possesses “immense intellectual processing power” and is “great at issue spotting in unique cases”. “Clement Roberts
is the smartest guy in the smart-guy club”, with “outstanding technical knowledge”. Hailed as a “phenomenal” appellate specialist, “top-notch patent and strategic counsellor” and “brilliant academician”, Mark Lemly
is among the most respected in the business. “He is a beautiful brief writer who knows the law inside and out, thinks well on his feet in an oral argument and is cost efficient.” The four have built an “extremely impressive coterie of lawyers”, which includes Sonali Maitra
, Sonal Mehta
and Ryan Kent
. Maitra tackles high-stakes, high-profile IP cases with verve, exhibiting a particular knack for saving money for clients. The “extremely motivated” Mehta “has a rare combination of technical expertise, advocacy ability and client service skills”. She has recently been fending off challenges to Genetech’s Cabilly patents alongside Durie. A master of the art of winning summary judgment, Kent is “a grounded guy with a great presence”.
As a result of uncertainty in many areas of US patent law – subject-matter eligibility being one example – companies are hedging their bets on the domestic market and expanding their patent activities in Europe; EIP’s unique integrated US and European service offering has therefore become that much more compelling. Blending its contentious and prosecution skill sets, the firm has gained a reputation for the effective handling of post-grant proceedings – and at a more attractive price point than many of its larger competitors. Nick Transier
has been doing great things at the PTAB lately; he has a contentious background and excellent technical credentials, so this is no sweat for him. He has also been engaged on major prosecution projects and been busy on the business development front, bringing in new clients such as ViaSat. His San Diego co-managing partner is Mallary de Merlier
, a biotechnology and medical device expert who has also been in expansion mode, acting for DJO Global on an increasing array of US and European prosecution mandates. EIP is still a small player in the United States, but it is coming on strong with plenty of big-name clients on its books and a growing staff to serve them.
Fenwick & West LLP
“Fenwick & West is extremely well rooted in the Silicon Valley community. It maintains an outstanding client base in such a competitive market, which speaks volumes about the quality it offers.” Serving companies whose raison d’etre
is innovation, the firm is completely immersed in all aspects of domestic and international patent practice. With 34 lawyers and nearly 30 patent agents on hand, it maintains one of California’s largest and best prosecution divisions. Acting as chair, Rajiv Patel
has turned the group into an incredibly efficient operator; using an entirely paperless system and leveraging a Vermont-based back office to identify and deploy innovative staffing models, Fenwick & West delivers quality at an eminently reasonable price point. The team is responsible for a slew of exciting portfolios: Antonia Sequeira
and Robert Hulse
, for example, manage much of Facebook’s patent portfolio and have guided the company’s highly successful IP strategy for a decade or so. A trusted confidant of the C-suite, Sequeira makes her debut in the IAM Patent 1000
this year. An economics and engineering major, Hulse similarly knows all about the business of patents and, serving as an independent expert evaluator for a major patent pool, is also an expert on standard essentiality. The guru on this subject, however, is Robert Sachs
, who also happens to rank among the nation’s top experts on Section 101 issues; if you want to know the state of play in either area, there is nobody better to call. “Bob has really dug into post-Alice
developments. He knows all the stats and is incredibly thoughtful about where the law in that area might be heading. He is solid through and through.” Also in hot demand among high-technology enterprises are John McNelis
and Jae Won Song
. A past chair of the patent practice and a former managing partner, McNelis is a senior figure whose advice on both protection and enforcement comes with gravitas. Song also has an interdisciplinary practice and contributes much to the firm’s success in prosecution and litigation. Michael Shuster
is the main man on the life sciences side. Clients call him “the pinnacle of the patent prosecution profession” and “an excellent leader who is in it for all the right reasons”. “Michael is consistently amazing, combining a top understanding of US and global IP law with pragmatism and a business sophistication that is rarely seen in IP counsel.” Just like their prosecution colleagues, the litigators here – including the first chairs – have no problem digging into the most complex technical issues. David Hadden
has a background in theoretical physics and can wrap his mind around virtually any type of tech. Amazon.com has been one of his key clients for many years now and he continues to do great things for the company. He recently obtained early dismissal of a case against the company filed by Affinity Labs of Texas; this was affirmed by the Federal Circuit in a precedential decision. “Dave is a hugely experienced litigator and trial attorney who leads teams to excellent results on time and within budget. He is well prepared and appropriately focused, and keeps a global perspective on the merits and impact of a dispute.” Another contentious force, Michael Sacksteder
puts the right case law and legislative provisions to use expeditiously and efficiently to obtain business-optimal results. He oversees a lot of the group’s post-grant activity – as does consummate strategist Stuart Meyer
. “Stuart has an extremely strong background in technology and picks up concepts very quickly. He has a keen sense of balancing business and IP goals and is extremely fast – he retains information at speeds that leave many of us behind.” With five individuals on the California transactions table – more than any of its competitors – the firm has virtually unrivalled strength in depth on patent commercialisation. Recent highlights include Symantec’s $7.4 billion sale of its Veritas Technologies unit and Pandora’s $450 million acquisition of TicketFly. Stephen Gillespie
, who took the lead for Symantec, is no stranger to billion-dollar deals and also recently acted for Nimble Storage in connection with its $1.2 billion acquisition by Hewlett-Packard. Pandora’s lawyer Ralph Pais
has extensive experience on both the buy and sell sides; he is also an architect of some key service innovations, such as FlexbyFenwick – a unique interim staffing business. “Ralph has a very mature transactional skill set, but there’s no ego with him – he is approachable and personable, and working with him is like being part of a team.” Some of the most positive feedback is reserved for the leader of the transactions crew, Jake Handy
, an “experienced, extremely business-savvy and efficient lawyer who represents great value”. International sources highlight his laser focus on key issues and his pragmatism – he works to get deals done and never sweats the small stuff. The chair of the overall IP group, Lawrence Granatelli
is also a transactional maven, though he comes with considerable litigation and prosecution expertise, too. David Hayes
has similarly broad horizons, with robust practices in counselling, litigation and licensing. He stands out for his insight on copyright, internet and digital media issues.
Fish & Richardson PC
When it comes to US patent litigation, no other name has as much brand recognition as Fish & Richardson right now. Nationwide, the “incredibly high-quality” ensemble has “an extraordinarily deep bench” of litigators who are chalking up stunning wins in every possible forum. One of the superstars in its constellation is Juanita Brooks, a trial lawyer who “stands head and shoulders above others”. “Juanita is one of the best – she is amazingly articulate, excellent on evidence and has a lot of confidence and a great presence in court.” Acting alongside fellow San Diegan Jonathan Singer, she recently scored a significant appellate victory for long-time client Allergan, blocking competitors from selling a generic version of its Lumigan glaucoma treatment for the next decade. A foremost expert on Hatch-Waxman Act litigation who always has innovative tricks up his sleeve, Singer brings strong leadership to the firm’s life sciences litigation practice. A Stanford graduate with business experience,Michael Headley manages the Silicon Valley office. A seasoned litigator who knows the local tech scene inside and out, he makes his first appearance in the IAM Patent 1000 this year off the back of a recent $139.8 million win for Power Integrations against Fairchild Semiconductor. The Silicon Valley office was founded in 1993 by senior principal Hans Troesch, a prosecution and strategy guru who understands technology in the most profound way. He has spent decades at the IP coalface and is an invaluable resource for those with super-complex patent protection problems.
Foley & Lardner LLP
“Foley & Lardner’s IP group has its finger on the pulse of developments in patent law – it is really on the cutting edge.” This is a function, in part, of its holistic approach to patents and cultivation of well-rounded litigation, commercialisation and prosecution practices. As far as the latter is concerned, it is one of relatively few commercial firms which continually invests in its US Patent and Trademark Office (USPTO) proficiencies and systems.
Gibson Dunn & Crutcher LLP
Patent litigation at the lower end of the complexity and value scale may be trending downwards, but crucial competitor-on-competitor battles are as fierce and frequent as ever. This spells good news for Gibson Dunn, a swashbuckling contentious outfit known for its ability to go the distance at trial and emerge victorious. Co-chairs of the 125-plus lawyer – and growing – national IP group, Wayne Barsky
and Josh Krevitt
are always in the thick of the action. They joined forces to bring home the bacon for Fitbit against Jawbone, compelling the ITC to invalidate several patents on the basis of Section 101 for the first time. Individually, they have had other notable wins, too: Barsky, a denizen of the Century City office, obtained summary judgment for Medtronic; while Krevitt, who maintains bases in New York and Palo Alto, won a trial for Sharp in an ITC case which threatened a billion-dollar revenue stream. William Rooklidge
has made Gibson Dunn a happy home since he joined in 2015. Together with Barsky, he is supporting multiple pharmaceutical companies – including Pfizer and Merck – in a case filed by Biogen alleging infringement of a recombinant DNA engineering patent. None of the litigators here can be pigeonholed from a technical perspective – they are as dexterous in the life sciences as they are in any high-technology area.
Goodwin Procter LLP
Goodwin Procter’s West Coast growth has been spectacular over the past three years. The firm’s Silicon Valley squad may be compact, but it is cooking on gas right now, thanks to the sterling efforts of Brett Schuman and Shane Brun. Schuman, who heads the California litigation department, has his hands full representing ARRIS Global in a sprawling 24-patent dispute against TQ Delta; he never drops the ball and is also acting on behalf of Unwired Planet, contesting the PTAB’s invalidation of two patents which were challenged by Google. Brun – who is cited by one client as “simply the best at addressing threats through practical business landscape analysis and strategies” – successfully represented FireEye in a trade secret misappropriation and patent infringement suit against Forinet. Both lawyers have an instinct for the best pressure points and the most effective ways to exploit the mistakes of their opponents, and are highly effective at solving problems quickly and creatively. They were joined in February 2017 by former Orrick star Neel Chatterjee, a gold-rated trial lawyer who “gives terrific legal advice and has seen a lot of success in court”. “He exudes friendliness and confidence, and has the right personality to remain at the top.” Goodwin Procter also maintains a robust transactional practice in the Bay Area, which is anchored by life sciences aficionado and licensing doyenne Karen Spindler. “Her success comes down to the simple fact that she is smart and works incredibly hard for clients.” Coming out of Kirkland & Ellis and, before that, Skadden, she has an outstanding pedigree as a deal maker and is only improving at Goodwin.
Greenberg Traurig LLP
Greenberg Traurig’s agile, business-minded culture resonates with innovators – particularly those that are looking to take advantage of alternative fee structures while simultaneously capitalising on top-quality patent support. Former Weil partner Nicholas Brown
is the main IP touchpoint up north in the San Francisco office. The dynamic advocate is in the prime of his career and is someone to call for disputes with a high degree of complexity – be it technical, legal or commercial in nature. Down the coast in Los Angeles and a short drive further in Irvine, you can find Jeff Joyner
and Rick Taché
respectively; both have sweeping protection, monetisation and enforcement practices and thrive in outside general counsel-type roles. Reflecting on a recent patent litigation win, a client calls Joyner an “excellent writer and knowledgeable, results-oriented lawyer who is very enjoyable to work with”. He has a fine-grained understanding of the food and beverage, media and entertainment and retail and apparel sectors, and draws many instructions from each. Taché, a co-chair of the national patent litigation group, is a patent, trademark and copyright expert and thus a prime pick for those with diverse IP portfolios. He is part of a large crew supporting Samsung in many of its endeavours.
Hickman Palermo Becker Bingham LLP
San Jose’s Hickman Palermo crafts artisanal patents that provide watertight domestic and international protection to heavyweights in the computer and software technology areas. Quality is the watchword for this outfit, which has its name stamped on some of the most commercially valuable high-technology patents in the country. Christopher Palermo
and Brian Hickman
know the lie of the land in Silicon Valley, having worked at the vanguard of intellectual property there for many years. For those seeking to carefully cultivate an outstanding patent portfolio, they should be top of mind.
Cupertino boutique HIPLegal serves up commercial and practical IP solutions to a wide variety of clients both in and outside of Silicon Valley. The compact team understands the short and long-term business impact that strong and broad patents can make, and is especially adept at procurement and strategic portfolio management. Founding partner Judith Szepesi
also has the magic touch when it comes to getting clients a return on their IP investment. In February 2017, HIPLegal welcomed Laura Majerus into the fold –the former in-house counsel at Google will further enhance the firm’s ability to step into the shoes of clients and dispense the most pertinent advice.
Irell & Manella LLP
When it comes to high-end patent litigation, Irell & Manella is always in the mix. Its litigation group is chaired by Morgan Chu
, who is – alongside WilmerHale’s William Lee – the most celebrated patent trial lawyer in the United States. There are indications that Chu may be slowing down his practice a little, but there is no shortage of other IP dignitaries on the roster to make up for this. Managing partner Andrei Iancu
and executive committee member Gary Frischling
immediately come to mind for their ultra-polished presentation skills; so too David Gindler
, who is flying Irell’s flag high in the emerging biosimilar litigation arena. These senior figures are flanked by a number of younger lawyers whose stars are firmly on the ascendant. Take Benjamin Hattenbach
, a “tough and relentless – but not belligerent – lawyer who really hones in on the key issues in a dispute”. Jason Sheasby
and Ellisen Shelton Turner
also fall into this camp. Sheasby, who joined the executive committee at the age of just 37, has been obtaining favourable $100 million-dollar judgments left, right and centre for his high-technology clients. Turner has exemplary negotiation skills and also takes a resolutely commercial approach to patent litigation. Both have been very active within the firm’s post-grant practice, which has been flourishing under the direction of Michael Fleming
. Of counsel Fleming is a former chief administrative patent judge of the PTAB who had a strong hand in the development of USPTO procedure and policy both pre and post the America Invents Act.
Jones Day has individuals listed in each of the prosecution, transactions and litigation tables in the IAM Patent 1000
California section, which serves to highlight its versatility in patent practice. In fact, among the full-service commercial players in the United States, it is one of the top all-round IP performers. Its proposition becomes all the more compelling in the eyes of big pharma clients and high-tech titans when its “terrific and truly global platform” is factored into consideration: Jones Day is ideally placed to protect, enforce and commercialise patent rights in today's globalised market. Culturally, the lawyers here take ego out of the equation; it is a style that enables them to work cohesively as a team, but also to concentrate on telling their clients’ stories at trial, and not their own. Their collaborative spirit and focus on the most material elements of a case were apparent in the handling of a suit for Korean wireless-connectivity innovator SOLiD; a team including San Diego, Silicon Valley and New York partners secured a defence jury verdict for the company in an action filed by Corning Optical Communications Wireless. Key to this success was Silicon Valley partner in chief Greg Lanier
, a lawyer known for his creativity and persuasive narrative style. Heading south to San Diego, Anthony Insogna
has been leading the charge in pharmaceutical and biotechnology battlegrounds. He has the considerable responsibility of chairing the global IP practice, but he balances the demands of that with an exceptionally busy practice. Post-grant action is certainly hotting up in the life sciences sector and Insogna is at the forefront of it all, defending AbbVie in inter partes
reviews targeting its blockbuster Humira drug and fighting the corner of Celgene to protect several multibillion-dollar products, for example. Another life sciences expert in San Diego is former senior scientist in industry Dale Rieger
– although he focuses primarily on portfolio development, rather than litigation. “A brilliant PhD chemist, he has been sharp and efficient since day one on entering the legal professional. He is an extremely quick study.” Jones Day makes its first appearance in the US national transactions table this year, thanks to its facility for inking cross-border deals. The dedicated licensing and technology transactions group is co-led by Thomas Briggs
, a “technically gifted” lawyer whose deal documents effortlessly capture the essence of the relevant technology. “In this context, you have to stay even tempered and work to protect your client, but not get so dug in as to prevent a deal from happening. You have to be creative to bridge gaps too. Tom is a thoughtful, careful, detail-oriented professional who does all those things and more.” He recently acted for Procter & Gamble on the sale of its Duracell personal power business to Berkshire Hathaway – a $2.9 billion private split-off transaction with an unusual tax-free structure. In July 2016 the firm unveiled new signing John Werhli
, a respected life sciences deal broker who comes by way of Latham & Watkins.
Kasowitz Benson Torres & Friedman LLP
Kasowitz knows how best to try patent cases and takes on consequential disputes with a compact, nimble, efficient and cost-effective team. Steady growth has been the prevailing narrative of the past year, during which the group has forged new client relationships with juggernauts such as Samsung, ASUS and LG, and deepened relationships with existing patrons such as Google. In one case, the firm acted for all four of these companies against Ryujin Fujinomaki, earning a rare motion to transfer away from the Eastern District of Texas in the process. In on the job was Jonathan Waldrop
, a “sharp, pragmatic and responsive lawyer who anticipates your needs before you even realise you have them”. Waldrop sits in the Silicon Valley office, which is managed by Steven Carlson
, who also makes the IAM Patent 1000
grade. Though focused on patent and trade secret disputes, Carlson has broad-based IP knowledge and is a surefooted strategic counsellor as well as a tenacious advocate. An authority on patent case management, he has written a book on the subject which is widely read among the judiciary.
Keker, Van Nest & Peters LLP
“Keker, Van Nest & Peters is an extremely good firm with incredible trial capabilities. Its terrific litigators understand what really matters in a case and are smart at picking out the right themes; they can handle any big and important patent dispute, regardless of subject matter.” American College of Trial Lawyers fellows Robert Van Nest
and John Keker
need no introduction as two of the best to appear in front of juries in both patent and commercial cases. They have been particularly effective at nurturing the next generation of trial talents, giving the firm an edge over some other similarly reputed litigation shops. A number of star lawyers are entering their prime now, such as Asim Bhansali
, Ashok Ramani
, Christa Anderson
and Matthias Kamber
. “Asim Bhansali is a stand-up guy who is whip smart and incredibly thoughtful and strategic. He is also not really into claiming credit – he just wants to get to the right result.” Ramani shares this trait and is “driven by the right result, however that is determined”. “Ashok is a great organiser of a team – his colleagues want to do well for him – and is an impressive lawyer who can operate in any forum.” Anderson’s punchy advocacy has worked wonders for many a leader in the high-technology world, including Google, SanDisk and Intel. Kamber is the youngest of the crew – he earned his JD from the George Washington University Law School in 2002 – but has jury and bench trial experience way beyond his years. Busy on the speaking circuit and in publishing, he is really getting his name out there. In addition to patent litigation, David Silbert
– who makes his sophomore appearance in the guide this year – has handled malpractice suits on behalf of several prominent law firms, so you know he can be trusted when the stakes are high.
Kilpatrick Townsend & Stockton LLP
The contentious team at Kilpatrick Townsend & Stockton knows how to close down suits filed by non-practising entities (NPEs), but has lately been broadening its horizons by taking on more ITC and PTAB work for its prestigious high-technology and life sciences clientele. San Francisco-based Steven Moore
has had a strong hand in this and continues to serve as a leader within the national practice. As far as post-grant proceedings are concerned, Kilpatrick Townsend is a natural fit, given its contentious know-how and deep bench of expert technologists sitting in a famously robust prosecution practice. San Diego managing partner William Shaffer
excels at marshalling the firm’s portfolio management and post-grant resources and is a key contact for semiconductor, IT, software and fast-moving consumer goods companies looking to create IP value and fend off challengers.
Kirkland & Ellis maintains one of the most dynamic patent litigation practices in the country and showcases a remarkable win rate – especially considering that it routinely takes on the most hotly contested, technically and legally complex cases. The firm’s California advocates make significant contributions to nationally staffed trial teams, but also regularly take the lead on heavy-duty matters. Los Angeles resident Luke L Dauchot
is a charismatic lawyer who can bring the whole court along with him. He lately scored big for Medtronic at the Federal Circuit when the company was sued for infringement of a wireless communication patent by Atlas IP – and $1.2 billion in damages; in the district court, he swiftly dealt with Atlas’s damages expert via a Daubert challenge before obtaining summary judgment on all asserted claims. San Francisco’s Adam R Alper
is another first-chair litigator ready to deploy when a win is essential. He has granular knowledge of telecommunications technologies and standards, but litigates with finesse across the high-technology spectrum.
Knobbe Martens Olson & Bear LLP
“Destination prosecution firm” Knobbe Martens Olson & Bear is known for its wall-to-wall technical coverage, perfectly formed IT infrastructure and deep bench of strategically minded patent experts; indeed, it has substantially more individuals recommended in the IAM Patent 1000
for prosecution than any other competitor in California – more, in fact, than any in the country. The top names on the high-technology side are San Francisco managing partner and semiconductor sage Adeel Akhtar
; former IBM engineer and medical electronics and IT expert Ronald Schoenbaum
,“a thought leader on best practices in the prosecution industry”; well-rounded counsellor and polymer science PhD Joseph Mallon
; start-up whisperer and patent prosecution committee chair John King
; licensing maven Arthur Rose
; and international IP protection guru John Carson
. Within an equally stacked life sciences contingent, neuroscience PhD Salima Merani
is in particularly hot demand at the moment, especially among clients with multifaceted needs. She acts as lead counsel for Sienna Biopharmaceuticals, which is developing cutting-edge nanoparticle skin treatments; she has not only been obtaining key patent allowances for the company of late, but has also been running due diligence projects and competitive intelligence-gathering efforts – all of this on top of an interference proceeding, too. Foreign associates call her “a true global leader in medical device patenting”. Other PhDs on the roster include San Francisco partner and molecular biologist Eli Loots
, a portfolio developer with a deft post-grant touch; San Diegan biochemist Joseph Reisman
, an effective prosecutor and litigator who is “knowledgeable and insightful on patent term extension issues”; and Irvine-based biologist Mark Benedict
, who spent nearly 12 years as a research assistant professor at the State University of New York Upstate Medical University – specialising in paediatric endocrinology –
before embarking on his legal career. Chemistry PhD Kimberly Miller
attracted some of the warmest feedback this year. The leader of the international department “acts like an extension of your in-house team and brings incredibly helpful insights on patent strategy to the table”. She is also “an influential representative when interacting with potential investors and collaborators”. Though best known for its prosecution prowess, Knobbe is forging a glowing reputation in the post-grant arena, as it astutely marries its prosecution and litigation skill sets to carry the day at the PTAB – on either side of the ‘v’. There are many contributors to the firm’s post-grant success, but chief among them is Brent Babcock
, “a great strategist, compelling brief writer and outstanding speaker”. Babcock has a long history of interference and re-examination practice and has handled more than 60 inter partes
and covered business method reviews since the America Invents Act came into force; he is a natural at delivering the deep technical and prior art understanding that PTAB judges are looking for. With all that Knobbe can bring to the table, it is unsurprising that it continues to be sought after for high-value and scientifically challenging patent suits. Litigation chair John Sganga
has kept the practice humming while also taking the lead on some weighty cases. As an example, he headed a trial team which earned a $70 million award for Edwards Lifesciences CardiAQ from a federal jury in Boston in a dispute against Neovasc; he also anchored an ITC case for Nobel Biocare, the world’s leading dental implant maker, against a Brazilian company. Taking care of a vitally important inter partes
review, internationally acclaimed trial lawyer Joseph Re
has continued his sterling work for Masimo, netting the medical device company hundreds of millions of dollars. Masimo also benefits immeasurably from the support of several other sparkling talents, including Jon Gurka
, Irfan Lateef
and Karen Vogel Weil
. Gurka eschews a cookie-cutter approach to litigation, instead identifying and executing bespoke strategies that are hard for opponents to prepare for and react to. Lateef has a knack for resolving cases quickly and painlessly, but equally has plenty of jury trial and appellate experience. Weil stands out for her expertise on damages and has been a rock for the group in her 25 years here as a partner.
Latham & Watkins LLP
“Latham puts up a real fight and represents super-tough competition in patent litigation.” “It has some of the best brains in the business, including the brightest associates, who deliver the sort of performances you would expect to come out of an upper-echelon law firm.” It shot to prominence in the Bay Area in 2011, when Ron Shulman
, Richard Frenkel
and Julie Holloway
came on board alongside several other respected litigators. The trio showed how well they work together when they joined forces in 2016 to secure a major jury trial victory on behalf of NVIDIA in a hard-fought eight-patent case brought by Samsung; highlighting Latham’s ability to staff powerful trial teams across offices, several DC partners – including Maximilian Grant – were instrumental in the win. A member of the California crew creating the most buzz right now, however, is Douglas Lumish
, who has recently been fighting the good fight for Symantec in a widely followed case against Intellectual Ventures concerning computer security technologies. “Doug is a super-articulate, stand-up guy who gives thoughtful, solid advice. Understanding how the pieces fit together in the most complex cases, he has wisdom and judgement in abundance, and a firm but civil, reasonable demeanour.” Symantec is also lucky to have Silicon Valley litigation co-chair Jeffrey Homrig
in its corner; he is an authority on patent case management, as well as a highly persuasive trial lawyer. When PTAB disputes arise, in steps Robert Steinberg
, a Los Angeles and DC partner and founding member of the national PTAB Bar Association, and its first president. His inter partes
review expertise is a big deal for AbbVie, which has tasked Latham with preventing companies from launching biosimilar versions of Humira. Within intellectual property and technology, Latham doesn’t just litigate at the highest levels; it supervises the most demanding transactions with distinction. Anthony Klein
, the IP anchor on Broadcom’s recent $5.9 billion acquisition of Brocade Communication Systems, serves as technology transactions global co-chair.
Lowenstein Sandler LLP
One look at Lowenstein Sandler’s impressive allowance rate tells you that this is a firm which can effectively prosecute patents, particularly in the post-Alice
era. Rather than approaching prosecution in an adversarial manner, the team adopts a highly collaborative stance towards examiners; it is also deeply familiar with the machinery of the USPTO and the options that are available under its Enhanced Patent Quality Initiative, which established multiple programmes designed to help improve the certainty and clarity of rights being issued. “Daniel Ovanezian
and Marina Portnova
do quality work for a reasonable price and are extremely responsive and just great to deal with.” They are joined in the IAM Patent 1000
for the first time this year by fellow high-technologist Kevin Grange
, a “top patent attorney and go-to for the most challenging cases”. “Kevin takes the time to research and become an expert in new technologies you are filing on. His inclusion of broader system-level material in his drafts results in the allowance of much wider claims. He is also highly personable and builds great relationships with busy inventors.”
Mayer Brown LLP
When a client adds Mayer Brown to a list of favoured providers alongside Irell & Manella and Keker, Van Nest & Peters, it’s a good sign that the firm is doing all the right things in patent litigation. With a presence on three continents, it can assist companies in infringement scenarios that are global in nature; one Korean chaebol
is capitalising on this, as are other international conglomerates. Michael Molano
has top billing among the firm’s Golden State trial lawyers. He takes care of some major US-based clients, including Marvell Semiconductor, for which he recently achieved a meaningful victory in a three-week trial against Emulex Corporation. This was an indemnification suit in which a Silicon Valley jury awarded only a fraction of the damages amount being sought by Emulex; Marvell was also deemed to owe zero settlement cost damages. The Palo Alto hiring partner, Molano brought David Wang
into the fold at the start of 2016. He lends an extra dimension to the group as an authority on adversarial licensing. Palo Alto partner in charge Edward Johnson
also litigates patents with tactical wisdom and creativity; his storytelling abilities are on point regardless of subject matter, not least thanks to the variety of cases – commercial, antitrust and consumer class action lawsuits – he sees.
McDermott Will & Emery
McDermott Will & Emery’s competitive rates, deep technical bench, quality work and service mindedness keep it in the IP rights management frame as companies seek to consolidate their external counsel panels. The firm has had an exciting year in terms of new prosecution client wins – its retention by Apple for the first time was perhaps the biggest news. Mark Itri
and co look at claims from an enforceability standpoint and draft with commercial aims front of mind. Companies such as Google love Itri for this approach; he has served the company for a number of years in a portfolio management and strategic advisory capacity, all the time dispensing unique insights on the competitive landscape that Google faces. Also recommended for prosecution is Silicon Valley partner and chemical engineering PhD Judy Mohr
– someone who flourishes in, and does much to promote, the team-oriented culture here. Her work for QIAGEN is a case in point: linking up with litigators William Gaede
, also in Silicon Valley, and Boston’s Sarah Columbia, she and the team put in a sterling effort for the Dutch and German biotech player, particularly in terms of an inter partes
review strategy as the company faces off against rival Oxford Immunotec. Gaede, the firm’s top life sciences litigator on the West Coast, earns praise for his “excellent business sense” and “ability to manage complex litigations with multiple defendants within budget, but with an eye on quality”. Alongside QIAGEN, Gaede has been acting for Amgen and scored a trial victory for the company against Sanofi in a fight over cholesterol-lowering drugs. The firm has an imposing line-up of first-chair trial lawyers on the high-technology side, including Fabio Marino
and Daniel Foster
. Marino has had some nice wins to shout about, including a $6.9 million damages award for Radware after a three-week jury trial against F5 Networks. His appreciation of the human element of patent litigation and ability to convey this persuasively in the courtroom make him a highly effective advocate. Orange County partner in charge Foster often prevails by making smart use of the broad McDermott platform; his activities have diversified recently to include commercial contract disputes, false advertising cases and other matters, making him an extremely well-rounded litigator set for any occasion. David Henry Dolkas
, who keeps his hand in on pharmaceutical and technology cases, is a guiding light on case management, but he knows how to present, too.
Morgan Lewis & Bockius LLP
Few US-based global law firms maintain a potent patent prosecution practice, but Morgan Lewis falls into that category. It is perhaps the best option not for those who just want to pile patents high, but rather for those seeking strong rights that can survive the rigours of litigation. Seasoned partners such as Gary Williams
and Dion Bregman
tend to roll up their sleeves on projects and put in place robust quality control protocols when delegating to less senior colleagues; as a result, no work goes out the door that is less than 100%. Software buff Williams is capable of the most impressive mental gymnastics and has the patience and passion to teach the job to others effectively. Post-grant work is a sweet spot for Bregman, who has a foot in both the prosecution and litigation camps. Active within the PTAB Bar Association since its inception and a regular speaker on the subject, Bregman stands out as an authority over and above the many lawyers who have now made this a specialty. Morgan Lewis is also a magnet for high-end transactional mandates and its dedicated team in California has been firing on all cylinders under the leadership of Rahul Kapoor
. Peers cannot say enough good things about Kapoor, calling him “absolutely one of the best in the Valley”. “He is ridiculously smart and has a detailed knowledge of clients’ businesses. He understands the intricacies of patent licensing and pools.” This past year he has been making regular trips to Japan, acting on behalf of SanDisk in connection with its SD flash memory card joint venture with Toshiba and Panasonic. At the same time, he has expanded his life sciences horizons, representing anti-cancer biopharmaceutical company Juno Therapeutics in the negotiation of a licence agreement with Memorial Sloan Kettering Cancer Centre.
Morrison & Foerster LLP
“Morrison & Foerster has taken patent litigation seriously for a long time and is a name you can’t help but admire, whether it is co-counsel or opposing counsel. It consistently produces extremely good work and results.” While the illustrious Harold McElhinny may have recently announced his retirement, sources note that Mofo has “collected a super-talented group of attorneys”, so there is absolutely no shortage of options for those looking for senior trial lawyers or younger next-generation stars. Two of the best veteran campaigners are San Franciscans Rachel Krevans
and Michael Jacobs
. Krevans is second to none on chemistry and life sciences disputes and has recently secured decisive wins for drug manufacturers and universities; she is just as effective in high-technology, too. “Accomplished and distinguished” IP group co-chair Jacobs has been capitalising on the firm’s global presence – and particularly its Asian resources – to bring the heat in international patent litigations. Pioneering biotechnology company Genentech relies on him and a cadre of others, including Matthew Kreeger
, to soothe its biggest headaches; Jacobs and Kreeger had a recent success when they persuaded the PTAB not to institute an inter partes
review filed by Phigenix against it, and also won another inter partes
review as part of the same wider dispute between the two companies. In his role as co-chair of the post-grant practice, Kreeger has been building small, efficient teams with the best people to take on difficult matters with the minimum of fuss. He draws judiciously on the firm’s superb prosecution capabilities and has a frequent collaborator in Catherine Polizzi
, a commercially wise strategic counsellor and portfolio manager in the life sciences area. Head of patents Michael Ward
has set things up so there is no internal competitiveness within the group and put in place structures that encourage this kind of collaboration. Like Polizzi, he is a life sciences buff, and in particular a virtuoso on plant science: he is perhaps the most knowledgeable and passionate attorney in this field anywhere in the world. Nothing in the patent scene is off limits for MoFo, which runs a robust transactional practice alongside its contentious and prosecution offerings, staffed by some of the firm’s most senior lawyers. A crack negotiator currently serving as managing partner, Tessa Schwartz
brings a litigator’s gimlet eye to the boardroom table; while former managing partner and founding co-head of the IP group William Schwartz
is one of the most erudite scholars in private IP practice. The two often join forces and recently acted for Red Hat in negotiating a new collaborative cloud computing relationship with rival Microsoft. Another name for the contact book is Rufus Pichler
, a long-serving member of the division with a particularly deft touch on international deals and useful insight into European and German patent law.
Nicholson De Vos is one of the most efficient and cost-effective portfolio management practices in the country; its decentralised structure – with attorneys and staff in locations across the United States, as well as a core team situated in a physical office in Silicon Valley – enables it to be incredibly flexible. In addition to its prosecution duties, the firm has been engaging in some complex post-grant activity and undertaking offensive analyses for large international clients. Daniel M De Vos
garners great reviews from foreign associates: “He is a pleasure to deal with and is brilliant on matters concerning complex technology and cutting-edge legal issues. He has outstanding communication skills.” Fellow founding partner David Nicholson
focuses on building commercial value in everything he does for clients. Both partners provide gold-standard guidance to start-ups and mature companies in the IT space.
O’Melveny & Myers LLP
Globally, O’Melveny & Myers is a formidable player in the contentious arena – companies dial its number when there is a high likelihood of a dispute seeing the inside of a courtroom. Running lean teams that punch well above their weight in numbers, it has enjoyed success going toe to toe with some of the US legal scene’s heaviest hitters on behalf of giants of the tech world. Trade secret authority David Almeling
, for example, recently prevailed at trial for Google against a large team of Baker Botts professionals, having taken on the case just six months before the trial date and midway through expert discovery. Ryan Yagura
is also in a winning groove and recently secured quick dismissal of a case brought by Affinity Labs of Texas against client DirecTV on ineligible subject-matter grounds. These two sharpshooters have gained much from practising alongside veteran trial lawyers Mark Samuels
and Mark Miller
. Samuels is one of the most experienced advocates on O’Melveny’s roster and has lately been at the forefront of the firm’s sterling efforts protecting Samsung. Miller helped to orchestrate one of the set’s biggest recent victories, acting for Mentor Graphics in a precedent-setting Federal Circuit case which addressed the practice of selective claim review in inter partes
Orrick, Herrington & Sutcliffe LLP
With its flexible, creative approach to patent litigation and its thought and practice leadership on alternative pricing models, Orrick is in hot demand in a US market which is witnessing significant change. The continued globalisation of intellectual property has also played into its hands: Orrick does a better job than most utilising its international strength, particularly in Asia, in the context of US, cross-border and overseas litigation.
Perkins Coie LLP
Perkins Coie has a lot of irons in the IP fire, as reflected in the IAM Patent 1000
: selected from its California offices alone, it has professionals recommended for litigation, prosecution and transactions, as well as an individual on the national post-grant proceedings table. It finds variety the spice of life from a technical perspective, too, and is locked and loaded in the high-technology and pharmaceutical/biotechnology areas. Within the litigation group – one of the busiest and most dynamic in the country – John Schnurer
is an anchor on cases involving computer hardware and software, communications devices and myriad electrical technologies. He is a frequent flier at the ITC and has been showcasing his technical chops in PTAB proceedings. Michael Wise
brings leadership to the life sciences and healthcare practice. Litigating, managing portfolios and conducting patent due diligence, “he has the kind of versatile skill set that can be really impactful in serving the strategic needs of clients”. “He can litigate in the USPTO and district courts, and is a creative lawyer who isn’t overly risk averse in the kinds of arguments he shapes.” More than 45 of the firm’s patent litigators and prosecutors are engaged in over 100 ongoing post-issuance proceedings, though physics PhD Bing Ai
is the chief post-grant mastermind. All of those engaged in contentious work benefit immeasurably from the appellate insight of Eric Wesenberg
, who enters the list for the first time this year. “Eric has been at the Federal Circuit dozens of times and is an innovative guy and, at the end of the day, a winner. He enjoys patent litigation, utilises a wide array of defences, works hard and cares a great deal about clients.” On the prosecution end, chemical, pharmaceutical and biotechnology wunderkind Viola Kung
is a major draw – not least because, as the named inventor on 21 US patents, she has walked a mile in clients’ shoes. She has an international reputation as a “hugely experienced patent attorney”. Another attraction is James Hill
, an MD who joined from WilmerHale in March 2017. For those looking to do deals and make strategic investments, San Francisco partner Dana Hayter
is the main man. He occupied management positions within the legal division of Intel and, much like Kung, can see the world through clients’ eyes.
Quinn Emanuel Urquhart & Sullivan LLP
Founded by business litigation supremo John Quinn
, this contentious powerhouse has a deep bench of patent trial lawyers – including more gifted first-chairs than virtually any other competitor – and remains at the top of the patent litigation pile in the United States. Shaping a compelling trial narrative from the moment a case is filed, while remaining watertight on the technology at issue, is its modus operandi
– and one that nets it consistent success in US and foreign courtrooms. It has plenty of recent highlights to shout about, many of which bear the fingerprints of Charles Verhoeven
; at the Federal Circuit, he obtained a complete reversal of an $85 million patent infringement verdict against Google, which was sued by plaintiff SimpleAir in the Eastern District of Texas. Also taking the lead on much of the set’s Samsung work, he represented the Korean chaebol
, alongside HTC, in a case relating to the online payment for and distribution of content. “Charlie litigates with great force, applies a lot of pressure on expert witnesses and is good at creating a sense of drama. He is also very thoughtful and has a delicate sense of how best to present technical issues.” He co-chairs the national IP litigation practice with Claude Stern
, another heavy hitter with decades of experience on ground-breaking matters. They are flanked by up-and-comers Victoria Maroulis
and Sean Pak
, who have continued to build on their already stellar reputations this past year. Maroulis manages the Silicon Valley office and co-chairs the life sciences practice, though she is a great pick no matter what the subject; she had a significant hand in eliminating a $120 million verdict against Samsung arising out of litigation with Apple.
Ropes & Gray is in the process of spinning off its IP rights management practice, but remains steadfast in its commitment to excellence in patent litigation. Though some big-name litigators have left the group – some moving in-house, others joining competitors – it has retained high-grade talent as it embarks on the next phase of its life in the IP space. Silicon Valley partner James R Batchelder
has been and will remain a key asset for the firm and its clients, such as Rovi, for which he has done many great things. “He is the perfect example of an excellent patent litigator without a technical background – he takes the time to learn the tech, gets to know his clients and asks all the right questions. He is a good person and a good lawyer – thoughtful and careful, without being overcautious.” Technology, media and telecommunications group co-chair Andrew N Thomases
is another rigorous advocate and resonant presenter who can keep infringers at bay. The razor-sharp transactional skills of its corporate technology group will also help Ropes retain an edge. San Francisco partner James S DeGraw
inks big-ticket deals daily, demonstrating particular flair for US-Asia agreements.
Schwegman Lundberg & Woessner PA
A lot of firms can draft good patent applications, but few can uphold the highest standards of quality with the level of consistency that Schwegman Lundberg & Woessner maintains. It has invested heavily in its IT systems to streamline its service to a fine point, and has a dedicated analytics team to deliver unique insights that can make the difference between success and failure for clients. Garth Vivier
and Andre Marais
have legions of fans in Silicon Valley, and act, for example, on behalf of many of the leading networking companies, as well as the likes of eBay – which peers acknowledge “has been sending Schwegman work for decades” – and LinkedIn; they also have a deft touch with start-ups.
Shay Glenn LLP
Early-stage companies, and those who invest in them, find all the specialist patent expertise they need at Shay Glenn, a San Mateo boutique which can commercially contextualise its legal and strategic advice like few others. James Shay
’s résumé is something to behold: he has been a partner at Wilson Sonsini and MoFo, served as president and CEO of a software company, co-founded a medical device company and filled a variety of general counsel roles. His worldly-wise strategic advice is grounded in the reality of conducting business, particularly in the medical device sector. His partner, Rick Shoop
, has a neuroscience PhD to his name and is another connoisseur of medical and biomedical technologies.
Sheppard Mullin Richter & Hampton LLP
The patent practice at Sheppard Mullin, and particularly its contentious component, has grown significantly in stature in recent years; premier tech companies now have it firmly on their radar for critical actions. Its trial lawyers have achieved some impressive feats lately: representing TCL Communication Technology against Ericsson, for example, Stephen Korniczky
had an unprecedented 17 (out of 17) inter partes
review petitions instituted by the PTAB in connection with a single litigation. A former co-head of the IP group, Korniczky remains a leader here in spirit, if not in title. He has handled some 150-plus patent and IP litigations over an outstanding career and is setting new benchmarks all the time. Another highly rated litigator is Seong Kim
, a “proficient, thorough professional who always has his clients’ best interests in mind”. “Seong has excellent analytical skills and thinks of reasonable and sensible solutions when unique problems arise; he also has strong interpersonal qualities and develops relationships of trust with everyone he deals with.” Knowing what happens at the USPTO can be invaluable in litigation, but Sheppard Mullin maintains a robust prosecution practice not only to enhance its enforcement efforts, but also to provide a wraparound A-to-Z service to clients. Prosecution, portfolio management and opinion giving are meat and drink to James Soong
, who is active in many innovation hotbeds, from virtual reality to artificial intelligence and social networking.
Sidley Austin LLP
A towering force in national patent litigation, Sidley brings comfort when trouble brews. The firm acquits itself with distinction in the most pivotal cases because it has brilliant lawyers and puts them together through an effective cross-office staffing model. Out west, Michael Bettinger
– a 2015 arrival – is “a smart, big-picture litigator with a great courtroom presence”. He is currently linking up with perennial gold-tier occupant David Pritikin in Chicago to deliver a strong one-two punch for Huawei in a fair, reasonable and non-discriminatory (FRAND) related SEP infringement suit against Samsung. Another inveterate California campaigner is Patricia Thayer
, who “demonstrates incredible diligence, attention to detail and pragmatism”. She and Vernon Winters
supported DC’s Jeff Kushan and Pritikin in one of the first biosimilar cases in the United States; the team prevailed for Amgen at the Federal Circuit, which ruled that Sandoz had prematurely filed an infringement suit targeting its blockbuster Enbrel drug, and also defeated an inter partes
review filed by the Coalition for Affordable Drugs on a patent relating to the same product. Winters has a deep playbook for such multifaceted disputes. Sidley has an equally illustrious global transactional practice and one of the largest dedicated groups of any firm, with over 60 specialised lawyers on deck. Palo Alto-based Glenn Nash
co-leads this with Chicago’s Jeffrey Rothstein and New York’s Jennifer Coplan. “When Sidley got Nash in 2012, it was a real coup for its patent transactions practice in the Valley. He never gets in the way of a good deal and is excellent in terms of client service.” He is up on all the latest advances in the burgeoning Internet of Things space and is acting for manufacturing analytics company Sight Machine on a variety of agreements.
Skadden Arps Slate Meagher & Flom LLP
Skaddens' ability to shepherd ground-breaking patent and technology transactions to close is scarcely matched, thanks to the seamless integration of its award-winning corporate group and its much-respected IP division. “The team is phenomenal through all phases of a deal and the level of its client service is unparalleled.” The firm has also mastered the art of patent litigation, with blue-chip corporations coming calling when they urgently need help. Head of IP litigation James Elacqua
isn’t about run of the mill NPE actions – he has the cool head, experience and tactical nous that can turn the tide in challenging, must-win competitor battles. In cases implicating core content identification technology, he is currently acting for Google and YouTube as defendants in two separate Southern District of New York suits.
Steptoe & Johnson LLP
Patent litigation is a stronghold for Steptoe & Johnson’s IP team, which shines at the ITC, in district court battles and at the PTAB. Turnover has been an issue on the West Coast, but with Palo Alto managing partner William Abrams
in the fold, the firm is always going to be under consideration for serious trials and appeals. Abrams has been busy in a major trade secret tussle against T-Mobile for client Huawei Device lately. Highlighting the strength of his, and the firm’s, Asia practice and clientele, he has also been acting for SK Hynix in another big-ticket piece of trade secret litigation.
Sullivan & Cromwell has a flair for the fine print of deals which are fundamentally patent driven and is distinguished by its experience of industry-shaping matters across many different sectors and geographies. Bringing together the world’s largest generic drug company by sales with the third-largest competitor in the market, Nader A Mousavi
advised Teva on its $40.5 billion acquisition of Allergan. A small point worth noting here is that Sullivan & Cromwell stepped in after negotiations had started, when a potential conflict of interest arose for Teva’s existing deal counsel; only one or two firms in the world could get immediately up to speed on a deal such as this. Few, if any, are better than Mousavi at devising complex contractual structures that achieve the precise business objectives of clients. The celebrated Silicon Valley lawyer is “incredibly smart and a really nice guy who is easy to work with”.
Tensegrity Law Group LLP
Tensegrity is the brainchild of Matthew Powers
, an elite patent trial lawyer who is hailed as “incredibly smart, confident and aggressive”. “Matt has always been tough, but he also knows the law and is outstanding at giving advice to clients.” Fellow founder Paul Ehrlich
shares similar qualities and keeps his cool while zealously advocating for patrons. The team is at its best when the stakes are highest and backs itself by offering a variety of contingent fee and other incentivising billing arrangements; the hourly model is firmly out of favour here. Many of its recent successes have come by way of settlement, which confirms the value of its exceptionally thorough trial preparation.
Van Pelt Yi & James LLP
Cupertino collective Van Pelt Yi & James prosecutes patents with an unwavering focus on quality and commerciality, but brings a whole lot more to the table in the form of strategic litigation counselling and licensing expertise. Founding partner Lee Van Pelt
is “very practical with the advice he gives” and “does a great job helping clients”. “His success simply boils down to the fact that he knows the law, knows the tech and is a very smart strategist.” Peers acknowledge that “he excels at litigation analysis and preparing opinions”.
Weil remains a go-to for sophisticated technology and life sciences companies when core business threats are detected; the group’s track record at trial inspires a great deal of confidence in its representation. The firm’s West Coast superstars, Edward Reines
and Jared Bobrow
, have kept the hits coming this past year. Gold-rated advocate Reines made what the judge called a “rare and powerful case” for a preliminary injunction (which he won) on behalf of Illumina against DNA sequencing rival Qiagen in a September 2016 Northern District of California suit. The “top appellate lawyer” also triumphed at the Federal Circuit for Adobe, following on from a district court win which included a successful motion to transfer from the Eastern District of Texas to California. Bobrow “has gotten some remarkable results”, including a Marshall, Texas victory for Samsung in a dispute over semiconductor lithography technology and a clean sweep for T-Mobile and a defendant group of major wireless carriers on Section 101 grounds, affirmed by the Federal Circuit. Weil’s patent and technology transactions group also operates at the cutting edge, routinely sealing transformational deals in the high-technology and life sciences sectors. John Brockland
, who has done some eye-catching acquisition work for Synopsys and Adobe recently, and fellow Silicon Valley specialist Karen Ballack
are big names in the industry.
White & Case LLP
White & Case never deploys the standard playbook in patent litigation, but thinks outside the box on tactics in a way that chimes with some of the world’s leading innovators. However, inside the courtroom – an environment in which its collective group has abundant experience – it chooses to keep things simple and is highly effective at distilling a case down to its core elements in a relatable way. Silicon Valley partner Jeannine Yoo Sano
does this exceptionally well and is building a reputation as “an extraordinary trial lawyer”. “She loves being in court and has a real passion for trial work, which pays off in terms of the results she has been getting.” “White & Case has a really solid team” and Bijal Vakil
is another Palo Alto professional who is really building up a head of steam. Of late, he teamed up with DC colleagues on a crucial case for GlobalFoundries before the PTAB: their client was accused of infringing 275 claims across seven patents, but they pulled out all the stops to earn one of the largest PTAB victories recorded. A number of trial lawyers here have strong technical credentials: Warren Heit
, for example, comes from an electrical engineering and computer science background and was a missile systems engineer before joining famed boutique Pennie & Edmonds ahead of his White & Case tenure. He has a global perspective on intellectual property and business and, as well as being a prize patent trial lawyer and commercial litigator, is also an experienced international arbitrator. White & Case’s expansive geographic footprint is also leveraged by the IP and technology transactions contingent which, as of January 2017, includes cross-border deal broker extraordinaire
and former Skaddens partner Carrie LeRoy
. One client reports: “I have worked with many outside IP counsel and Carrie is by far the best IP transactions attorney I have seen. I always have full confidence in her advice and know that things will be done on time and with the utmost degree of quality.” “She has a rare breadth and depth of knowledge concerning the semiconductor industry.”
Wilmer Cutler Pickering Hale and Dorr LLP
“Brilliant on patent litigation” and able to provide assured answers to any prosecution or transactional question, WilmerHale is one of the pre-eminent full-service firms on the IP scene. Though Boston’s Bill Lee makes most of the headlines, the ensemble has some terrific assets in California, including IP litigation co-chair Mark Selwyn
and coast-to-coast protection and enforcement expert Jason Kipnis
, both based in Palo Alto. Acting for some of Silicon Valley’s most celebrated companies, Selwyn has won verdicts in district courts across the country, as well as the ITC. Sources praise his exemplary brief-writing skills and describe him as “excellent in front of a judge”.
Wilson Sonsini Goodrich & Rosati PC
“Wilson Sonsini has an incredibly strong corporate and IP brand, and is one of the most respected outfits in Silicon Valley.” On the patent side, the technology and life sciences devotee is best known for its transactional mastery and ability to close deals by blending the expertise of its IP, commercial and tax groups, among others. “Excellently designed to assist clients at all stages of development”, it also sees an amazing variety of transactions, which keeps it sharp and ready for anything. The partners on speed dial are Selwyn Goldberg
, Michael Murphy
and Kenneth Clark
. Goldberg has been with the firm for over 20 years, but also spent time at Weil, Gotshal and Cravath – both of which have top-tier transactional offerings – before joining; he is steeped in the practice and has a particular flair for brokering international agreements. Computer systems engineering expert Murphy is a versatile operator with a keen prosecution and licensing mind. A sage commercial strategist, Clark often fills general counsel roles for clients. The firm’s litigation practice is doing well now and, with individuals such as Stefani Shanberg
on board, looks set to have an even brighter future. “Stefani is really developing her profile, networking, putting on programmes and bringing good folks together. More to the point, she has built a nice team that is doing great work for great clients. She is a smart, creative and efficient litigator.” Another source – a prominent name in the industry – calls her “imaginative, motivated and enthusiastic – really impressive”. Palo Alto’s Michael Levin
– an ace on FRAND licensing disputes and standard essentiality – is another lawyer entering his prime. Bringing a lifetime’s seasoning to the contentious practice, Edward Poplawski
is a “strong, well-established SoCal IP litigator” who knows how to handle things in the courtroom when the pressure is on. Expertise in patent procurement, protection and monetisation in the medical device industry is another string to Wilson Sonsini’s bow, and one that is pulled taut by James Heslin
, an aficionado who understands the commercial fabric of the industry.
“Winston & Strawn does a lot of work for high-profile clients and can really compete at the top end of patent litigation in multiple areas, from pharmaceuticals to high technology.” The firm’s outstanding trial brand may not be as well known in California as it is in the Midwest, but its crew members out here are all lifelong West Coasters who know what it takes to win business and satisfy clients with both service and results in this intensely competitive market. David Enzminger and Michael Tomasulo have lately been setting high scores on behalf of several top videogame companies, including Activision and Nintendo, in a case in which many of the leading games publishers are under attack. This is a good example of the sort of boss battle in which Winston shines, given its wider industry impact. As co-chair of the firm-wide IP practice, Enzminger has been the key architect of Winston’s ongoing rise to prominence in this part of the country. Los Angeles-based Tomasulo, who has also played a significant role in this effort, is hailed as “an excellent strategist who is always thinking of creative ways to achieve clients’ objectives”. The go-to in San Francisco is David Bloch who, together with Chicago’s Michael Brody, recently earned a pivotal win for Cox Communications in its bareknuckle brawl with Sprint over foundational voice over Internet Protocol technology. In another competitor-on-competitor tussle, this time in the smartcard arena, he is acting for CPI Card Group against Gemalto in a case with unusual inter partes review elements – the Western District of Texas court stayed Gemalto’s suit even before the PTAB had instituted the inter partes review. In April 2017, the firm unveiled new signing Kathi Vidal; the distinguished litigator takes the reins of the Silicon Valley office.