Alston & Bird LLP
Alston & Bird’s blend of patent, regulatory and antitrust expertise is a magnet to life sciences companies, which flock to it in their droves. Another fusion that clients love is the youth, vigour, commitment and experience of the New York patent litigation team, which comprises Natalie Clayton and Thomas Parker. All three have broadly similar practices and serve as lead counsel for generic drug manufacturers in cases under the Hatch-Waxman Act, and all possess a fine-milled understanding of the business underlying the drug industry. Trusted as a business partner as much as a lawyer, Clayton litigates with commercial goals at the forefront of her mind. Parker, meanwhile, is noted for his “easy-going style that plays well in front of judges”; “he has the right temperament for effective litigation”. However, the firm is no one-trick pony and maintains an uncommonly well-rounded patent practice for a full-service commercial outfit, as a result it can assist with prosecution and validity and infringement analysis across all technical disciplines.
Arnold & Porter Kaye Scholer LLP
Few firms are as embedded in the pharmaceutical and biotechnology sectors as Arnold & Porter; years litigating for and advising a who’s who list of marquee companies gives it a clear edge in a law firm market which, when it comes to the life sciences, is becoming ever more competitive. Aaron Stiefel
and Daniel DiNapoli
fly the flag in New York, where they run a high-flying patent litigation practice. They make an excellent team – Stiefel is a guiding light when complex regulatory matters muddy the waters, while DiNapoli adds tremendous value with his strategic creativity. Of late, the pair have been representing long-term patron Pfizer, protecting blockbuster drugs including Viagra and Celebrex. Another seasoned lead trial counsel, David Barr
has been on the money in his representation of Novartis in multiple Hatch-Waxman actions concerning its flagship drug Gleevec; he also recently earned the dismissal of a class action lawsuit against the company alleging an anti-competitive effort to extend its Gleevec monopoly. Sources observe: “David is exceptionally smart and has huge pharmaceutical experience. He has naturally branched into biosimilar litigation and is doing a great job there; he has also been really active in the post-grant space.” The theme of winning tough infringement battles for blue-chip businesses is sustained by Arnold & Porter’s high-tech litigators, with James Blank
among them. He recently won a Federal Circuit affirmance of a non-infringement judgment he secured in Nintendo of America’s favour, putting to bed a six-year fight with Tomita Technologies.
Baker Botts LLP
The patent lawyers at Baker Botts act like an extension of the in-house teams they serve; chief patent counsels get all the access they need to partners and associates, and feel confident maintaining an open and frank dialogue with them that inevitably leads to better patent protection, enforcement and monetisation. A top contact for the C-suite is Daniel Hulseberg
, who takes a hands-on approach to all the work he does. A transactional maven with prosecution expertise, he has been going great guns this past year, fuelled by increasing confidence and a shift in the mentality of the medical device industry, which is looking more towards corporate venturing and business development through licensing and acquisitions, and relying less on internal research and development. As technology and industry converge, Hulseberg has also become adept at blending the different skillsets of the lawyers around him. Another repository of trust is the incredibly versatile Paul Ragusa
, who receives stellar feedback across the board: “Paul is an extremely skilled prosecutor who delivers quality work on time and within budget. With respect to the licensing of standard-essential patents (SEPs), his advice is impeccable and invaluable. In litigation, he is reliable in cost-effectively bringing disputes to a successful close.” Among his key clients is Columbia University, whose worldwide patent portfolio he manages and monetises. More litigation focused, but nonetheless proficient in all aspects of patent practice are Robert Scheinfeld
and Robert Maier
. Scheinfeld has been on a rocket ride recently, with trials left, right and centre; he understands the business objectives of his clients and is transparent as an adviser, which is why he is trusted when everything is on the line. His highlights include a big win for Fujifilm over Sony at the International Trade Commission (ITC), whose LTO Ultrium 7 data cartridges were found by the judge to have infringed two of Fujifilm’s advanced storage technology patents. Frequently found battling with him in the trenches is Robert Maier
, who exhibits total dedication to his craft, excellent judgement and an ability to think on his feet. Maier has also been working with seasoned advocate Neil Sirota
of late, earning a Federal Circuit affirmation of an earlier jury trial victory for Samsung Electronics against plaintiff ContentGuard Holdings in the plaintiff-friendly Eastern District of Texas.
Taking a cross-disciplinary and highly collaborative approach, Cravath, Swaine & Moore is a class apart in terms of providing integrated solutions to the most pressing legal and business problems faced by industry leaders. With many of these engineering ever more sophisticated and complicated transactions – and seeking a law firm to light the path for them – the prestigious New Yorker is in hot demand. When it comes to big deals and strategic alliances with intricate risk-sharing provisions, there is nobody better than David J Kappos
. He got a lot done in 2017 to say the least; before the summer was out, he represented Biogen in connection with its $1.25 billion settlement and (vastly complex) licence agreement with Forward Pharma and closed Johnson & Johnson’s record-breaking $30 billion acquisition of Actelion. Kappos also continues to be right at the heart of the global IP policy discussion; advocacy in this domain is a crucial part of the role he plays for his clients. It is all just as impressive on the litigation side of the practice, with advocates such as Keith R Hummel
consistently hitting home runs. He has been incredibly busy lately working on sprawling cases, the best example of which is Apple v Qualcomm
; defending Qualcomm, he has been making optimal use of his broad commercial and antitrust litigation expertise. “Keith provides excellent strategic and tactical advice, and he knows when to be aggressive and when other approaches fare better. He cooperates well with in-house scientific experts and really digs into the technical detail – he isn’t someone who just knows how to litigate. He plays well with other law firms, too, and doesn’t have sharp elbows, and he listens to his clients and treats them with respect while providing top-notch work on time.” With him on the Qualcomm
case are chairman Evan R Chesler
and Richard J Stark
, both dyed-in-the-wool trial lawyers for whom setting litigation benchmarks is an everyday occurrence. Stark is one of the most diligent lawyers out there and makes a well-deserved debut in the IAM Patent 1000
this year. With Hummel representing Amgen against Abbvie in one of the first cases to proceed under the Biologics Price Competition and Innovation Act is David Greenwald
who, like his colleagues, comes in for resounding praise. “David is stiletto sharp and a master strategist who analyses issues from all angles. He is loyal and dedicated and always prepared with contingency plans to ensure that he gets the best possible outcome. He also has an exceptional understanding of the technical and scientific underpinnings of a case.” American College of Trial Lawyers fellow David R Marriott
is yet another impressive option. An artful persuader of judges and juries, he is also well suited to alternative methods of dispute resolution.
A decrease in low-end, broad-based assertions against multiple defendants brought about by changes in the law has caused problems for a lot of firms; although this does not apply for Desmarais – an elite trial outfit that deploys when there are substantive disagreements over the most commercially valuable patents. Of late, it has seen an increasing flow of instructions from tech titans such as Cisco Systems and Apple, while sustaining fruitful relations with others such as IBM. However, the set cannot be limited in terms of technology or sector and its life sciences practice is going strong too. Alongside such versatility, another notable distinguishing feature is the group’s proficiency on both sides of the docket, with its representation of plaintiffs and defendants split roughly 50/50; this enhances the credibility of Desmarais advocates, because they are not pounding the same old story all the time, but instead focusing purely on the merits of their cases. Although famous for its trial nous, the group also knows how to move the needle in post-grant settings and has fared extremely well in inter partes
reviews by preventing institutions at a higher than average rate. Leading the way is John M Desmarais
, “a fantastic advocate who is always prepared and who conveys complex arguments in a direct, clear and seemingly simple manner”. “His success record is unmatched, and anyone who engages him can know they have chosen the best of the best.” He is by no means the only individual capable of putting in a performance of great éclat
; another “brilliant strategist with exceptional courtroom skills” is Alan S Kellman
. “He is a hands-on case manager who assembles a first-rate line-up of talent for each matter. He genuinely values client input and collaboration and is attentive and responsive at all times. He has a unique ability to translate very complex technical and legal issues into understandable and digestible packets of information for judges and juries and is also a very talented cross-examiner, especially of expert witnesses – he has (politely) dismantled several extremely prominent technical experts in his time.” Paul A Bondor
has netted billion-dollar awards and continues to be in hot demand as a result. He is currently defending Nokia in an 11-patent suit filed by Blackberry as part of a formidable team with Kellman and Jonas R McDavit
. In addition to this case, McDavit has also been representing Intellectual Ventures against Toshiba in another multi-patent case, winning a liability verdict on the way to a successful resolution. Playing point on some of the Apple work is Michael P Stadnick
, a litigator who possesses “superior strategic thinking and analytical ability”.
Fish & Richardson PC
With its army of PhDs and other highly qualified technologists, Fish & Richardson boasts virtually unrivalled technical expertise – something which it deploys to great effect in prosecution, litigation and post-grant settings. One of the side’s doctors in New York is Jack Brennan
, a top prosecutor and counsellor in the biopharmaceutical space. For a master in the electrical arts, look no further than Samuel Borodach
, who has a broad perspective that serves him well as a strategic adviser, opinion giver and post-grant counsel. The side also has litigation talent in the Big Apple too, in the form of Michael Zoppo
, who has been firing on all cylinders advocating for rights holders in the financial sector. He really understands how sophisticated and innovative financial services companies do business, which gives him an edge in many ways, evidence gathering being one example; in a recent case he gathered US Securities and Exchange Commission comment letters to shed light on the awareness a plaintiff had of the alleged misconduct of his accused client.
In the words of one top in-house counsel: “Fitzpatrick is smart, efficient, experienced and cost-effective, and an excellent resource all-round. It has a deep bench and trains associates well.” This reference was given in respect of the firm’s high-tech patent litigation practice, central to which is electronics, computer and software chair Michael P Sandonato
. His group has had an exciting time of it recently; a particular highlight being a 10-day jury trial in Atlanta for long-term patron Canon, which resulted in a finding of wilful infringement of Canon toner bottle technology patents by Color Imaging. “Mike demonstrates incredible intellectual agility, and is highly responsive in a dynamically changing area of law. He focuses on – and effectively presents – the best arguments, which makes him a very efficient lawyer.” The litigation department is chaired by polished and thoughtful trial lawyer Scott K Reed
. He is great in the role because, having both electrical and life sciences experience, he unites and gives a common purpose to the two wings of the practice. Fitzpatrick is, of course, best known for its clout in pharmaceutical and biotech litigation, and it continues to sit at the apex of the law firm market serving the life sciences sector – as such, it is business as usual for Dominick Conde
and his colleagues. Conde is “among the very best branded pharmaceutical litigators” and someone who is “able to digest a vast amount of technical information very quickly, and wade through to identify the fundamental strengths and weaknesses of a case”. “He is very strategic, too, and has an ability to simplify complex information, including with regard to potential risks and rewards, for those without an IP background – in that way, he helps clients participate in the decision-making process.” Also coming in for considerable praise jointly are John Murnane
and Alicia Russo
: “They have unparalleled industry knowledge and develop expertise regarding their clients’ product lines very quickly. They commit to a schedule and work hard and efficiently, handling all matters promptly and excellently. Their guidance is invaluable.” Russo makes her first appearance in the IAM Patent 1000
this year and is seen to be one of the sector’s most promising up and comers. She is a key cog on the team running the Fitzpatrick’s BiologicsHQ database. Other go-to professionals are William E Solander
, a key contact for Sanofi, and Bruce C Haas
, a nearly 30-year partner who has been instrumental in keeping the firm at the top of the pharmaceutical totem pole.
Gibson Dunn & Crutcher LLP
A “board-safe name” for in-house counsel to call when the storm clouds gather, Gibson Dunn & Crutcher has a “well-organised patent litigation practice” and “some high-profile trial lawyers in New York”. One of those is Benjamin Hershkowitz
, who is “super-solid in court”. “He has a reasonable man style which is really effective – he gets the job done without drama.” Others include Daniel Thomasch
, an American College of Trial Lawyers fellow who co-chairs the life sciences practice and Brian Rosenthal
, who is both one of the market’s rising stars and an experienced and accomplished lead counsel. Perhaps the biggest of the bunch though, is Josh Krevitt
, a swashbuckling trial lawyer who is constantly in the headlines and always for the right reasons. Among his big recent wins is a total victory in the ITC for Fitbit, against whom Jawbone had asserted infringement of six patents and misappropriation of more than 150 trade secrets.
Goodwin Procter LLP
Given the decline in high-tech patent litigation filings, commercial firms that have invested heavily in their IP practices in recent years now have their sights keenly trained on the life sciences sector for growth opportunities, but matching the services of an incumbent pharmaceutical and biotech industry leader like Goodwin Procter is an almost impossible task. Famous for its Teva efforts, it runs one of the best Hatch-Waxman Act litigation practices in the country but has also carved out a leadership position in disputes under the Biologics Price Competition and Innovation Act. A replete roster of life sciences pros looks to chairman David Hashmall
and Elizabeth Holland
for leadership, and in so doing become inspired. Holland is respected as an “extremely tenacious advocate for her clients” and someone who “can be counted on to do a fantastic job”. In May 2017, she achieved a major trial victory in Delaware for Actavis Laboratories; the court’s ruling in the case filed by Cosmo Technologies and Santarus is thought to be the first occasion on which the District of Delaware has granted a judgment of non-infringement under Rule 52(c) of the Federal Rules of Civil Procedure governing judgement on partial findings. Speaking of biosimilar litigation, Robert Cerwinksi
, Huiya Wu
and Cynthia Hardman
have been helping to pave the way for a Korean biotech concern to market a biosimilar version of Genentech’s Herceptin product in the United States by doing great things in inter partes
review. Cerwinski worked for a Japanese pharmaceutical company and prosecuted biotech patents before entering the law; the technically sophisticated litigator is one of the editors of the firm’s Big Molecule Watch blog. Wu is meticulous in her attention to detail and is brilliant at ensuring that complex cases run smoothly across all litigation phases. Hardman debuts in the IAM Patent 1000
this year thanks to her sterling efforts leading the Patent Trial and Appeal Board (PTAB) practice. Artfully crossing technical divides and bridging the life sciences and high-tech practices at Goodwin is Ira Levy
. He has earned trial victories thick and fast of late, including for Teva and Dr Reddy’s Laboratories. Mark Abate
is a discerning choice for hard-fought battles; a good example of one of these is The Gillette Company v Dollar Shave Club
, in which he is acting for the plaintiff. In May 2017 he secured a favourable claim construction ruling for Gillette.
Greenberg Traurig LLP
Greenberg Traurig has had its share of troll defence instructions, but it has always played a good competitor-versus-competitor game; this has allowed it to buck the downward trend in US patent infringement filings and stay busy. In fact, the patent litigation practice has grown exponentially of late, necessitating a hiring spree in New York; Scott Bornstein
, a co-chair of the global IP and technology faction, has been savvy about picking off some great associates from competitors which perhaps have less to spread around – and adding diversity in the process. Bornstein is one of the most experienced Greenberg trial lawyers, having taken the lead on over 100 patent litigations; a charismatic, high-energy guy, he brings about commercially desirable results for big hitters in the technology and life sciences theatres. In the latter, Jonathan Ball
and Richard Pettus
manage a slew of Abbreviated New Drug Application cases alongside Bornstein. Ball has a PhD in organic chemistry alongside prosecution experience, so is always on top of the technical details of his cases, while Pettus adds value by virtue of his fine-milled trial skills. Concentrating on pharmaceutical and biotech cases, but operating in fields as diverse as financial services and avionics, Allan Kassenoff
has also been central to the group’s success. Anchoring the high-tech and medical device practice, and serving up post-grant expertise to his colleagues and a broad swathe of the firm’s clients, is Joshua Raskin
, who chairs the Greenberg New York IP and technology wing.
Haug Partners LLP
Haug Partners astutely deploys an interdisciplinary scheme of legal thinking, which enables it to solve the thorniest IP problems without breaking a sweat; in a litigation context, for example, it leverages antitrust and regulatory expertise to put complex life sciences and other disputes to bed. High-pressure pharmaceutical litigations are meat and drink to its cadre of seasoned trial lawyers, at the forefront of which are EdgarHaug
and Porter Fleming
. Managing partner Haug is a repository of trust for companies heading into battle against their arch business rivals. He complements his trial know-how with extensive appellate expertise; testament to his high-standing in the appellate community, he recently served as president of the Federal Circuit Bar Association. Fleming has leadership qualities in abundance, and clients are only too happy to follow his innovative and, ultimately, persuasive trial strategies. As an inspiring captain of the litigation group, he handpicks the best team for each case and gets everyone pulling in the same direction. Holder of a biochemistry PhD, Angus Chen
is incredibly important to the team, given his technical acuity, in-house experience in the pharmaceutical industry and concomitant business sensibility and regulatory nous.
Hogan Lovells US LLP
With Tony Pezzano
, Eric Lobenfeld
and Arlene Chow
on deck, Hogan Lovells can throw weight behind any life sciences and technology, media and telecoms patent infringement action. In recognition of this, the firm makes its debut in the IAM Patent 1000
New York chapter this year. Pezzano has an impressive track record advocating on behalf of pharmaceutical innovators and he continues to mine a rich seam of success in this regard. This is also true for Chow, as one opposing counsel enthuses: “Arlene acquits herself admirably at trial and puts in an impressive performance. She has a strong grasp of technical issues, and knows her client well. She also reaches across the aisle to negotiate reasonably while never failing to advocate strongly for her side.” Patent and technology transactions are another happy hunting ground for Hogan Lovells which has a sought after deal broker in the form of Adam Golden
. Head of the New York corporate group, Golden is equal parts M&A lawyer and IP transactions lawyer; whatever the nature of the deal to be inked, “he cuts to the chase and accomplishes exactly what the client wants without any theatrics”.
Hughes Hubbard & Reed LLP
Hughes Hubbard & Reed has substantially deepened its litigation bench in recent years and recruited wisely. The enlistment of Stephen Rabinowitz
and James Dabney
in 2014 was a watershed moment, while the arrival of Patrice Jean
also helped to propel the firm further into the limelight. Rabinowitz is fluent in all the finer points of pharmaceutical and biotech litigation and is much respected as a creative strategist. Everyone has been talking about TC Heartland v Kraft Foods
, which significantly changed the law on patent venue, and it was Dabney who won the all-important Supreme Court reversal in favour of TC Heartland. Peers observe that “Jim has been in front of the Supreme Court and changed the game of patent litigation several times”. Jean is hailed as “a fantastic litigator who is quick on her feet and who is not intimidated by even the most difficult judges”. “She has a powerful intellect and is really effective, but easy to work with and not arrogant in the slightest.” She also maintains a thriving prosecution practice alongside her litigation work.
Hunton Andrews Kurth LLP
Andrews Kurth Kenyon and Hunton & Williams merged in April 2018, giving rise to a new 1,000-lawyer organisation with an expansive domestic and international footprint. What this means for the IP practice of the former time will tell, but it certainly gives patent aces Clifford Ulrich
, Michael Lennon
and John Flock
a greater number and variety of tools to deploy for the benefit of their prestigious tech clients. In many respects – chiefly getting great results for industry leaders – it has been business as usual for the crew of late. Ulrich and Lennon have been fighting for Volkswagen Group of America in infringement litigation involving wireless and information and display technology patents against West View Research; the case involved eight different inter partes
reviews, all of which the team won. Both seasoned litigators, Ulrich is also a leading light on post-grant proceedings, while Lennon is a licensing and transactions authority. Flock has continued to quarterback important suits for a top Japanese electronics company and in connection with these, has been a fixture at the ITC. His philosophy is based on putting the client first and building lasting relationships.
Part of the global legal elite, Jones Day maintains a 250-strong IP section which is perfectly poised to protect, defend and enforce rights across borders. Its US practice, taken by itself, is incredibly robust, and not just in litigation; the domestic contingent draws on exceptional resources and procures and commercialises patents with alacrity. One of its top prosecutors and counsellors – and the head of its global prosecution group – is based here in New York; the name you need to know is Adriane Antler
, who serves as a commercial and strategic ally to pharmaceutical and biotech companies. “Adriane has an incredibly high IQ, a terrific science background and impressive academic résumé. However, one of her biggest assets is the meticulousness of her approach – she’s not satisfied unless a task is completed 100%.” The firm has amped up its litigation team in Manhattan recently, but the local crew has long been a force to be reckoned with. Former Pennie & Edmonds lawyer John Normile
has been with Jones Day for nearly 15 years, during which time his commitment to excellence and his clients has never wavered. “John is brilliant at creating and executing great litigation strategies. He makes complicated matters simple and takes a comprehensive approach that goes beyond patent law to accomplish the goals of his clients. He’s one of the best litigators for complex pharmaceutical matters.” Of late, he has been representing Purdue Pharma in a slew of Hatch-Waxman disputes involving Purdue’s OxyContin product – the most commercially valuable in its portfolio. With him on this is Pablo Hendler
, an experienced lead counsel who blends deep patent law and regulatory knowledge. While both Normile and Hendler specialise in pharmaceutical matters, Christopher Harnett
operates across a diverse technical spectrum. He develops clear and compelling trial themes early on, which serves him well in court and at the negotiating table.
King & Spalding LLP
King & Spalding has purposely designed a boutique-like IP department that can cater to the full patent, trademark and copyright needs of its clients. It shines brightest when protecting cutting-edge technology and has an array of technical experts to dot Is and cross Ts; many of these also have industry experience on their CVs, enhancing their commercial acuity. A jewel in the King & Spalding crown is the biotech and pharmaceutical practice, an engine of which is Kenneth Sonnenfeld
. One of the few New Yorkers recommended in the IAM Patent 1000
for prosecution, litigation and transactions, Sonnenfeld is a true renaissance man. For authoritative opinions on subject matter eligibility, look no further.
An apex predator in US patent litigation, Kirkland & Ellis is stacked to the rafters with intellectually gifted, strategically minded and vastly experienced trial lawyers forged in the fires of the toughest technology battles. Operating in all industry sectors and appearing in all forums, there is no case it is not ready for. In spite of the loss of Steven Cherny to Quinn Emanuel, the side’s preparedness endures; with Gregory Arovas
and Leora Ben-Ami
on deck, this is to be expected. Hailed as a “tremendous lawyer and one of the smartest guys in any room”, Arovas commands the respect of the entire legal profession and the technology world. As a fellow gold-tier member at a competitor reflects: “Some folks get to the top level and become less engaged in the work – not so with Greg. He is incredibly responsive – I’ve never called and left a message and waited more than 10 minutes to hear back. He’s tireless and manages large cases flawlessly.” Just as Arovas is among high-tech industry leaders, Ben-Ami is a lodestar for cutting-edge innovators in the life sciences realm. In Patricia Carson
, the firm has another doyenne of the pharmaceutical and biotech industries. Robert Appleby
adds to the mix not just with his trial expertise but also with his broad IP knowledge – which encompasses design patents, copyrights and trade secrets – and his appellate savvy. Kirkland & Ellis’s tenure in the patent and technology licensing domain is far longer than most of its competitors can claim for themselves, and with specialised lawyers on the US East and West Coasts and in London, the firm is in pole position to seal transatlantic and global deals. Well-accustomed to such mandates, David MacDonald
manifests a rare faculty for facilitating complex collaborations and transactions between life sciences entities.
Leason Ellis LLP
A central thread of the Leason Ellis narrative has been careful, judicious growth, crucial to which has been attracting the right talent and enabling it to blossom. Managing partner David Leason
has fostered an incredibly supportive environment in this regard; under his watch, the Leason Ellis lawyers constantly learn from one another, which enables them to provide extremely well thought-out advice. As a counsellor himself, Leason takes a rigorously commercial approach, which has also filtered down throughout the organisation. The life sciences sector continues to be a stronghold for the boutique thanks to the assiduity of practice chair Elizabeth Barnhard
. She works wonders for her patrons on a daily basis, which include the Champalimaud Foundation, whose patents she has protected by overcoming difficult subject-matter eligibility hurdles. Returning the favour, clients are more than happy to give her an enthusiastic recommendation: “Elizabeth is extremely professional and proactive when it comes to prosecution. She also has a fine-tuned understanding of her clients’ context and mission. She and her team know both the US and European patent systems and are savvy in developing the best international protection strategies.” Physician and patent attorney Michael Davitz
is another touchpoint for those in need of cross-border protection – he has obtained patent rights in most regions of the world, and has particular experience with European oppositions. He is a popular guy who is warmly recommended for his “passion, good sense of humour and diligence”. The firm also knows a great deal about Asian markets, and has dedicated China and Japan practice groups. As a fluent Cantonese and Mandarin speaker, Susie Cheng
is in pole position to help her loyal biotech and pharmaceutical patrons protect and commercialise their intellectual property and conduct important business in China. Chairing the Japan group is business-minded litigator and high-tech savant Melvin Garner
. Clients are quick to highlight his ability to “get excellent results”; his practice is constantly growing as a result of enthusiastic word-of-mouth recommendations. “Always well prepared, Mel is unflappable in court and great at thinking on his feet.”
Mayer Brown LLP
With life sciences patent holders taking more to the inter partes
review system, Mayer Brown has experienced major growth in its post-grant practice; it has had some big wins too, adding to its already impressive track record of success keeping generic drug manufacturers off the market. That its biologics litigation practice is also expanding helps to underscore the fact that Mayer Brown is right in the vanguard of developments in the pharmaceutical and biotech industries. Ensuring this is Lisa Ferri
, “an excellent litigation strategist and one of the market’s best legal writers”. Her group is incredibly nimble and can adapt quickly to changing circumstances; she pitches on that, but also on experience – which is a wise move when collaborating with Colleen Tracy James
. Ferri and James are both lawyers who can be counted on to deliver when billions of dollars and businesses at stake. Another star in the Mayer Brown life sciences constellation is Brian Nolan
, who litigates and executes patent transactions with dexterity. John Mancini
, meanwhile, represents household names in the high-tech domain. “John is absolutely fantastic – he is humble, constructive and client friendly, and working with him is a joy. He gets great results, too.” It reflects well on his mentorship that references feel compelled to recommend associates on his team; one of those is Clayton McCraw, who is “technically excellent and able to dig in and get all the relevant details from witnesses”. Something worth noting – all of the lawyers in the group capitalise on the firm’s top-drawer appellate and antitrust practices.
Milbank, Tweed, Hadley & McCloy LLP
Milbank’s relatively young but incredibly successful patent litigation team fares well whatever is thrown at it; whether that be a life sciences case involving monumentally complex gene technology – the set has PhD-level scientists who are superb litigators – or a dispute over a computer-implemented invention – it has software designers who are also superb litigators. Only adding to its allure, the firm helps clients run a sensible business by staffing lean teams that meet budgetary expectations, but above all it really cares about the work and never fails to put in its heart and soul. The side is often retained to brief and handle any appeals in cases it has tried, because companies want it to see things through, not just hand them off. Bringing a level head to large exposure cases in the electrical, semiconductor, IT, financial services and medical device fields is Christopher Gaspar
. “Chris has such an appealing and credible presentation style, which is balanced and informative.” It is a style which lends itself well to alternative forms of dispute resolution; in March 2017, he won confirmation from the US Court of Federal Appeals for a $456 million-plus payment to Bayer Cropscience following an earlier US district court victory over, and subsequent commercial arbitration with, Dow AgroSciences over genetic engineering technology. Overseeing a redoubtable biopharmaceutical practice, meanwhile, are Errol Taylor
and Fredrick Zullow
, who “form a brilliant pairing for complex litigations”. “Errol has an excellent understanding of the business interests of his clients and the strategic thinking he exhibits around them is utterly impressive. He is especially good in court, coming across as profoundly knowledgeable and calm.” “Fred’s main strength is his sheer legal ability – he puts together the crispest arguments and conclusions.”
Norton Rose Fulbright US LLP
In the past three years Norton Rose Fulbright has assembled an impressive patent team in New York made up of prosecutors and litigators hailing from the likes of Allen & Overy, Kenyon & Kenyon and Chadbourne & Parke. In recognition of this, it makes its debut in the New York section of the IAM Patent 1000
this year. The most recent and highest profile addition was big-ticket litigator and former president of the American Intellectual Property Law Association Jeffrey Lewis
, who joined from Fried Frank in September 2017. A chemical engineer and registered patent attorney, he is best known for his proficiency in biotech and pharmaceutical suits; representing drug originators against generics is his bread and butter. In terms of style, he is no pushover, but nor is he unnecessarily combative and his clients appreciate the realistic evaluations and pragmatism he brings to a case. The local team sits within one of New York’s 25 largest law firm offices and has abundant resources to tap into in its immediate vicinity; it can also leverage a global platform. In fact, Norton Rose Fulbright does a better job than most when it comes to integrating its various specialists across practice areas and offices; a good example of this is its autonomous vehicle group, which brings together experts in cybersecurity, insurance, regulation and intellectual property in the United States, the United Kingdom and Germany.
O’Melveny & Myers LLP
O’Melveny & Myers has a sizeable set of high-calibre litigators who can take cases to trial and win. Its team in California has an ardent following of marquee high-tech companies, while its New York contingent incites fervour among key movers in the pharmaceutical and biotech industries. Leading the life sciences charge is Lisa Pensabene
, who has had an exciting time of it lately with her representation of AstraZeneca against waves of generic drug companies concerning its Faslodex breast cancer treatment; among other successes, she has defeated institution of several inter partes
review petitions. The experienced first chair litigator – a veteran of over a dozen major bench and jury trials – has also been advising clients with respect to potential litigation involving biosimilar compounds. In all respects, she does “outstanding work” and is “particularly effective at communicating with those she represents”.
Orrick, Herrington & Sutcliffe LLP
A “powerful national player in intellectual property”, Orrick, Herrington & Sutcliffe has a deep bench of lead trial lawyers and can assemble strike forces for industry leaders as they march into battle with their nemeses. Its Big Apple bureau is home to a squadron of veteran advocates, but none come more experienced than Richard DeLucia
, who has taken the reins on cases in the triple digits. DeLucia is a long-established name as a force to be reckoned with in both the high-tech and life sciences realms. Joining Orrick back in 2016 with DeLucia was Elizabeth Gardner
who for decades has safeguarded and advanced the interests of chemical, pharmaceutical and medical device companies in litigation, post-grant and licensing settings. Bringing gravitas to courtroom proceedings, Joseph Calvaruso
is another tried and tested advocate to call on; international actors in consumer electronics, computer hardware and software and financial services, among others, are wedded to his pragmatic, forthright and rigorously commercial approach. An accomplished Supreme Court and appellate practice group is a go-to for clients looking at high-stakes cases with the potential to alter entire industries, and Orrick certainly has this. It is led by Joshua Rosenkranz
who – having argued in the region of 200 appeals, including 17 before the Supreme Court – possesses knife-like skills. A member of the IP and appellate teams, Alex Chachkes
can see an important case through from start to finish.
Patterson Belknap Webb & Tyler LLP
Patterson Belknap is roundly endorsed by contemporaries for the skill and finesse it demonstrates in bet-the-farm patent litigations. It has been winning these for decades, often navigating uncharted territory in the process; whether something has come up before or is totally new, Patterson’s poised trial lawyers here are ready to roll. “Outstanding litigators” Gregory Diskant
and William Cavanaugh
“are big names in the legal world and the pharmaceutical industry, true gentlemen, and a pleasure to partner with”. Both are fellows of the prestigious American College of Trial Lawyers. Lewis Popovski
practises patent litigation predominantly in the high-tech world, and is active across myriad technologies and in trial, appellate and post-grant forums. He dispatches trademark, trade dress and copyright instructions with an equally assured hand.
Paul Hastings LLP
When the chips are down, technology and life sciences innovators immediately pick up the phone to Paul Hastings; the firm provides comfort with its reservoir of litigation talent, tenacity and superb track record. Pharmaceutical and biotech litigation is the metier of the formidable 90-strong New York contingent led by Joseph O’Malley
, Gerald Flattmann
and Bruce Wexler
. On the branded side of the drug industry, they are “extremely aggressive, but they play fair and also have a sense of humour”. There is no denying that Paul Hastings is also among the top PTAB players in the country; in a perfect example of marrying skillsets, Flattmann and DC’s Naveen Modi recently won four inter partes
reviews upholding the validity of four patents on Ampyra, the flagship drug of biotech trailblazer Acorda Therapeutics. The result takes the set’s record in the wave of inter partes
review actions filed by Kyle Bass-founded organisation the Coalition for Affordable Drugs to 9-0. Eric Dittmann
, who makes his directory debut this year, has also tasted post-grant success of late, representing Boehringer Ingelheim in connection with challenges to Abbvie’s Humira patent estate; he succeeded in invalidating all claims in a key patent – a result giving leverage to the client in a ‘first-wave’ biosimilar litigation launched by AbbVie. Alongside him on this was Wexler, who brings strong leadership to the life sciences industry group. Chairing the New York litigation practice is Preston Ratliff II
who continues to burnish his CV with excellent results; in February 2017, he succeeded in blocking three generic manufacturers from going to market with generic versions of Sunovion’s blockbuster Latuda drug. Paul Hastings also flexes transactional expertise and has a prominent IP and technology-focused corporate partner in Samuel Waxman
. He took the lead bringing about an early-stage therapeutics research collaboration dubbed Bluefield Innovations between his client Deerfield Management and Johns Hopkins University; again bringing together academia and Wall Street, he advised the same on the funding of therapeutic research at the Broad Institute.
Paul, Weiss, Rifkind, Wharton & Garrison LLP
A trailblazer in the area, Paul Weiss continues to attract biosimilar litigation instructions by the tonne. While the stats are constantly changing, in April 2017 the firm was present in roughly 50% of pending cases and six out of seven appeals. As strong and busy as it is in this regard, the illustrious side is sinking its teeth into plenty of other biotech matters, and is protecting cutting-edge advances in fields such as haemophilia and DNA sequencing. At the forefront of it all is Nicholas Groombridge
, who is “the complete package as a litigator”. Able to “address the most complex issues in the most meaningful way”, he is highly sought after for cases that keep company board members awake at night. Regularly by his side is Jennifer Wu
, a young lawyer who is taking on the world. “It is hard to make partner at Paul Weiss, but Jennifer did so very quickly. She is incredibly smart and doing a fantastic job in the biologics space.” The group’s style – also showcased by Jennifer Gordon
– is to explain complex science and legal concepts in a thematic way and to pursue a well-defined strategy from the beginning of a case, but without being slavishly wedded to it should a twist or turn necessitate reassessment.
Proskauer Rose LLP
Proskauer Rose has significantly augmented its life sciences prosecution and transactional practices of late, making a slew of astute hires in Boston and Los Angeles. Head of life sciences Daryn Grossman
, a corporate lawyer and transactions maven, has been instrumental in building what is one of the more dynamic practices in this ultra-competitive sector. Elsewhere it has been business as usual which, for the New York crew means counselling C-suites around developments in the law, litigating complex cases involving SEPs and helping connect incubators of technology with more traditional tech companies. Engaged in all these activities, and impressing at every turn is Baldassare Vinti
, a lawyer and prolific commentator who gets fired up by innovation and does a fantastic job bridging the legal and business worlds. He has been defending British Telecommunications against patent infringement accusations levelled by Valve Corporation in the District of Delaware alongside James Shalek
. Head of the patent group, Shalek is as much a gifted counsellor as he is a litigator and has a knack for optimising the market position of his clients by making the right portfolio development moves. Still, most of his work is contentious, allowing his ability to distil down technical concepts and weave a narrative around it to shine. Kenneth Rubenstein
is the guru on standard essentiality and a professional famed for his sheer intellectual horsepower; he can cut through technical and legal complexity whether he is forming and signing licensees to patent pools, conducting invalidity and infringement analyses, advising on competition issues or litigating.
Quinn Emanuel Urquhart & Sullivan LLP
Purely in terms of visibility in patent litigation, Quinn Emanuel pretty much tops the bill; in research for the IAM Patent 1000
, it garnered more spontaneous comments than 99% of firms – nearly all of them resoundingly positive. One Quinn lawyer whose practice has rapidly expanded of late is Dominic Cerrito
, who co-chairs the national life sciences group. “He’s a formidable opponent – he asks great questions, is able to adapt quickly, is good on his feet in court, and has an extremely bright team behind him.” There are many contributors to the outfit’s success in pharmaceutical and biotech disputes, including outstanding advocates Peter Armenio
and Sandra Bresnick
, who co-chair the global life sciences practice. Quinn has many lawyers who cross technical divides artfully; a prime example in New York is Raymond Nimrod
, who works miracles for pharmaceutical and medical device clients, as well as those in high-tech areas such as LED lighting. There are specialists on deck, too; Thomas Pease
is a thought leader on SEPs and FRAND obligations, while Kathleen Sullivan
is an appellate ace in high-end patent cases. What is more, the team is only getting stronger; in May 2017, it welcomed ex-Kirkland & Ellis slugger Steven Cherny
aboard. Back in the day, Cherny practised at Fish & Nieve alongside Edward DeFranco
and the pair are now reunited. DeFranco is a really popular guy who gets a lot of recognition from his fellow gold-tier litigators. “He comes across like a down-to-earth, regular guy, but has this incredible ability to present complex concepts clearly without getting bogged down in details.”
Robins Kaplan LLP
Such is its courtroom mastery, Robins Kaplan is constantly called on for cases that have a high likelihood of proceeding to trial; it is also regularly instructed to take over issues from others that perhaps are not performing at the highest level. It acquits itself with particular distinction in disputes implicating vanguard technologies and has always trained a keen eye on where the tech is heading. New York managing partner Ronald Schutz
thrives on cases involving science that could have profound implications for the US and global economy. The American College of Trial Lawyers fellow boasts one of the highest win rates of any IP litigator in the country.
Ropes & Gray LLP
At least in terms of intellectual property, Ropes & Gray looks very different now to how it did two or three years ago, but there is no doubting that it is still a gilt-edged global law firm capable of tackling the toughest patent and technology disputes and emerging victorious. In-house counsel keep it in mind for when they need to go to their board and say ‘don’t worry, we’ve got the specialists’. Such confidence is down to the availability of weapons like Jesse Jenner
, an elite trial lawyer with 40-plus years of experience. The firm recently unveiled experienced biopharmaceutical lead counsel Filko Prugo
as its new signing in New York; he arrived in February 2018 by way of O’Melveny & Myers and took up his post as chair of the life sciences litigation practice. The patent and technology transactions domain is another bastion of strength for Ropes, which relies on Harry Rubin
to co-head its international practice group. He is highly adept at guiding private equity firms down commercially advantageous paths and, as an example of his recent work, represented California-based TPG Capital in connection with a deal with Intel to create one of the largest pure-play cybersecurity companies in the world.
Shearman & Sterling LLP
Shearman & Sterling does not turn on the litigation machine and let it run; it quickly ascertains what its clients’ business executives would call a win, and then pursues that result with zeal. In so doing, it often facilitates early wins, although this does not mean that it is not ready for a courtroom dust up. Mark Hannemann
and Thomas Makin
have the chops to lead trials – something they have done frequently in district courts across the country and in the ITC; Hannemann also mixes in a healthy dose of appellate expertise. It has been all systems go for Robert Bosch Tool Corporation lately, with the pair fighting a whole slew of companies to protect Bosch’s most valuable products. Outside of this, a lot of their work has seen them draw effectively on the organisation’s wider resources, a muscular 100-plus lawyer litigation and global arbitration group being a particular boon. Coming in for special praise, “Mark shows a profound understanding of the patent process and of technology, and has the key to success in litigation. His mind is so sharp and, gifted at reading his opponents, he strategises and thinks a few steps ahead. No time is wasted when he is on the job.”
Sidley Austin LLP
IP litigation is an important plank of Sidley Austin’s splendid global commercial law service. The firm is not short on top-flight patent litigators and in its New York office alone has multiple first-chair trial lawyers capable of inspiring teams to big wins. First to spring to mind are Jim Badke
, Sona De
and Ching-Lee Fukuda
; Badke has leadership qualities to spare – he helms both the life sciences industry unit and the local IP group – which has helped him score benchmark wins for pharmaceutical and biotech companies. De, a lieutenant commander, has an enviable track record of success in Hatch-Waxman litigation and other cases; before law school she was a sales representative at Merck, which gave her a solid foundation in the business of the drug market. Fukuda is an emissary of blue-chip companies in electronics, software, telecoms and medical devices and has a proven track record taking cases all the way through trial and appeal; she also has a wealth of post-grant experience. Sidley can support the business development of its patrons in many ways and, for example, puts at their disposal a robust and dedicated IP and technology transactions group. Jennifer Coplan
co-chairs this practice alongside Silicon Valley-based Glenn Nash – together they shine on complex transnational deals with new, highly innovative structures.
Skadden Arps Slate Meagher & Flom LLP
Few firms know how to put a technology transaction together as well as Skadden, which has aggregated some of the best IP deal brokers in the country. Plaudits rain in for the likes of Jose Esteves
, Matthew Zisk
and Resa Schlossberg
, who each possess uncommon intuition for how to maximise IP value. “Esteves is a highly effective negotiator with impeccable attention to detail – he does a great job pulling all the pieces of complex transactions together and guiding clients through them. He gets everything right and people really respect his judgement.” He recently advised NXP Semiconductors in connection with its $47 billion acquisition by Qualcomm – the largest ever semiconductor deal. Zisk breezes through the most sophisticated licensing arrangements and collaborations in the life sciences and healthcare sectors and is respected as “an extremely bright and incisive lawyer who is easy to work with”. Equally adept in the life sciences, Schlossberger makes her debut in the IAM Patent 1000
this year on the back of positive peer feedback: “She has these tough biotech and medical device deals on lock. She’s amazing not only at thinking outside the box on provisions, but at building consensus between the parties.” However, the Skadden household names are Bruce Goldner
and Stuart Levi
. Goldner heads the New York office and is a big brands guru who is also au fait
with patents and technology. Levi operates right at the cutting edge in cybersecurity, privacy, financial technology, blockchains and more besides. Skadden’s patent litigation practice also has plenty to shout about; its IP litigator-in-chief Douglas Nemec
recently earned a Federal Circuit affirmance of a district court win for JP Morgan Chase & Co and been litigating for Google and YouTube in district courts and the PTAB.
Steptoe & Johnson LLP
“Top-notch, fast, up to date on all IP developments, full service in patents and reasonably priced”, Steptoe & Johnson has a lot going for it. Most notably, its patent litigation expertise is profound and wide ranging; it is a major player over at the ITC where it has handled scores of Section 337 investigations over the years; it was one of the first to file inter partes
review petitions after the America Invents Act was signed into law and it is on the frontlines of some of the most exciting pharmaceutical and biologics cases. Expanding on the latter point, John Molenda
and Vishal Gupta
have been absolutely killing it lately, defending Sanofi and Regeneron from patent infringement claims against their blockbuster biologic Praluent, used to treat high cholesterol, and serving as lead counsel at the Court of Appeals for the Federal Circuit for Apotex in challenging a PTAB ruling. Molenda is very active within the Federal Circuit bar association and as a former Federal Circuit clerk, he knows just how to play it in an appeal. Of Gupta, one client comments: “Having worked with many top attorneys throughout the world, I can easily say Vishal is in the top three for intellectual property. He’s a great listener and very technically adept – in review meetings with inventors, he asks probing questions and helps identify protection options you might not have thought of. He’s always available, incredibly responsive and never comes close to missing any deadlines.”
Sullivan & Cromwell is perfectly poised to handle the most hotly contested and commercially significant patent cases. Fighting on the frontlines is “cool, calm and collected” Garrard R Beeney
, a “go-to counsellor and litigator for when your very business is at stake”. The highlight of his year was an award of $814.9 million for BlackBerry in a binding arbitration against Qualcomm; this is one of the biggest recorded arbitration awards and, needless to say, was critical to BlackBerry as it invests in the growth of its software business. Much of what Beeney does evolves the law or sheds welcome light where it is considered grey. As an example, in litigation between Audio MPEG against Dell, he secured a finding that his client, Audio MPEG’s inventions were not abstract ideas and therefore valid under Section 101; this ruling illustrates the importance of the Federal Circuit’s decision in Enfish v Microsoft
that a database patent is not an abstract idea. Sullivan & Cromwell also has a near-unique ability to handle deals that involve important IP and technology elements and which transform businesses in fundamental ways. As a licensing authority with “impeccable legal and business judgement on the formation of new and innovative approaches to patent monetisation”, Beeney makes indelible contributions on the transactional front. The same can be said for John Evangelakos
; he is a thought leader on cybersecurity issues, a heavyweight M&A lawyer and the co-head of the Sullivan & Cromwell IP and technology section.
Weil is a big deal in the tech world and a repository of trust for innovators whether they are in a scrap with their competitors or looking to collaborate, share and invest. New York is the central seat of its market-leading transactional practice and the home to brilliant brokers Michael Epstein
, Jeffrey Osterman
and Charan Sandhu
. These guys have a granular understanding of the technology behind their deals and the business objectives of the parties to them and they are not afraid to advise beyond the black letter law and take a view on something. The group’s commanding officer, Epstein finds time to architect multibillion-dollar deals – Straight Path Communications’ $3.1 billion sale to Verizon being a recent example – and to give generously to the wider IP and legal community as an author, advisory panel member and trustee. Osterman cannot be pigeonholed in terms of technology type or business sector, but licensing agreements and acquisitions in the life sciences are a notable thread in his workload. Sandhu, meanwhile, demonstrates the deftest touch in settlement transactions. They regularly mix with their litigation colleagues down the hall in New York – Elizabeth Stotland Weisswasser
and Anish Desai
– and in other offices to help, for example, assess the risk to those acquiring companies involved in patent disputes; this integration helps make for an incredibly tight service. Weiswasser never fails to impress clients, for whom “her guidance on difficult patent cases and her thoughts on strategy are priceless”. “She has an excellent knowledge of Federal Circuit case law and of appellate procedure too.” Bolstering the team in New York, Desai recently made the switch from Weil’s DC bureau. His skills in front of the PTAB are trenchant – something which BASF knows well having recently achieved victory in three inter partes
review proceedings against Johnson Matthey; after a full hearing, Desai convinced the board that none of the claims in any of the BASF patents at stake were invalid.
White & Case LLP
White & Case is the only firm in New York with a gold-tier litigation ranking and a highly recommended placement on the transactions table – it is really superb across the board. In litigation, it turns heads for its sheer efficiency; star of the set Dimitrios Drivas
has been in the game for many years and has honed his ability to focus on the most important issues in a case – something he has inculcated in the wider group. The team remains active in the high-tech sector but life sciences has, in particular, been driving the practice over the past 18 months. Drivas, a towering figure in the pharmaceutical sector, has been busy representing Pfizer on a complex Walker Process antitrust claim defence, among numerous other matters for the company. Jeffrey Oelke
, who leads the patent and life sciences sub-section of the IP practice and also provides vital support to Pfizer, has been embroiled in a major Hatch-Waxman litigation against over 10 generics for another patron. “Drivas and Oelke are really smart, first-class guys who operate with a lot of integrity. Clients put a great deal of trust in them, and with good reason.” Also recommended, Scott Weingaertner
“understands how patent law applies to business. He is technically superior to many and well-rounded as an IP lawyer”. He knows the medical device and life sciences industries well but, like Drivas and Oelke, has broader horizons. In the electrical arts, Kevin McGann
continues to perform at an Olympic level for Google. He is a discerning choice for patent matters that intersect with antitrust law. As a result of organic growth and astute lateral hiring, White & Case has achieved its goal of building a top-drawer IP and technology transactions practice. Its specialists support other departments in the firm – M&A and finance, for example – but, more to the point, also take the lead on a large volume of IP-rich deals. Arlene Hahn
and Daren Orzechowski
have been acting for an American multinational semiconductor company, advising it separately on different acquisitions, but communicating regularly and bouncing ideas on strategy off one another. This highlights a feature of the practice which is pleasing to clients – that individual lawyers do not work in silos but are integrated as a team. Adam Chernichaw
, meanwhile, has been advising social media and messaging platforms on various projects which have given him the opportunity to show off his exceptional fintech expertise.
One of the busiest – and best – patent litigation firms in the United States, Winston & Strawn has recently made a number of big strategic moves to safeguard and enhance its market-leading position; chiefly, it has added power and depth to its Texas and California line-ups. The team in New York, meanwhile, has been holding steady. For Allan Fanucci
on the prosecution side this has meant managing worldwide patent portfolios protecting certain drugs for Columbia University and helping them identify monetisation opportunities. Fanucci garners glowing reviews as “a brilliant patent lawyer, and a joy to work with. The level to which he understands your products and business is amazing; he also has a nuanced understanding of what the patent office wants and needs and communicates well with its personnel. He moves quickly and gets you the coverage you need in a timely manner”. Pejman Sharifi
is another sought-after counsellor, although his practice leans more towards clearance and opinion work and IP transactions. He serves up percipient advice to FieldTurf, a worldwide leader in artificial turf systems. The beating heart of the local litigation team is Michael Murray
, who has been engaged in some heavy-duty ITC Section 337 investigations of late. The secret to his success in any forum is the development of simple themes that can be understood by, and which resonate with decision makers. Winston, famous for the depth of its trial lawyer bench, is also lucky to have Scott Samay
on its roster. He is versatile and has no issue crossing back and forth between life sciences and high-tech cases.