Alston & Bird LLP
If Deepro Mukerjee
’s practice is anything to go by, business is booming at Alston & Bird’s New York office. Mukerjee is one of the most dynamic young litigators in the game and has been on a rocket ride lately, doing constant trial work for major generic drug manufacturers. He has also expanded his sphere of influence outside of the pharmaceutical space, quickly getting to grips with the medical device sector, for example. Mukerjee really owns his matters and takes the protection of clients’ interests to heart; he is super-committed to helping out in an efficient, cost-effective manner, never forgetting that this is, after all, a service industry. He maintains one of the biggest practices in the group, but others here are doing really well too. Natalie Clayton
is another rising star with plenty on her plate. The Hatch-Waxman ace recently anchored a dispute for Actavis and Watson Laboratories against Sanofi that could pave the way for Watson to market a generic version of Multaq, a drug used to treat heart rhythm disorders. Clayton and Thomas Parker
enhance their life sciences offerings with a thorough knowledge of US Food and Drug Administration (FDA) regulatory law. Parker is a smart tactician with a US Patent and Trademark Office (USPTO) registration number in his back pocket and plenty of research experience on his résumé. While the New York crew has a strong litigation focus, interested parties should recognise the stature of Alston & Bird’s nationwide prosecution practice and give the firm careful consideration as a one-stop shop.
Andrews Kurth Kenyon LLP
Andrews Kurth is a new name in this section of the IAM Patent 1000
and joins courtesy of its union with Kenyon & Kenyon, one of the most celebrated institutions on the New York, and national, IP scene. While the latter’s talent pool became diluted in its final year, a strong core of litigators stayed true and have now joined the Texas native. Throughout all the upheaval, John Flock
and Michael Lennon
never changed their stripes – they remain top-notch advocates and seasoned veterans of high-stakes combat between prestigious companies. Flock has built lasting relationships with high-technology leaders such as Sony and Lenovo. He has been particularly busy for Sony lately, successfully mounting robust defences against allegations of infringement; he can face off against some of the most feared litigators in the land and emerge victorious. Also worth noting is Flock’s discerning eye when it comes to patent valuation and acquisition. “High-level strategic thinker and intellectual” Lennon continues to act as a shield for longstanding client Volkswagen Group of America and is fighting on numerous fronts for the car maker, including at the International Trade Commission (ITC) and Patent Trial and Appeal Board (PTAB). The combination with Kenyon also did wonders for Andrews Kurth’s prosecution and post-grant practice. Mechanical and electrical mastermind Clifford Ulrich
– who earns a spot on the national table of post-issuance leaders – has handled over 100 proceedings at the USPTO, acting on both sides of the ‘v’. He has a finely tuned understanding of how best to use post-grant mechanisms to enhance overall litigation strategies and is working closely with Lennon on all things Volkswagen.
Arnold & Porter Kaye Scholer LLP
The marriage of illustrious DC set Arnold & Porter with New York outfit Kaye Scholer has created a new East Coast powerhouse with expansive national and international reach. The two sides of the new entity appear to be highly synergistic, especially when looked at through a life sciences prism. Kaye Scholer’s reputation as one of the best in the business of pharmaceutical patent litigation is well deserved, as it has long provided vital representation for leading drug originators. Sophisticated litigators Aaron Stiefel
and Daniel DiNapoli
quickly gain the trust of any court because they never play it fast and loose; they often combine to create a potent strike force for marquee clients. Another Hatch-Waxman Act litigation veteran, David Barr
is the trusted confidant of Novartis, whose Gleevec product – one of the fastest-ever drugs to be approved by the FDA – he tirelessly protects. Barr’s work for Novartis often makes additional demands on his outstanding antitrust expertise. When you put all this next to the biotechnology expertise touted by Arnold & Porter’s DC crew – and by Kaye Scholer folks such as Silicon Valley-based Michael Malecek – it makes for a compelling A-to-Z life sciences offering. There is a vigorous high-technology practice here, too, which has enjoyed plenty of exciting recent wins to shout about. James Blank
secured a resounding verdict of non-infringement for Nintendo after a long-running battle with Tomita; persuasiveness and perseverance helped Blank to obtain a Federal Circuit reversal of an earlier adverse decision and then win the re-trial. He has also had his hands full on the telecommunications side, representing Nexans and Berk-Tek in a multi-front patent battle against competitor Beldan; here again, Blank emphatically showcased his appellate nous by persuading the Federal Circuit to issue its first reversal of PTAB invalidity findings in an inter partes
review proceeding. Blank loves to build deep and meaningful relationships with clients – getting to know what makes their business tick helps him to craft commercial litigation strategies that look beyond the immediate case at hand.
Baker Botts LLP
The famed IP versatility of Baker Botts is clear to see in the Big Apple: the firm has a deep bench of patent experts, many of whom cross practice and technical divides with finesse to provide one of the best-rounded services in the city. Helping the litigation contingent to fire on all cylinders are Neil Sirota
and Robert Maier
. Their pristine track record earns them repeat business from technology leaders such as Samsung; they recently represented the Korean chaebol
in an Eastern District of Texas jury trial, coming away with a full defence victory against ContentGuard Holdings and its hotshot representative McKool Smith; they also earned a trial win in a separate Western District of Texas case against Ushijima. Robert Scheinfeld
is another tried and trusted litigator who, together with Maier, is representing Fujifilm in a mission-critical ITC dispute with Sony which has given rise to several PTAB challenges. It is the sort of case in which the wider resources of Baker Botts are a major boon and Scheinfeld is superb at marshalling them. The New York IP chair doesn’t just litigate, however – he keeps his eye on the transactional and portfolio management sides too. This dexterity is also displayed by Paul Ragusa
, a lawyer for whom good references are never in short supply. “Paul has deep domain expertise in the digital video and telecommunications areas, and he collaborates very well with people in-house, which saves time and money. He understands clients’ needs and is easy to work with.” He has a particular affinity for licensing, especially when it relates to standard-essential patents (SEPs). Few firms in New York can claim robust local prosecution groups, but Baker Botts is among them. “Diligent, serious and highly qualified” medical doctor and PhD scientist Lisa Kole
is a name that life sciences companies looking for quality portfolio building and assessment services should have in their contact book. Kole is part of a team that delivers a wraparound IP service for French innovative drug delivery company Ethypharm. An expert on the healthcare industry, Daniel Hulseberg
brings in-house insight to the table to help him draft applications that are of practical and commercial use to those he represents. He and Kole frequently use their prosecution instincts to enhance the litigation strategies of their contentious colleagues.
Cadwalader Wickersham & Taft LLP
Cadwalader is part of the New York elite – in fact, it is the city’s oldest law firm, having been in operation for over 200 years. In the patent context, it stands out among full-service commercial outfits for the breadth of its offering, which encompasses litigation, licensing and procurement. The immediate past president of the New York Intellectual Property Law Association, Dorothy Auth
personally practises in each of these areas, to critical acclaim. A biochemistry PhD, she concentrates primarily on biotechnology and pharmaceutical law, but has no problem crossing over into the mechanical and computer fields. She supervises global prosecution and enforcement efforts with poise.
Pound for pound, Cravath consistently outpunches others in the high-technology and pharmaceutical litigation spaces. In the latter, it is currently defending Amgen against allegations of patent infringement arising out of its anticipated introduction of a biosimilar to AbbVie’s Humira, one of the best-selling drugs of all time. This is one of the first cases under the Biologics Price Competition and Innovation Act, but it is bread and butter for Cravath, which has a lengthy track record pushing boundaries in bet-the-company litigation. Keith R Hummel
continues to do great things in must-win cases and is taking the lead for Amgen alongside new IAM Patent 1000
arrival David Greenwald
. The sophistication of Hummel’s strategic thought sets him apart as one of the best all-round commercial and IP litigators in the business. Greenwald is heavily pharma focused and is currently working alongside Evan R Chesler
and David R Marriott
on behalf of Merck Sharp & Dohme in several thorny actions against generic manufacturers. Cravath chairman Chesler has consistently set litigation benchmarks throughout his distinguished career and has much to do with the firm’s “sterling reputation in patent litigation”. Marriott has lived out his professional life here and embodies the value of the firm’s intensive trial lawyer training. It has been a blockbuster year on the patent and technology transactional side, too; somehow, David J Kappos
has managed to make each 12 months better than the last during his time at the firm. But he is all about quality, not quantity, and loves nothing more than seeing the most complex, out-of-the-ordinary and transformational deals through to a successful close. “Cravath’s ability to put together transactions is unmatched and when David is involved, he always has even more value to add. He is an excellent predictor of where courts and marketplaces will naturally migrate and can structure a deal that is good today and will be good for tomorrow.”
“You can rely on John M Desmarais
and his team heavily in patent and trade secret cases in which there is significant exposure or which are otherwise valuable in terms of protecting your IP and commercial interests.” According to one blue-chip client: “When we have an eye on going to trial, John’s name is at the top of our list. Experience at trial is something we value and because John has so much of it, we can get unvarnished advice from him. Also, having his own firm, he has a lot of flexibility in how best to manage cases; he gives associates responsibilities commensurate with their abilities, which ensures we get a strong team across the case – and the courts like to see that young lawyers are being developed, too.” One of the best things he has done is to surround himself with other extremely talented partners: “Alan S Kellman
is one of the best trial lawyers in the business. He knows how to prepare a case from the outset with a clever strategy and he is very tactical when taking depositions. He has a good interpersonal sense and can stand in front of a judge or jury in any forum and be comfortable. He isn’t overly theatrical, but has a nice conversational style that is extremely effective. His ability to outwit lawyers on the other side is a rare one.” Holding the reins on much of the set’s life sciences litigation, “Michael P Stadnick
is a dedicated advocate whose strategic insight, ability to anticipate his adversaries’ moves and commitment to excellence result in very favourable outcomes for clients. He is always responsive and personable, and can be recommended unreservedly”. Stadnick has had a breakout year and debuts in the IAM Patent 1000
for 2017. Paul A Bondor
“has the chops to lead” and is running major cases independently; he has lately represented patentee-plaintiff Round Rock Research in multiple infringement actions, all leading to favourable settlements against semiconductor manufacturers. “Jon T Hohenthaner
has less experience than John Desmarais, but a lot of the same qualities as a trial lawyer. He is particularly good at assessing the likelihood of success.” Everyone on the team knows what needs to happen at trial – it is something they focus on from the beginning of a case. If a dispute does go the distance, they are thoroughly prepared and drilled; but equally, the threat value that this creates puts them in a strong settlement position. They don’t charge by the hour – everything is done on negotiated fees – and they never undertake unnecessary tasks in the discovery phase just to bill time; you can trust them to focus on the things that matter most.
Fish & Richardson PC
National and international IP sensation Fish & Richardson has one of the most active patent litigation and prosecution practices in the world. The New York office is a vital resource pool in terms of staffing trial teams, but in Michael Zoppo
it also has someone to fill a lead role. Zoppo scored big for the Chicago Board Options Exchange, netting the client over $6 million in attorneys’ fees (one of the largest such awards in recent memory) after many years of fraught litigation against the International Securities Exchange. New York is also a base for some outstanding prosecution and post-grant experts, including software, electronics and mechanical technology specialist Samuel Borodach
: “The depth of his analysis and recommendations goes a step beyond expectation.” Also warmly recommended is Jack Brennan
, a genetics PhD who counsels in the fields of biotechnology and pharmaceuticals. “Jack really understands patent law and how to protect an invention globally on a deeply strategic level.”
It has been a case of steady as she goes for Fitzpatrick in pharmaceutical patent litigation – its most famous area of practice. The boutique, which represented Merck & Co in the first-ever Hatch-Waxman Act case, “has been doing it for decades and has a huge amount of institutional wisdom and knowledge. Its lawyers are good strategists who simply know how the game is played”. “A super-tough advocate, but a decent guy”, Dominick Conde
sets a tone of excellence, having previously served as managing partner and now serving on the management committee. Each year he continues to add new highlights to his résumé: most recently, he won a dismissal of complaints brought by three generic manufacturers against Daiichi Sankyo, in which his clever and creative jurisdictional arguments proved critical. The depth of Fitzpatrick’s life sciences litigation bench distinguishes it from many other players in the space; many lawyers here – including William Solander
, Bruce Haas
and John Murnane
– have been to trial and come away victorious. Solander stands out for his strategic insights in multi-jurisdictional litigation. The post-grant expertise which Haas brings to the table has become a boon now that more inter partes
reviews are being filed in the small molecule and abbreviated new drug application (ANDA) area. Murnane has chalked up decades of experience in lawsuits involving blockbuster drugs. As the firm offers a complete patent service, it is very skilled when it comes to the procedural nuances of litigation and the interplay between court disputes and activities at the USPTO. Trial lawyers on the high-technology side, such as Michael Sandonato
and Nicholas Cannella
, display this dexterity just as much as their pharmaceutically minded brethren. Sandonato continues his fine work for Canon and what is now known as Dentsply Sirona. He is often wrapped up in complex disputes that span multiple actions and forums, but he keeps track of it all with poise. Another Canon confidant, American College of Trial Lawyers fellow Cannella consistently demonstrates fresh thinking, while also dialling up his vast experience in a potent combination. Heading the litigation group, Scott Reed
artfully crosses technical divides and has a strong hand in all aspects of the practice. For expertise in USPTO contested proceedings, leading interference practitioner Anthony Zupcic
and prosecution and post-grant expert Raymond Mandra
serve as strategic sounding boards. Both now occupy of counsel roles, but continue to guide clients down the most advantageous patent protection paths.
Gibson Dunn & Crutcher LLP
“Premier litigation shop” Gibson Dunn has “a growing patent group that companies with discerning and sophisticated in-house departments repeatedly go back to”. Its extraordinary team of trial lawyers knows how to go the distance and win no matter what the circumstances. This, however, tells only half the story: the ensemble’s impeccable trial record means it can often make cases go away quickly in the early stages. New York City is the nerve centre and the main base of operations for IP co-chair Joshua Krevitt
. “A big name with a strong personality – and a brilliant lawyer, no question”, he is a natural leader who inspires his team to its best at every stage of a litigation. Partnering with Daniel Thomasch
, he won a three-week jury trial for T-Mobile, earning a complete defence verdict in a suit brought by Prism Technologies; remarkable here was the fact that the plaintiff had litigated the same patents (in the same court and with the same counsel) against AT&T and Sprint – and won. Together with fellow co-chairs Wayne Barsky in Los Angeles and Mark Reiter in DC, Krevitt also prevailed in another major trial for Fitbit in its sprawling litigation against Jawbone; the swashbuckling crew took all the bite out of Jawbone’s allegations, none of which stuck. Thomasch is an American College of Trial Lawyers fellow who is much sought after as both a trial and appellate advocate. He co-chairs the life sciences unit and has been instrumental in recruiting talent since he joined back in 2011. “Able to run big cases on his own”, Benjamin Hershkowitz
is “very smart, hardworking, technically astute, thorough and good on his feet; he is the complete package and someone you can trust.” In January 2017 the set recruited Brian Rosenthal
from Mayer Brown. A “young lawyer with an extremely bright future”, he will fit right in here, given his already extensive trial experience and his recently acquired appellate stripes.
Goodwin Procter LLP
Anybody who’s anybody in the pharmaceutical litigation world knows – and admires – Goodwin Procter. According to one peer: “It is our number one competitor on the generic side and an excellent firm.” Another describes its lawyers as “very smart adversaries”. Heavyweight clients have lots of options when deciding who to partner up with on different matters. Teva, for example, has instructed David Hashmall
, Elizabeth Holland
, Robert Cerwinski
, Huiya Wu
and Ira Levy
all on separate briefs recently. Hashmall currently serves as chair of this 1,000-plus lawyer global law firm, so can be forgiven for being slightly away from the frontlines of client work; he previously led the litigation department and key patrons still maintain a hotline to him for times when high-level strategic oversight is needed. Holland is “a brilliant lawyer overall” and has “done an excellent job in building a formidable team to support her large practice”. She is steeped in the life sciences and has a fine-grained understanding of the sector’s commercial dynamics. Cerwinski joined from Kenyon & Kenyon (alongside Holland and Wu) back in 2014 and has since been keeping Goodwin Procter at the vanguard of litigation involving biologic products. Not much of his work in the space can currently be disclosed, but by way of example, he is acting for Celltrion – one of Korea’s largest biotechnology players – in inter partes
reviews against Genentech. “Extremely knowledgeable, responsive and thorough, Wu is an excellent attorney who can always be trusted to put her clients’ needs first.” The seasoned Levy anchors life sciences and high-technology disputes with equal dexterity, and also blends trademark and copyright expertise into his diverse practice. Promoting a collaborative approach with the firm’s appellate experts and other departments, Mark Abate
is highly effective in his role as de facto
leader of the technology practice. Marquee clients say: “He is very good at assessing a case early on and identifying weaknesses and strengths, and therefore where efforts should be focused. He also knows how to structure a case in a way that moves it quickly to resolution.” He is currently handling a high-profile suit for Gillette against the Dollar Shave Club, alongside his usual IBM activities.
Greenberg Traurig LLP
Operating within an entrepreneurial environment, with greater flexibility and less red tape, has allowed the litigators at Greenberg Traurig to focus squarely on identifying the best ways to help clients. No surprise, then, to find they have remained busy at a time when patent litigation filings in the United States are trending downwards. The group’s facility for handling such a diverse range of cases – from low and high-revenue troll defence to major competitor battles, and from high-technology to life sciences – has also contributed to demand. Setting the tone as co-chair of the global IP and technology practice and chair of the New York IP section, Scott Bornstein
is a dynamic litigator with a business-minded approach to both trial staffing and case strategy. He regularly joins forces with several of the other partners listed here – including Joshua Raskin
, Allan Kassenoff
and Richard Pettus
– when fighting the corners of patrons such as B Braun Melsungen. The collegial environment he has fostered makes this a very cohesive team of lawyers who enjoy each other’s company and the work they do together, and this is something that clients definitely appreciate. All the partners bring a unique perspective to the table: Raskin comes from a background litigating on behalf of plaintiffs and can provide insight into plaintiff mentality and tactics to his large company clients at GT. “Josh is professional and conscientious, and works hard to understand your objectives in both the short and long term. For cases against patent trolls, he has excellent legal strategies up his sleeve and can effectively resolve disputes by attacking the validity of the patents asserted, for example.” Kassenoff excels at giving strategic impetus to litigation teams and, having spent the early part of his career litigating ANDA cases, has been helping to grow the group’s pharmaceutical practice lately. Pettus, who has also been instrumental in this regard, stands out for his experience at trial and has played key roles in more than 10 trials to verdict. No write-up of the New York contingent would be complete without mention of another life sciences sage, organic chemistry PhD Jonathan Ball
, who brings deep experience to bear on the set’s litigation, post-grant and portfolio management practices. “Responsive, cost efficient and quality oriented, Jonathan is simply outstanding and can’t be recommended highly enough as a prosecutor. He is an excellent listener and has a demeanour that inspires confidence.”
The recipient of effusive client praise, Haug Partners ascends to the silver tier in the IAM Patent 1000
this year. The “patent law powerhouse” has “superb lawyers who provide well-reasoned, practical advice in a timely manner”. “Its expertise in the pharmaceutical and biotechnology areas is on par with any US legal service provider, and it also offers exceptional regulatory and antitrust advice, which is particularly invaluable in a settlement context. In addition, it has a very strong transactional arm.” At the head of this multidisciplinary, life sciences-focused unit sits “leader of the patent bar” Edgar H Haug
: “As well as having profound knowledge of patent law, he has superlative management skills and keeps his colleagues producing top-quality work at all times. He develops teams of senior and junior partners with varied specialisations, so that he can serve client needs comprehensively.” “His briefs are written exceedingly well and he is a great trial lawyer on his feet in the courtroom.” The mantle of leadership is also taken up by Porter F Fleming
, who captains the litigation group. “Keenly intelligent and an amazing writer, he is an effective oral advocate who manages to deliver winning arguments in a style that maintains good relationships with his adversaries. He is a delight to cooperate with and his briefs make the most cogent legal arguments in clear, persuasive prose.” Fleming sits on the executive committee with Angus Chen
; these two dynamic lawyers have a mandate to grow the practice and are making this an exciting place to be – something which clients are definitely sensing. The three lawyers regularly join forces and their combined efforts recently led to a unanimous en banc
appellate decision maintaining the validity of two patents covering a flagship product for The Medicines Company; again at the Federal Circuit, they also obtained a unanimous decision affirming summary judgment of non-obviousness of patents protecting a blockbuster attention deficit hyperactivity disorder drug for Shire. They all take their responsibilities as educators of younger lawyers seriously and are doing a great job “bringing on attorneys who are becoming leaders within the next generation of patent law stars”.
With respect to both its client base and its endeavours, the patent practice at Jones Day’s New York office is impressively wide-ranging. Personifying this is molecular biology PhD Adriane Antler. Alongside start-ups, universities and medical centres, she acts as a prosecutor, strategic counsellor and opinion provider for medium-sized companies such as Acorda, as well as industry giants such as Genentech. For the latter, she is an essential part of a large team that handles a vast portfolio encompassing technology relevant to multiple disease categories on a worldwide basis. As global patent prosecution co-chair, Antler does a sterling job ensuring that Jones Day capitalises on the synergies between its uniquely balanced prosecution and litigation practices, so that clients end up with rights that are much more valuable due to their enforceability. Working within this seamlessly integrated dual practice, the prosecutors also won’t create any undue estoppel when obtaining patents, which is of great benefit to litigators such as Pablo Hendler. He has settled in well following his move from Ropes & Gray just over a year ago and has been busy representing Purdue Pharma in multiple Hatch-Waxman litigations concerning generic versions of its blockbuster pain medication OxyContin. Christopher Harnett is another former Ropes & Gray trial lawyer at the firm; he came on board in January 2017.
King & Spalding ranks among a relatively small category of nationally recognised full-service commercial firms with an IP practice that spans patent protection and enforcement. It is a set-up that functions well in the contentious context; first-chair trial lawyers such as Robert Perry
work closely with scientists and engineers in order to craft persuasive arguments that are grounded in a true appreciation of the technology at issue. Perry, who leads the New York IP group, possesses an understanding of the telecommunications business that is scarcely rivalled and is a touchpoint for Nokia and Alcatel-Lucent, among others. The firm’s most senior biopharmaceutical professional, Kenneth Sonnenfeld
, is also based in the Big Apple. IAM Patent 1000
recommended in the prosecution, litigation and transactions categories, he is one of the most accomplished all-rounders in the city and a lawyer who has lived and breathed biotechnology and pharmaceutical patent law throughout a long career.
While staying up there hasn’t always been plain sailing, Kirkland & Ellis retains its position at the US patent litigation top table with “a practice that most others would give their right arm for”. It has a phalanx of high-calibre trial lawyers with a reputation for aggressive defence and enforcement, which inspires great confidence in companies when everything is on the line. New York residents Gregory Arovas
and Steven Cherny
are two of the best advocates in the nation and both win praise from other highly ranked litigators. “Greg is a great strategist who can cut through dense technical material to get right to the heart of a dispute. He has an instinct for where a case will turn and is tireless for his clients.” “He knows what flies in front of a jury and comes across as very sincere.” Household names in the high-technology world seek him out for their most important cases. Samsung, for example, came calling when Nvidia took action at the ITC accusing it of infringing more than 140 claims in multiple graphics processor patents; in the end, Nvidia asserted five claims in three patents and the administrative law judge found in Samsung’s favour on all – this was later affirmed by the full commission. “Steve Cherny is one of the most intellectual people doing this kind of work – a top guy. Because he is so smart, he’s great in a bench trial, but he’s also brilliant in front of a jury.” The “creative thinker” has been busy fighting for CR Bard in connection with its decades-long battle with WL Gore regarding patents on vascular and stent grafts; in the latest lawsuit filed, Cherny’s clever manoeuvres resulted in a massive reduction in Gore’s damages claims. “The depth of the bench is really impressive”; Robert Appleby
– who joined with Arovas and DC’s Edward Donovan on the Samsung-Nvidia tussle – is another proficient high-technology trial lawyer whose name should be noted. He brings much to the table, including rich design patent and appellate expertise. Top-tier life sciences companies also have contentious stars at their disposal. “Incredibly smart and a really nice person”, Leora Ben-Ami
provides gold-standard guidance and advocacy on headline disputes. Patricia Carson
is also much admired in the pharmaceutical, biotechnology and chemical industries. She comes with a microbiology and immunology PhD (followed up by extensive postdoctoral studies) and experience as a USPTO examiner, so she is unshakeable on the science, as well as being a great litigator. Kirkland & Ellis knows how to fight, but it also knows how to bring parties together and has a full-bore patent and technology transactional practice to show off, too. Worldwide collaborations in the pharmaceutical sector are all in a day’s work for David MacDonald
. He is one of several outstanding licensing experts on the roster and recently sealed the deal on complex licensing agreements for Sun Pharmaceutical Industries and Intel.
Leason Ellis LLP
Clients are “extremely happy” with White Plains boutique Leason Ellis. When it comes to portfolio maintenance, the team is “extraordinarily competent in the way it clearly communicates deadlines and required actions in non-expert terms”. One patrons says: “We have never missed a deadline and have successfully overcome very difficult objections from examiners as a result of its sterling work.” Growth in the life sciences practice is a notable recent storyline: the arrival of Michael Davitz
has considerably elevated the group’s profile. A Columbia University doctor of medicine who ran a lab before reinventing himself as a patent attorney, he brings further cutting-edge scientific know-how to a team already brimming with it. He was welcomed on board in May 2016 by life sciences chair Elizabeth Barnhard
, a percipient counsellor with eye-catching in-house experience on her résumé, having spent 15 years as senior patent counsel at Pfizer. “Elizabeth is a true pleasure to be with on a personal level and is hugely knowledgeable and professional. She responds to enquiries very promptly and is always available to discuss matters in detail. Her ability to liaise with inventors and then capture the core of an invention in its claims is extremely impressive.” Genetics PhD and Rockefeller University post-doctoral fellow Susie Cheng
is another repository of trust for life sciences entities. She has been raising the firm’s brand in Asian markets in her role as chair of the China practice group. Together, these three offer a supremely well-rounded service that encompasses bread-and-butter prosecution, strategic counselling (particularly on multi-jurisdictional issues), transactions and litigation. Like Cheng, Melvin Garner
is also looking eastwards – though his focus lies in matters of high technology. He had a modest Asia practice when he joined in 2010, but has engendered the trust of Japanese companies in particular as a result of his regular travel to the country. Litigation is Garner’s metier and he has made this a strong practice here. Focusing on the merits of the case is a hallmark of the firm which, existing outside of the big law bubble, simply cannot throw resources at inconsequential issues. Breaking down the silos between prosecutors and litigators is another sign of how it does things differently. Managing partner David Leason
is the inspiration behind the organisation’s rise to prominence since its foundation in 2008. Companies of all stripes love the strategic overview he can provide as they look to protect their market position and extract value from their patent rights.
Mayer Brown LLP
With its New York crew enjoying a banner year in 2016, Mayer Brown’s life sciences practice just seems to get stronger and stronger. As well as marking itself out as a premier biologics set, it continues to pour jet fuel into the engine of its Hatch-Waxman litigation practice. Local IP practice leader Lisa Ferri
, together with Brian Nolan
, are acting for Sanofi and Regeneron in a suit brought against Genentech and City of Hope in the Central District of California, alleging that a blockbuster monoclonal antibody product does not infringe Genentech’s Cabilly III patent; concomitantly, they are handling an inter partes
review regarding Genentech’s Cabilly II patent, notable as the first such proceeding involving the Cabilly patent portfolio. These proceedings are drawing much industry attention, so Ferri is certainly in the limelight, but it’s all good: “Lisa is truly excellent. More than just a legal expert, she is brilliant from a strategic standpoint.” Clients hail her as a “valuable partner” and “a joy to work with”. Nolan is a key asset to the firm, given his wealth of pharmaceutical and biotechnology litigation expertise and ability to cross over seamlessly into other fields such as semiconductors and information technology. Colleen Tracy James
, meanwhile, has been protecting Gilead’s blockbuster drug Truvada, which is an integral part of nearly all HIV treatment regimens. “Practical and straightforward, Colleen has wonderful qualities and makes a great team with Lisa. Both can be considered among the very best in the life sciences patent litigation space.” Though Mayer Brown recently lost Brian Rosenthal to Gibson Dunn, it still packs plenty of high-technology talent in New York. Global IP co-chair John Mancini
is a wellspring of insight and analysis in the media and telecommunications sectors, and has masterminded important litigation for marquee names in those industries. He recently secured a very rare rehearing of a covered business method review at the PTAB for Google and has also been acting for the internet search giant, alongside Motorola Mobility, in inter partes
reviews against a non-practising entity (NPE) in which clever deposition of the plaintiff’s expert led to final written decisions in favour of the good guys. Another go-to for tech heavyweights is Duane-David Hough
. The veteran of 150-plus patent litigations, he has more seasoning than most and is prepared for just about anything a patent case can throw at him.
Milbank, Tweed, Hadley & McCloy LLP
“Lots of commercial firms have tried to build up patent litigation practices in New York; many have failed, but Milbank is among those that have prospered.” Decades of trial and litigation experience, a lean staffing model in which partners are very hands on, and a deep understanding of business and the competitive climate that its clients face are all key ingredients which enable it to secure the right results on big-ticket instructions from eminent names across the life sciences and high-technology fields. The cool-headed Christopher Gaspar
recently went up to bat for Bayer CropScience in a major International Chamber of Commerce arbitration following confirmation of a US district court award of over $456 million to his client in a dispute over genetic engineering technology with Dow AgroSciences; the arbitration proceedings established, among other things, that Dow had infringed Bayer’s patents. Unusually for a litigator of his stature, Gaspar also stays sharp on prosecution, and has recently filed numerous applications for JPMorgan Chase and the New York Stock Exchange, among others. Errol Taylor
and Fredrick Zullow
have made the life sciences a bastion of strength for Milbank. With trial wins and lots of important cases pending, it has been business as usual for the pair this past year. A “class act all round”, “stellar litigator” Taylor is “extremely thorough in his preparation and completely unflappable”. He is a very big name in the pharmaceutical patent litigation scene and major players have spontaneously hailed him as “extremely thoughtful” and someone with “a fine sense for the nuances of a case and how they may impact a judge or jury”. Zullow shares a lot of these qualities and is a master at coordinating complex cases with international elements. While the retirement of Christopher Chalsen and the departure of Lawrence Kass may, at first blush, have left a hole, it is worth remembering that Milbank is very orderly in terms of transitions and by routinely giving associates real responsibilities, it always has excellent lawyers ready to step up.
O’Melveny & Myers LLP
O’Melveny & Myers’ seamless coast-to-coast patent practice punches way above its weight in terms of raw lawyer numbers to carry the day in high-stakes, multi-defendant, multi-jurisdictional cases. The partners here truly believe in, and follow, the science, but they also make astute strategic decisions to build thematically strong cases – in contrast to the ‘parachute-in’ approach that partners at other big-time firms are sometimes guilty of. Lisa Pensabene
leads the line when it comes to pharmaceutical and biotechnology litigation. She has been to trial lately for AstraZeneca, coming away with favourable settlements with three generic pharmaceutical companies that uphold the validity of AstraZeneca’s breast cancer treatment, Faslodex. Clued up about all aspects of the drug industry, she has also been engaged in some discreet advisory work and has been acting for a biosimilars manufacturer on upcoming litigation. “Tenacious, tireless and thorough, Lisa is always someone you can trust.”
Orrick, Herrington & Sutcliffe LLP
Orrick is constantly adding to its litany of patent litigation victories, making one of its strongest selling points even more compelling. On top of that, it is “an efficiently run place which listens to its clients and produces quality at a fair price”. Among those on a winning run are New York residents Joseph Calvaruso
and Alex Chachkes
. A veteran litigator with an international reputation, Calvaruso has been working with Canon for a decade-plus. Most recently, he successfully defended the company against the attempted termination of a licence agreement by obtaining summary judgment that the termination was improper; always finding ways to add value, he also saw to it that a Canon sub-licence was deemed valid, effectively immunising accused products as a result of patent exhaustion. To his own résumé, Chachkes added a complete summary judgment win for LG Electronics and AT&T in a long-running dispute with Adaptix, a subsidiary of well-known NPE Acacia; the result is a boon to companies selling compliant products in which industry-wide standards apply. Multiple offices have strong benches of first-chair litigators, making Orrick a formidable strike force. The New York contingent grew significantly when Richard DeLucia
and Elizabeth Gardner
came on board at the start of 2016. Ingenious litigation strategist DeLucia knows which buttons to press to persuade juries and is at his best on the frontlines of fraught pharmaceutical and biotechnology suits. Gardner also has a mandate to grow the life sciences and chemistry practices and gives Orrick enhanced post-grant capabilities. Redoubtable appellate expertise makes this a well-rounded patent litigation platform. Former Supreme Court clerk Joshua Rosenkranz
is one of the most experienced appellate advocates in the country in terms of the number of proceedings in which he has argued (around the 200 mark) and the range of subjects he covers.
Patterson Belknap Webb & Tyler LLP
“A wonderful firm, which hasn’t gotten too big”, “Patterson Belknap has tremendous patent litigators and talent across the board.” Bet-the-farm litigation is the name of the game and its senior partners have been playing this in the big leagues for decades. Gregory Diskant
, for example, is “one of the best patent litigators you will ever come across”. “He has an amazing ability to synthesise the law and the facts and come up with a narrative that the judge and jury want to hear. He also finds that glimmer, that ray of light, which can swing a difficult case.” Firm co-chair William Cavanaugh
is another rapier-like advocate who can cut straight to the essence of a matter. He practises IP, antitrust and commercial law, and dispenses trenchant wisdom in cases in which these intersect. Undertaking a broad spread of patent trial, appellate and post-grant work, involving myriad different technologies, Lewis Popovski
is a similarly versatile professional. The client service award winner is a great choice for those with diverse portfolios, as he also brings a wealth of soft IP expertise to the table.
Paul Hastings LLP
Paul Hastings is incredibly thorough when gearing up for patent trials and, alongside its sheer courtroom wizardry, its hard graft in the preparation phases is a major contributing factor to its superlative track record in top-end life sciences litigation. It has assembled a crack squad in New York, with a crop of gold-tier individuals in Joseph O’Malley
, Bruce Wexler
and Gerald Flattmann
. These hands-on partners all run their own cases, but regularly assist each other by bouncing around strategic ideas, effectively giving clients three minds for the price of one. Global IP co-chair O’Malley is “really honest and never afraid to give his opinion”. “He gets down to brass tacks, and tells you clearly what the key issues are and how you can deal with them.” It all inspires confidence in those whose flagship products come under threat. Putting to rest over five years of litigation, he recently obtained a final judgment in favour of Helsinn against Teva and several other generic companies which rejected various challenges against Helsinn’s blockbuster Aloxi medication; the case is of industry-wide importance, given the precedent it set concerning the scope of the on-sale bar under the America Invents Act. Cited alongside O’Malley as a “wonderfully gifted lawyer”, Wexler recently secured a notable triumph for Merck & Co against Sandoz, thereby protecting an important drug used to prevent nausea associated with cancer chemotherapy; this bench-trial win came after several PTAB successes. “Wexler is phenomenally prepared – there is nobody better at digging into the facts. He is a big-picture thinker with excellent presentation skills.” Flattmann has also been upholding the firm’s superb post-grant reputation and worked with DC PTAB mastermind Naveen Modi to chalk up inter partes
review wins for Acorda Therapeutics; these constituted a major setback for hedge fund manager Kyle Bass in his war on pharmaceutical companies and thus represent a big win for the whole industry. These lawyers earn credit for surrounding themselves with great talent. Take Preston Ratliff
, who worked on the Merck
case with Wexler: “A young but seasoned partner, Preston has a practical business sense and is a great strategic thinker.” Within the life sciences – and outside it – there are other key selling points to note. In terms of the number of litigation filings for plaintiffs, for example, Paul Hastings stands apart from other general practices, while being right up near the top in terms of defensive representation; it is also playing a strong hand with respect to biologic drug and biosimilar issues. The firm is also home to a muscular transactional practice, with several IP-savvy corporate and M&A partners such as Samuel Waxman
running the show. Waxman recently cemented big-bucks deals for Sony Corporation and Eli Lilly subsidiary Elanco.
Paul, Weiss, Rifkind, Wharton & Garrison LLP
Paul Weiss is the destination of choice for contentious patent matters that are complicated by dint of extreme scientific complexity, commercial value or legal uncertainty. Biologic drug litigation, for example, involves all three of these aspects and nobody, as yet, can match the firm’s track record in this burgeoning area. The celebrated Nicholas Groombridge
is blazing a trail here – and in non-pharma areas too: “He is a classic trial lawyer who can try anything.” Peers praise his “brilliant insights into the law” and acknowledge him as an “excellent writer and creative thinker”. He is flanked by erudite biochemical engineering PhD Jennifer Gordon
; the pair know the Biologics Price Competition and Innovation Act inside out.
Proskauer Rose LLP
Proskauer might not be among the leaders in US patent litigation by volume; its sweet spot is rather high-stakes cases in select areas which require blended trial and technical expertise. Perhaps most notable in this regard is its cutting-edge work on SEP matters. Patent group co-head Kenneth Rubenstein
supplies rare strategic and technical wisdom on the subject within his broad evaluation, licensing and litigation practice. “When it comes to the essentiality of pool patents, Ken is the gold standard – there is nobody better. He and his team have unparalleled technical and legal expertise.” He has been cooperating with Boston trial lawyer Steve Bauer and New York’s Baldassare Vinti
for one of the top licensing pool administrators in patent infringement actions of late. The standards area brings the ongoing transformation in the law on damages into sharp focus – a subject that Vinti has a real affinity for; he is shrewd at leveraging the expertise of Proskauer’s antitrust professionals and econometricians in the service of clients. He has his niche, but his dynamic practice is in fact very broad; among other things, he has been increasing his focus on medical devices and has participated actively in the Partnership for New York City Innovation Council, which is harnessing the city’s old and new technology economies to create a more attractive environment for innovators. “Baldo is responsive, easygoing and flexible, and has excellent IP judgement. A successful patent trial lawyer, he is also great at advising behind the scenes.” Unusually for a big firm, Proskauer has been making good things happen for plaintiffs – partly by putting together a strong damages case that can survive the inevitable Daubert challenge. James Shalek
, together with Vinti, is currently acting for BT against videogame developer and distributor Valve, alleging infringement of four patents. Shalek has acted for BT for many years, so he understands the tenor of the company’s business thinking; regardless of who the client is, however, he always invests time in getting to know what makes it tick. “Jim’s legal and industry knowledge is superb, and his advice is always commercially astute.” A fully formed transactional practice makes Proskauer a well-rounded platform. Daryn Grossman
has practised extensively at the intersection of corporate and IP law, and is great at switching gears to do different things for diverse clients. Negotiating large-scale collaboration deals for multinationals and counselling venture community players on their IP investments are all in a day’s work for the perceptive global corporate co-chair and life sciences head.
Quinn Emanuel Urquhart & Sullivan LLP
One of the US patent litigation scene’s heaviest hitters, Quinn Emanuel has “a lot of superstars” in its ranks. The team doesn’t mess about and its opponents acknowledge that “you have to be ready for a fight when going up against them”. As such, it continues to be sought after by those embroiled in disputes in which they need to make a statement or which they simply must win. All of its IAM Patent 1000
litigators share something in common – proficiency at trial – but they all bring something different to the table too. Raymond Nimrod
knows what it takes to prevail in court without question, but is especially effective at putting cases away early thanks to his skilful initial evaluations. Brilliant at the intersection of patent and antitrust law, Thomas Pease
is the man to call in a standard-setting context. Gold-tier resident Edward DeFranco
can navigate stormy seas in any forum and brings assured leadership to the group as national IP litigation co-chair; while Kathleen Sullivan
is a celebrated appellate “superstar”. Special mention should be made of Quinn’s “vibrant” pharmaceutical and biotechnology practice, of which the New York office is the epicentre. Life sciences co-chairs Peter Armenio
and Sandra Bresnick
are joined in the IAM Patent 1000
this year by Dominic Cerrito
, who is admired as a “tough but fair” advocate.
Robins Kaplan’s plan to mimic the success and style of its Minnesota-based patent litigation group here in New York is a fait accompli
. The local team is creative in how it approaches and argues cases, and achieves results in and out of the courtroom with rare efficiency by understanding the business objectives that drive disputes. Referring to its activities in the area of SEPs, one commentator observes: “Robins Kaplan is excellent in pre-litigation planning and damage assessment phases, and offers careful guidance before the game of litigation begins. It is very good at helping clients to assess royalty rates which they should be offering, and how their proposals will stand up to litigation attacks concerning fair, reasonable and non-discriminatory terms.” Ronald J Schutz
chairs the national IP and technology litigation group and is feted as one of the country’s most fearsome litigators, with many big jury verdicts on his CV.
Ropes & Gray has lost talent recently, but it remains in the national frame for high-rolling patent litigation and concomitant PTAB proceedings. Jesse J Jenner
’s presence in New York has much to do with this: an arch strategist who can put together a winning case and see it through in the courtroom, he is a veteran of lawsuits in the triple figures – spanning many technical fields – and is a talisman of the patent bar. The firm also retains a rich practice in the rights management and transactional areas, which serves to set it apart from many other full-service players. Joseph Guiliano
spearheads the firm’s portfolio management and development efforts, making effective use of the technically cultivated team that surrounds him. Rovi is one long-term client; thanks to his efforts, the company has developed a classy and lucrative portfolio. Karen Mangasarian
does similar work on the life sciences side of the equation, giving the likes of AbbVie competitive bite. Co-heading the international division is technology and IP commercialisation kingpin Harry Rubin
. A master builder of cross-border deals, he has written a widely referenced textbook on the subject.
Shearman & Sterling LLP
A global outfit with a presence in key international technology centres, Shearman & Sterling is a natural fit for a US patent litigation practice and a strong one is starting to coalesce around Thomas R Makin
and Mark Hannemann
, who came on board in late 2015. The firm consequently earns its first listing in the IAM Patent 1000
litigation table this year. “Tom and Mark are knowledgeable, organised, detail-oriented litigators who understand what their clients need. During protracted pieces of litigation, they remain true professionals and a pleasure to work with.” Of late, they have joined forces to give Robert Bosch Tool Corporation a strong one-two punch in a major ITC fight with a competitor – a case which involves multiple patents and inter partes
review petitions – but they each run cases independently with finesse.
Sidley Austin LLP
Sidley Austin excels at jury trials and, with a critical mass of winning litigators on board, is primed and ready to handle the biggest suits going. The firm’s name conjures up images of IP titans such as David Pritikin (Chicago) and Carter Phillips (DC), but the growing New York contingent is certainly starting to penetrate the consciousness of leading innovators. When former Ropes & Gray partners Bradford Badke
, Ching-Lee Fukuda
and Sona De
joined just over a year ago, they effectively doubled the patent litigation partner count in New York. Badke, who now heads the local IP group, is a formidable force in pharmaceutical patent litigation. He and Fukuda brought a robust medical device practice with them, which has filled a bit of a gap for Sidley in terms of industry coverage. Fukuda’s practice extends into the electronics, software and telecommunications areas, and she has plugged right into national trial teams representing leading players in the high-tech world. These companies are also afforded a dedicated global technology transactions service courtesy of Jennifer Coplan
and a cadre of US lawyers that spans the East and West Coasts – not to mention experts in Europe and Asia. Coplan is a noted authority on digital media and innovation.
Skadden Arps Slate Meagher & Flom LLP
Skaddens' killer USP in intellectual property is its transactional expertise. Few firms have as deep a bench of specialist patent, technology and deal brokers as this prestigious New Yorker, which has four individuals on the IAM Patent 1000
transactions table – a tally matched by only one other. Stuart Levi
and Bruce Goldner
both earn a spot in the top tier and are considered among the best in the business. Levi is “super into the tech and how it is developing”, exploring this within a diverse practice that encompasses all technology transaction types, as well as issues such as privacy. His IP and technology group co-head Goldner also brings complementary expertise on brands to the table. A registered patent attorney, Matthew Zisk
focuses on technology-rich transactions, particularly within the life sciences and chemical industries; he has an organic chemistry PhD and is among the most technically adept lawyers doing this kind of major deal work. IP monetisation is the metier of Jose Esteves
, a lawyer whose strategic nous is highly prized by global innovators.
Steptoe & Johnson LLP
Steptoe’s New York patent litigation practice really kicked off in 2014 when John Molenda
joined the squad. The firm chose the right person to hand over the keys to: “John is a superstar – the cream of the crop in the life sciences. A first-chair trial lawyer who has done some really large cases, he has a razor-sharp focus on the points that matter most and doesn’t waste time on non-issues.” Of particular note is the chemistry PhD’s expertise on biologics and biosimilars; he is in hot demand as a speaker on the subject and is currently involved in crucial contentious action too. Vishal Gupta
also measures up on biotechnology and pharmaceutical litigation. Drug companies trust him on the science – he comes from a pharmaceutical formulation and research background – and he has proven his mettle time and again in court.
In a quantitative survey, Sullivan & Cromwell might not make a blip on the radar; but if you’re taking a granular look at the quality of work undertaken on vital instructions, its small but perfectly formed group will loom large. As an example, Garrard R Beeney
recently represented Cuozzo Speed Technologies before the Supreme Court in a case which challenged the USPTO’s implementation of the America Invents Act’s post-grant proceedings; he also put in another appearance at the Supreme Court, this time for Stryker, in which he persuaded the court to set aside the Federal Circuit’s strict standard used for awarding enhanced damages in patent infringement actions. These being the two major Supreme Court patents cases of 2016, it is abundantly clear that Beeney is the person to connect with when you want to push the boundaries. Off the back of such a stellar year, and propelled by excellent references, Beeney moves into the IAM Patent 1000
gold tier for 2017. “Garrard is always thinking about trial and how juries will respond to things. He is a master strategist when it comes to the procedural aspects of patent litigation – he uses all the tools at his disposal extremely well – and in the heat of battle, he remains steady and calm; nothing surprises him.” The story is the same on the transactional side of the practice, where high-value, complex matters – often with broad industry ramifications – are the name of the game. IP monetisation and licensing nous is supplied by Beeney, while cybersecurity, M&A and IP partner John Evangelakos
brings a world of corporate expertise. Axel Springer's acquisition of Business Insider and Intercontinental Exchange's $5.2 billion acquisition of Interactive Data Corporation are two big-ticket transactions that he recently helped to shepherd over the line.
Weil, Gotshal & Manges is putting on a clinic in the patent transactional area, with a redoubtable integrated New York and Silicon Valley team of specialists who are never afraid to break the mould. New York partners Michael Epstein
, Jeffrey Osterman
and Charan Sandhu
are each capable of getting the biggest deals inked, but they draw immense strength from frequent collaboration and knowledge sharing. A prolific author who covers many IP topics, chief of the watch Epstein is a real authority; his erudition certainly stands out, but so too does the depth of his practical experience. Rolling up his sleeves on massive projects, he recently acted for Sanofi in connection with the $25 billion exchange of its animal health business with Boehringer Ingelheim’s consumer healthcare business. The pragmatic, tireless Osterman puts heart into the protection and advancement of clients’ commercial interests; he had a big hand in the Sanofi matter outlined above, but has done several other notable tie-ups for the company of late. Healthcare and life sciences makes up a big part of his practice, but the nature of the tech never affects his ability to seal the deal. Sandhu has bags of industry recognition and is known for her ability to move matters past daunting obstacles. She is currently acting for General Electric in connection with various strategic disposals. Marquee clients also make a beeline to Weil’s famous patent litigation team when there’s a lot on the line. Anchoring the practice in New York is Elizabeth Stotland Weiswasser
, a life sciences doyenne who combines a sparkling intellect with legal creativity and commerciality. Johnson & Johnson is happy to place key matters in her hands and has instructed her as lead counsel for its pharmaceutical division Janssen in four patent infringement cases against Mylan over drug formulation technologies. She is also seeing action in the PTAB and is representing Altria Group subsidiary Nu Mark in nearly two dozen inter partes
review proceedings relating to vaping technology.
White & Case LLP
White & Case is a destination of choice for leading life sciences and high-technology innovators in need of sophisticated litigation counsel. It has an exemplary track record both at trial and at summary stages, running lean teams in which partners are closely involved. In Dimitrios Drivas
, the firm has a marquee life sciences litigator who “has been doing patents all his life” and who “really understands the business”. His ability to “simplify complex ideas effectively” puts him at a distinct advantage in hotly contested tussles over blockbuster drugs. Life sciences group leader Jeffrey Oelke
is another repository of trust and has lately been protecting Pfizer’s incontinence drug Toviaz along with Drivas. He never blocks the client and how it interacts with his team, which includes excellent juniors who are communicative and always ready to step up; this approach engenders trust and patrons find it refreshing. In his high technology-focused practice, Kevin McGann
puts his energy into the things that will turn a case, but is adaptable and alert as complex matters inevitably evolve; as a result, he often nets early wins, but is equally well prepared to go the nine yards. He works his magic for Google, a company that Scott Weingaertner
also knows well. “Scott is your archetypal patent attorney who can do it all. He wins cases by being on top of the facts and by knowing the law better than the other side. He is a very intelligent lawyer and really puts his client first.” The patent and technology transactional mavens at White & Case aren’t your run-of-the-mill terms and conditions lawyers; they can sit down at the table with leading corporate heads and hammer out breakthrough deals that are global in scope. Adam Chernichaw
– who has been instrumental in establishing the firm’s cross-departmental fintech group – has made the representation of buy-side institutions and product end users something of a specialty. Daren Orzechowski
comes from a litigation background and leverages his contentious experience to craft agreements that will stand the test of time. Both have been IAM Patent 1000
recommended for several years, but for 2017 they are joined by Arlene Arin Hahn
. She has a scientific education and has spent her private practice career in intellectual property, doing mainly litigation before switching gears to become a transactions specialist. Attracted by White & Case’s commitment to the tech world, she joined the firm in September 2015 and has since brokered many IP-intensive deals, including Zimmer Biomet’s billion-dollar share and common stock acquisition of LDR Holding Corporation, which owned patented technology for the treatment of spine disorders.
Wilmer Cutler Pickering Hale and Dorr LLP
Referring specifically to its New York office, one top trial lawyer calls WilmerHale a “superb firm”; it is certainly one of the biggest patent litigation names in the national consciousness, too. Located at 7 World Trade Centre is American College of Trial Lawyers fellow Robert Gunther
, undoubtedly one of the brightest stars in WilmerHale’s constellation. “He has really seen it all and is a determined person who advocates strongly for his clients.” “Thorough, hands on, an excellent writer and a caring person”, Gunther is looked up to by many as a mentor.
Competitor-on-competitor action sees Winston & Strawn at its brilliant best. Just as its clients do, the firm perceives patent litigation as a business problem and it has a deep playbook to delve into in order to execute favourable solutions. Though best known for taking cases through trial and emerging victorious, it can also drive settlements with early wins on procedural grounds, for example, or guide disputes to a successful close via alternative resolution channels. A deep bench of first-chair trial lawyers remains a distinguishing feature of the group, and while all its professionals operate within a national practice in which office walls are no barrier to collaboration, the New York contingent is well worth shining a light on. Michael Murray
recently shored up an early PTAB win for one of the world’s largest electronic options exchanges with a Federal Circuit affirmance. The veteran litigation partner knows just how to play it in all forums and recently joined up with the firm’s illustrious DC-based ITC crew to act for Ericsson against Apple in a major suit that played out at the commission, as well as across several district courts. Though a skilled swordsman, Murray doesn’t get too caught up in the cut and thrust of litigation; he can also parry, leaving clients appreciative of his sensible, commercial approach. Another high-flying litigator, Scott Samay
is a “cool and impressive guy who is fun to watch in the courtroom. He’s a 'by the book' kind of lawyer, but also makes his points with a bit of flair. He doesn’t back down or let witnesses squirm out of things.” Technically astute across the spectrum, he can beef up any trial team and also fill lead roles with confidence and poise. Allan Fanucci
also gets great references, but his practice is a little different, with a focus on patent claim formulation and interpretation. “He introduced patent prosecution to Winston & Strawn as a meaningful business after coming out of Pennie & Edmonds and he has built up a really strong practice. He is an excellent prosecutor and a very hard worker who can be relied on 100% to do a top job.” An expert on chemical, mechanical and pharmaceutical inventions, he has a number of interesting niches, such as food chemistry and fragrances; he manages the US portfolio of Swiss entity Firmenich, the world’s largest privately owned flavours and fragrances company. Pejman Sharifi
also has an excellent bedside counselling manner and a broad skillset that includes prosecution and transactions, as well as litigation.