Akin Gump Strauss Hauer & Feld LLP
Home to 15 patent lawyers, Akin Gump’s DC bureau is compact; but with Cono Carrano
at the helm, it nonetheless packs a mighty punch. Carrano “continues to be on a phenomenal run” and is “just getting better and better as a patent trial lawyer”. “He is the hardest-working IP litigator there is – he really gets the tech and he doggedly pursues clients’ goals.” “He makes a great team leader on large-scale litigation. Always prepared, he won’t hesitate to step up, even if a request is last minute.” A former supercomputer designer at AT&T Bell Laboratories who is fluent in semiconductor, electronic, software and communication technology, he can effortlessly switch gears and just as effectively handle biotechnology matters. He is also a frequent flier at the International Trade Commission (ITC), where he demonstrates rare tactical nous and an ability to focus on the most critical elements of a dispute. A strong year has seen him successfully put several district court litigations to bed, too.
Alston & Bird LLP
Alston & Bird’s national patent practice is striking: not only is it involved in plenty of high-stakes litigation, it also files in excess of 1,500 patent applications at the US Patent and Trademark Office (USPTO) annually – in addition to 1,000-plus around the world. In the capital, the firm has a strong focus on practice areas that intersect with DC’s regulatory focus, and this includes IP litigation. Quarterbacking a specialised Section 337 practice, Jamie Underwood
makes judicious use of her local colleagues as well as inter-office resources to ensure that clients have a team with the most relevant experience and expertise on their side. Serving on several ITC-oriented bodies – including the ITC Trial Lawyers Association executive committee – she has her ear to the ground in terms of case law and policy. Another local hero is Scott Pivnick
, who heads the DC IP litigation section. He has a wealth of ITC experience on his résumé, too, but can also bring the heat in the district courts and before the USPTO’s Patent Trial and Appeal Board (PTAB). Post-grant proceedings have become a larger part of his practice: he is currently representing M-I Drilling Fluids (as patent owner) in a series of inter partes
reviews, which are showcasing his cutting-edge knowledge of energy industry issues. Pivnick is much appreciated for his objective take on disputes and ability to give reliable early cost-benefit assessments.
Andrews Kurth Kenyon LLP
Andrews Kurth’s recent union with Kenyon & Kenyon has dramatically increased its IP strength, particularly on the contentious front; the firm now has the critical mass to provide an A-to-Z patent service. Those coming on board from the Kenyon side in DC included John Hutchins
, who makes his debut in the IAM Patent 1000
this year. Litigating in district courts, at the Federal Circuit and before the PTAB, he is an all-rounder when it comes to patent disputes; he also knows a thing or two about alternative dispute resolution methods, particularly mediation. Big names in the consumer electronics space have kept him busy lately. Meanwhile, fantastic work continues to be done by wunderkind biotechnology prosecutors Ping Wang
and Michael Xuehai Ye
, who both come from the Andrews Kurth side. Charismatic doctor of medicine Wang is a true dynamo, running busy prosecution, post-grant and transactional practices with international horizons and a glittering roster of appreciative patrons. Biochemistry PhD Ye has made China a big inbound and outbound market for the firm. His core business is prosecution, but he makes clever use of wider resources to provide comprehensive solutions.
Arnold & Porter Kaye Scholer LLP
A new legal titan emerged in January 2017 when the union between Arnold & Porter and Kaye Scholer took effect. Clients now have 1,000 lawyers at their disposal, spread across multiple domestic offices in addition to four locations internationally. Both firms have brought extensive patent resources to the table, as well as skillsets that look to be highly synergistic, especially in the life sciences. This is where eminent counsellor David Marsh
plies his trade. Not only one of the nation’s top patent prosecutors in the biotechnology and pharmaceutical industries, he is a versatile player who can put in artful performances at the PTAB and in European oppositions. He continues his sterling work for Monsanto in connection with the protection of breakthrough plant genetics technologies, and for Bruin Biometrics safeguarding commercially vital medical device portfolios; the patents he obtains are laser targeted at the product and the business, and not just wallpaper without commercial value. His technical and tactical acumen will no doubt be leveraged by those from Kaye Scholer, whose traditional bastion of strength has been Hatch-Waxman Act litigation. The upheaval of a major merger hasn’t thrown VIP trial lawyer Matthew Wolf
off his game: he has been busy representing Boston Scientific against Edwards Lifesciences concerning transcatheter aortic valve replacement in one of the world’s biggest ongoing patent litigations, with over $1 billion at stake, in addition to anchoring several other important cases for the same client. Technically adept, he is also acting for Samsung in diverse suits involving semiconductor fabrication and haptic feedback technology, for example. Blue-chip companies are keen to have him take the lead on as many of their cases as possible. Though Michael Raschid’s Summer 2016 move in-house was a loss, the transactional practice – which will be a powerful asset as the firm moves forward – continues to hum. A “creative and steady attorney” who is “brilliant on high-level licensing and fundraising issues”, Susan Hendrickson
impresses all who cross her path. Whatever the sector, she knows how to seal the deal on a lucrative IP agreement.
Baker Botts LLP
Baker Botts has significantly augmented its already hefty national patent practice of late; in August 2016 it added respected Cooley alumnus Wayne Stacy to its San Francisco office (opened in late 2015), while in DC it brought on former ITC Office of Unfair Import Investigations senior attorney Lisa Kattan to helm its Section 337 practice. Kattan joins a local team chaired by Luke Pedersen
, who also captains the post-grant practice. Under his watch, this has become one of the busiest in the country and, with clever leveraging of the firm’s dual prosecution and litigation expertise, one of the most successful. At the start of the year, Pedersen launched the Baker Botts PTAB trials blog, which takes a more granular look at the scene than your typical post-grant newsfeed. Patent and technology transactions are another happy hunting ground for Pedersen, who closes deals by the dozen for private equity players such as American Industrial Partners, as well as industry leaders in the energy and telecoms sectors. On top of it all, he continues to manage several portfolios, including a sizeable docket on behalf of CA Technologies. Given growth on the ITC and post-issuance sides, the DC office looks set to play an even more important role as Baker Botts moves forward into 2017 and beyond.
BakerHostetler is no highfalutin’ New York or DC ensemble – its more down-to-earth atmosphere and straightforward approach resonate with companies seeking a partner which better reflects their own values and style – and their budgets. This is not to say that there is any lack of top-class legal and technical talent – it has this in abundance on both sides of the contentious/non-contentious divide. Its prosecution practice originated in the DC office, which continues to manage some of the largest client accounts today. Erdal Dervis
and Kenneth Sheehan
, for example, provide crucial international protection to Teleflex, acting across scores of the company’s divisions. Dervis, who debuts in the guide this year, has an aerospace R&D background and understands what it means to innovate in highly technical areas; a thriving transactional practice has also given him a resolutely commercial stance. Portfolio management is the metier of Sheehan, but his combination of post-grant, licensing and litigation experience is, in part, what makes him so effective at it. Equally versatile, though with a greater focus on litigation, is Barry Bretschneider
, whose deft advocacy skills translate well in any dispute forum. Also rated for litigation are William Bergmann
and Robert Hails
. Former US Department of Justice attorney Bergmann has unique expertise at the intersection of intellectual property and government contracts; while ex-Kenyon man Hails has settled in well and has engaged in some interesting inter partes
review work for Sony recently.
Banner & Witcoff, Ltd
One of Banner & Witcoff’s chief claims to fame is its exemplary design patent expertise; its DC office contributes two individuals, Robert Katz
and Darrell Mottley
, out of a total of seven, to the IAM Patent 1000
’s US national design patent experts list. Katz receives international acclaim for his understanding of the field and – as testament to the quality that flows from his pen – the rights he has prepared have been winningly enforced and formed the centrepiece of lucrative transactions. He and former DC bar president Mottley cover all angles when acting together for Microsoft, which has entrusted them with its full design patent portfolio; Nike is another of the elite pair’s premier clients. Across the spectrum of IP rights, the firm runs a “consistently good prosecution programme”. Ross Dannenberg
has lately been coming up with the goods for Citrix Systems, patenting various software technologies. Experienced in all facets of computer science, he has carved a niche in the video gaming world, setting high scores with his work, even when faced with fiendish levels of difficulty.
Birch Stewart Kolasch & Birch LLP
Prosecution has been a core output of Birch Stewart Kolasch & Birch since it arrived on the scene in 1976. Operating across the life sciences, high-technology and mechanical engineering fields, it procures patent rights efficiently for a large cadre of clients – particularly foreign companies investing in the United States – and regularly appears near the top of the filing league tables; the many former USPTO examiners on its staff consistently devise strategies that get results. The firm buttresses its prosecution service with a dedicated post-grant capability; interested parties should note the wealth of information regarding post-grant issues and decisions provided on its website. A further litigation group rounds out its comprehensive offering.
Blank Rome LLP
Blank Rome’s strategic 2015 mergers with Texas boutique Wong, Cabello, Lutsch Rutherford & Brucculeri and DC shop Dickstein Shapiro have panned out really well; its 60-plus professionals engaged in patent protection and enforcement can now present clients with all the IP resources they might ever need. The versatility of the DC section – which has individuals listed in each of the litigation, transactions and prosecution tables – is mirrored by the nationwide group as a whole. With Jeffrey Sherwood
in the mix, the firm’s litigation practice is certainly worthy of special mention. Dyed-in-the-wool trial lawyer Sherwood knows the importance of building credibility from the moment a case is filed and is particularly brilliant at bringing technical issues alive in the eyes of a jury. “Jeff is a top-notch guy and is incredibly hardworking – he isn’t one of those lawyers who parachutes in last minute before attempting to pull a rabbit out of a hat. He never coasts, but hustles for his clients and has a great business mind, as well as an ability to dig into the technology.” Obtaining a unanimous jury verdict against Alstom Grid for Dominion Resources is just one of a litany of recent successes. Many of those in the prosecution group have contentious experience and capitalise fully on this to produce robust rights that will survive beyond the courthouse. James Brady
and Stephen Soffen
both fall into this camp. In the game for nearly three decades, Brady maintains a practice that touches on just about every aspect of patent law and can flawlessly juggle the demands that this entails. With his love of science and finely honed litigation instincts, he readily takes to post-grant work, but continues to stay sharp on prosecution, with a technical compass circling the pharmaceutical, medical device and energy spheres. In the latter, he has been representing First Solar – the world’s second-largest maker of photovoltaic modules – as prosecution counsel. Soffen keeps it real in the high-technology space, counselling clients down paths that improve their bottom lines: “The claims he gets are fundamental and well prosecuted, and tried and tested in district courts and the Federal Circuit. His support team is always professional and efficient, too.” Donald Gregory
secures patents as well as anybody, but stands out for his facility for the commercial exploitation of rights. Engaged in burgeoning industries such as electric power, he has a steady deal flow. Fellow prosecution and transactional pundit Jon Grossman
is a touchstone for those in the software business; his cybersecurity expertise gives patrons an added layer of comfort. Working alongside the firm’s top government contracts boffins, he is a true expert on government procurement issues and recently acted for military vehicle specialist Oshkosh Defense in a major bid protest claim by Lockheed Martin in the Court of Federal Claims, which challenged the award of a $6.7 billion joint light tactical vehicle production contract to Oshkosh. Needless to say, Grossman prevailed in this wrestling match and Lockheed Martin gave up the cause.
Bookoff McAndrews PLLC
The founders of Bookoff McAndrews wanted to create a platform conducive to establishing close relationships with innovators and a patent practice with a laser focus on both quality and cost effectiveness; they have certainly made good on all their promises. “When you are with Bookoff McAndrews, it is always a great partnership. It builds portfolios around innovative technology very strategically and executes the prosecution of patents in the United States and worldwide with great tactical acumen.” At a time when others are stagnating, solid growth has been the story of the year here; sophisticated companies looking for an edge come calling sure in the knowledge that the BoMc crew “understands your business inside out”. Having obtained over 400 patents for Boston Scientific since late 2012 – and currently managing near 1,000 pending applications for the leading manufacturer – it has a virtually unrivalled understanding of patent procurement in the medical device industry. Mechanical engineering is another forte, though the group’s expansion of operations in the IT, software and electrical spheres – evidenced, for example, by its recent patent harvesting, prosecution and value mining efforts for AOL – is a trend definitely worth noting. Taking the lead on this initiative is Christopher Agrawal
, a true tech enthusiast with a gift for carving out market exclusivity. Alongside his AOL activities, he has been growing the portfolio of Vantiv, a pioneer in the field of payment processing. Taking care of Boston Scientific are Les Bookoff
, Roland McAndrews
and Dinesh Melwani
, all of whom attract vociferous praise. “Les always has your goals in mind and knows how to reach them within budgetary restraints. You’re going to get quality with him in charge – he is very detail oriented and a great leader.” Likewise, “Roland ensures that business-focused outcomes, as well as maximum patent protection, are achieved”, and is “an excellent team player” who serves up “comprehensive and sophisticated patent strategies”. “Dinesh doesn’t just get you patents – he gets you rights which add value from both offensive and defensive perspectives. He and the rest of the crew prosecute patent applications with an eye towards litigation, which is key.”
Buchanan Ingersoll & Rooney PC
Prosecution remains a cornerstone of Buchanan’s IP practice; its talented cadre of former examiners and registered attorneys prosecutes over 1,600 patent applications per year at home and abroad, achieving an enviable allowance rate. Enhanced efficiency as a result, for example, of the judicious use of third-party services keeps the team competitive in this evolving market. Chair of the mechanical practice group and board of directors member William Rowland
is one of the top advisers and prosecutors here, and someone to whom Japanese corporations have a hotline. Fellow mechanical master Matthew Schneider
, the IP section chair, is another favourite of overseas clients, who love his goal-oriented counselling style and prosecution advice laced with infringement and enforceability insights. Charles Wieland
is a new entrant in the IAM Patent 1000
this year; he has an all-seeing eye and can obtain and monetise IP rights, as well as handling any challenges to them in dispute forums. “An outstanding patent lawyer, he is responsive and conscientious, and effectively manages a team that really delivers what you need. He takes a personal interest in your technology and business and, in addition to his technical acumen, has all the right people skills.” The set continues to pursue a path of excellence in the post-grant space and the establishment of a specialised section has crystallised this message to the marketplace, fuelling demand for this dedicated service. Names to note here include Todd Walters
, Erin Dunston
and Robert Mukai
. Walters helms the patent office litigation practice and currently chairs the American Intellectual Property Law Association’s PTAB Trial Committee. Hand in hand with fellow interference maven Dunston, he recently obtained judgment on priority of invention on behalf of his client in a patent interference involving Nobel prize-winning biosciences technology. Biotechnology chair Dunston is warmly commended as “highly proficient in all aspects of patent law”, and a “responsive and sharp lawyer who can be counted on for useful solutions”. Mukai is known for his deep re-examinations expertise and is a polymer chemistry whizz who heads the Alexandria office. A high-profile recruitment in New York has significantly bolstered the patent litigation and enhanced the comprehensiveness of the firm’s IP offering. Strategic vision on practice development and client service enrichment is supplied by Patrick Keane
, an all-round counsellor with a wealth of litigation and transactional expertise to call on.
Cadwalader Wickersham & Taft LLP
Alexander Hadjis pinned Cadwalader’s name on the DC IP map when he arrived from Morrison Foerster in 2013 to bring leadership to the firm’s ITC patent litigation practice. The veteran of many a stirring ITC campaign – Freescale Semiconductor against MediTek and Huawei against Flashpoint Technology come to mind – Hadjis is well accustomed to the relentless pace of Section 337 investigations. A combination of finely honed technical skills and trial craft makes him the complete package.
“Cooley is a top-tier national competitor in the life sciences space and is one of the strongest presences out on the West Coast. It is changing, though, and has expanded in places like Boston while maintaining a significant presence in Virginia and DC.” The Reston office is replete with talent and, including all-rounders such as Christopher Hutter
and Scott Talbot
, can proficiently field any patent enquiry – hence its appearance on each of the DC firm tables. An awesome counsellor in the electrical and mechanical arenas, Hutter can procure, monetise and litigate patents with ease; his broad perspective enhances the leadership he provides to Cooley’s prosecution group. With exhaustive knowledge of industry trends and business methods, Talbot stands out for the holistic counsel he provides to medical device companies. Also recommended for his all-encompassing patent expertise is Erik Milch
, “a results-oriented lawyer with excellent judgement who you trust in any litigation, prosecution or inter partes
review conflict situation”. Leveraging prosecution know-how in an adversarial context, Reston partner in chief Frank Pietrantonio
earns high marks for his dexterity at resolving conflicts, be they in court or at the USPTO. With professional electrical engineering experience, he is rocklike on the technical front. One of Cooley’s best-known practices nationally is in patent and technology transactions, and this is where Adam Ruttenberg
makes vital contributions. In recent years he has closed off a number of important digital content management and streaming technology deals and become a go-to for all things internet related.
Covington & Burling LLP
Covington & Burling is a DC powerbroker with a standout regulatory and public policy practice sitting alongside its corporate and litigation offerings. It also has a great deal of cachet in the IP world – especially when it comes to patent litigation. At the head of a deep bench of advocates sits George Pappas
, a prize fighter, gentleman, trial lawyer, negotiator and counsellor all rolled into one. A prominent figure within the American College of Trial Lawyers, he has forged a first-class reputation from the fires of high-stakes patent and commercial litigation. Richard Rainey
is another eminent litigator; as a former GE global litigation executive counsel, he has invaluable in-house experience right at the top. Kevin Collins
is another name to commit to memory. Melding patent and trademark district court litigation experience with appellate and ITC expertise – and a USPTO registration number – he is a Swiss Army knife of a lawyer who can soothe any infringement headache. Its potent ITC litigation practice is a jewel in Covington’s IP crown; with Sturgis Sobin
, Maureen Browne
and Alexander Chinoy
on its books, the firm can always present an A-team for consequential Section 337 investigations and has “done the best job staying consistent in terms of practice at the ITC”. “If you’ve got people like this on your side, then you’re lucky; but the same is true if they are your opponent, as you know its going to be a thoroughly professional fight,” say peers. “Sturge is a policy wonk with deep knowledge of the ITC and excellent organisational skills, while Maureen is great at managing discovery.” All three can call on Shara Aranoff, a former commissioner and chairman of the ITC who now sits in an of counsel role, to get a true insider’s perspective for that extra edge. Though not a prosecution player, Covington is nonetheless a presence at the USPTO thanks to Andrea Reister
’s superior post-grant work. Satisfying the commercial and transactional demands of life sciences industry leaders is another trick that, much like winning litigations, Covington has mastered. Industry guru John Hurvitz
brings fresh thinking to well-established deal models; people seek him out when they want to push the commercial envelope. Another IP licensing and monetisation authority is Stuart Irvin
, though high-technology is more his playground. The settlement transactions specialist has carved another niche in the videogames and e-sports scenes; his nimble management of the moving pieces of complex transactions would impress any pro StarCraft player.
The IAM Patent 1000
listings highlight the versatility of Dentons’ patent practice in Washington DC: it has individuals listed in each of the prosecution, litigation and transactions tables, including one – Song Jung
– who appears on all three. Client care is top of mind for global IP and technology group head Jung, who can supply a solution to any patent problem; Korean titans such as LG love him for his panoramic perspective. The litigation team has had many recent successes to shout about – most notably a complete win in one of the Northern District of California’s largest patent cases, which allowed Nistica to continue providing key components to Verizon and AT&T and innovate in its market. Trial lawyer Lora Brzezynski
, who guided the young company to victory, gets a great write-up from customers: “She is top of the bunch and can’t be recommended highly enough. Communicative and efficient, she provides accurate insights into case law and how it affects you.” Another highlight was supplied by Mark Hogge
, who secured a major defence verdict for Flextronics International in a Section 337 proceeding at the ITC; the case culminated in a seven-day hearing in which over 40 witnesses testified, but Hogge maintained masterful control of it all. Prosecution remains an important element of the firm’s patent practice and the DC prosecutors are doing more than their bit to propel Dentons up the patent quality charts, all while covering a broad spectrum of technology. Mark Kresloff
fits the same versatility template as fellow ex-McKenna Long & Aldridge colleague Jung; he prosecutes with panache in the electrical and computer areas, but can smoothly cross over into technical fields such as biomedical, and also draws on a deep well of litigation experience. “Mark is incredibly diligent in the way he gets to know your technology and how it is used in the industry, and is highly ethical and extremely responsive.” New to the guide this year is chemical group head Martin Bruehs
, another well-rounded contentious/non-contentious expert. “He is great at client relations, and understands what you need and how you need it – he speaks your language and can bring inventive solutions to the table which are adapted to your business.”
DLA Piper LLP
Top-down management isn’t the way of things at DLA Piper; as a result of the practice development freedom it has granted to partners, it has cultivated an eclectic group of talented patent experts who are ready for anything. In Northern Virginia, James Heintz
is a smart option for those looking to procure and litigate patents. His technical know-how traverses the electrical and computer spectrum, and his knack for seeing around corners proves invaluable when a clever strategy is needed to get the jump on opponents. Gianni Minutoli
isn’t short of litigation experience either, though his practice is more preparation and prosecution oriented. As a former senior engineer in the defence sector, he has no problem getting granular with inventors to capture the essence of an innovation. Likewise Dale Lazar
, whose technical acumen comes interlaced with an encyclopaedic knowledge of patent law. He creates rights with real commercial bite, based on his software industry nous. The downtown DC team is compact, but with Joseph Lavelle
and Kathryn Riley Grasso
on the books, it hits hard in litigation. “More and more, particularly in the software realm, you need someone agile who can understand how IP and antitrust issues intersect, and Joe Lavelle really delivers in that regard.” A repository of trust, he enjoys deep institutional relationships with major US manufacturers that typically go back decades. Grasso, a denizen of the DC and San Diego offices, litigates across the country and has plenty of jury trials under her belt.
Drinker Biddle & Reath LLP
Drinker Biddle’s DC office is home to one of the best life sciences patent portfolio experts anywhere in the country in the form of Mercedes Meyer
. The biotechnology and chemistry virtuoso is “incredibly smart, thinks strategically and is a blast to work with – she is animated and loves what she does”. Another key asset in the capital is Robert Stoll
, a former USPTO commissioner for patents who knows all the ingredients required for a quality patent. Throughout his career he has done much to shape the US patent system and promote awareness of intellectual property, and he is admired by all stakeholders as a font of wisdom on the protection of technical novelty. Meyer and Stoll are joined in the IAM Patent 1000
this year by John Smith
, a “terrific lawyer and counsellor” and “one of the best prosecutors”. The former Tokyo resident is a touchpoint for Japanese companies seeking advice on US protection, as well as for US companies looking towards Asian markets.
From day one, compact specialist Fiala & Weaver invested heavily in its technological infrastructure, streamlining and automating its prosecution processes in a highly cost-effective offering. Start-ups appreciate that “it can take a basic disclosure and convert it into a patent filing with the minimum of fuss”. However, all this efficiency has not come at the cost of quality or the personal touch – the “first-class” firm maintains the highest standards in both respects. Electrical engineering and software are strongholds for the team, which has proven itself uncommonly adept at navigating clients through patentability issues and overcoming Alice
rejections at the USPTO; the Federal Circuit may have provided a slightly clearer roadmap on the issue of subject-matter eligibility, but Fiala & Weaver has always been ahead of the curve on it. Thomas Fiala
, a strategic sounding board for emerging and well-established companies, has an easy time procuring patents for computer technologies; he knows how best to enforce them, too. Former aerospace and semiconductor engineer and Sterne Kessler alumnus Jeffrey Weaver
has broad technical shoulders to lean on and is a go-to for far-sighted counsel.
In the face of the changing dynamics of the legal services market, not to mention the shifting sands of US patent law and policy, Finnegan “still shines as a premier full-service IP practice”. “Always impressive, it hasn’t lost any ground.” “Deep in every area of intellectual property”, it is a “formidable name with the ability to bring substantial resources to any patent litigation or patent office matter”. Much praise centres on its “exceptionally strong PTAB practice”, with many sources citing it as the “chief competition in terms of post-grant thought leadership”. Instrumental here is the command and control of Erika Harmon Arner –
the country’s foremost USPTO trials expert, according to the IAM Patent 1000
research. “A real go-getter” who has “taken the Finnegan group to a different level”, she is “super high quality”, “articulate and thoughtful”, and “a top lawyer”. “She is the best – not figuratively, literally,” enthuses one client. “Her presentation style is calm, easy to understand and persuasive, and her ability to see and avoid the traps set by the other side (or the PTAB panel) is impressive to behold. Her knowledge of the case law is also unparalleled.” Thomas Irving
consistently demonstrates originality in his legal thinking to achieve favourable results no matter how daunting the brief. The firm’s phenomenal prosecution skills form a solid bedrock for its post-issuance supremacy and they continue to be maintained at the highest level under Mark Sweet
, who assumed the role of managing partner in Summer 2016. “Mark and his team are best in class, with extraordinary technical expertise, sound business sense and excellent customer service skills.” He has “tonnes of prosecution experience” and is selected time and again by the likes of Arkema, Caterpillar and NanoFlex Power Corporation for his percipient approach to the global development of large and valuable portfolios. A former managing partner of the Brussels office, life sciences maven Bryan Diner
is another prosecution ace with unparalleled knowledge of European patent law and abundant contentious experience. When it comes to litigation, Finnegan is stacked with “smart lawyers who fight hard and find innovative solutions”; clients are positively spoiled for choice in whom to partner with. Former litigation leader Laura Masurovsky
is always a great option, given her ability to get to grips with any kind of technology. “Bright, hardworking and dedicated, she is quick on her feet and excellent at cross-examinations.” Leveraging her commercial litigation background, she quickly gets to the heart of a case to pull out the win; a recent victory involved obtaining summary judgment in favour of HTC subsidiary S3 Graphics in a patent ownership and licensing dispute. Patrick Coyne
combines patent, trademark, copyright and trade secret dexterity, unfair competition expertise and triple-digit case experience in a potent blend. Sources describe him as “a visionary who knows where the law has been and is great at anticipating where it is going”. “He hasn’t lost his real love of the work he does and is a balanced and thoughtful professional who understands all aspects of the law.” For complex high-technology cases, clients make a beeline to electrical and IT chief Doris Johnson Hines
. Showcasing her aptitude for licensing-related litigation, she is currently representing Toshiba in a suit launched by MPEG LA alleging breach of contract. Taking the reins of the chemistry unit is Eric Fues
, an experienced litigator with a presentation style as elegant as his writing. He recently played a key role on a team – led by chairman and Hatch-Waxman ace James Monroe
– protecting Otsuka Pharmaceutical’s blockbuster drug Abilify. In spite of partner attrition in recent years, the firm has “a deep bench for ITC litigation” and is “maintaining momentum” at a time when activity at the forum is picking up. There are many contributors to success here – including Hines and Fues – but Smith Brittingham
is the chief architect. Clients call him an “exceptional lawyer and formidable advocate”, citing his past experience as a senior attorney at the ITC’s Office of Unfair Important Investigations as a boon. “His knowledge of process sets him apart and his oral presentation skills and easy manner find him great success in the courtroom.” Lots of talented lawyers here effortlessly cross practice lines, which helps to ensure close collaboration among the prosecution, post-grant and litigation divisions. Reston office manager Jeffrey Berkowitz
is one of them; the all-round counsellor has his finger on the pulse of clients’ commercial objectives. In Elizabeth Ferrill
, Finnegan has “an undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge”; she also prosecutes and litigates. Perhaps one of the most famous Finnegan features is its dazzling appellate practice: the firm has always had “wonderful senior personalities” and celebrated partner Donald Dunner
is widely considered the best IP appellate lawyer in US history, with Charles Lipsey
another icon. Rich appeals experience can also be found on the résumé of “fabulous lawyer” Michael Jakes
, whom many now regard as the face of the practice. Acting on behalf of PPC Broadband, he recently put to bed two appeals from inter partes
review proceedings in customary winning fashion – the Court of Appeals for the Federal Circuit vacated and remanded PTAB decisions which negatively affected patents owned by PPC. An ongoing fight between client Philips and ZOLL Medical Corp is also keeping him busy; the twists and turns of such multifaceted battles never faze this steadfast representative. “Across the board, Finnegan is just top quality” and raising the bar on the transactional side is a group led by John Paul
. Decades of experience inking agreements, coupled with a profound understanding of the strengths and weaknesses of patent portfolios, makes Paul one of the top licensing minds in private practice. Also recommended are Brian Kacedon
and William Pratt
; contentious savvy gives Kacedon an edge in negotiations, while government contracts expertise helps to set Pratt apart from the crowd.
Fisch Sigler LLP
Winning jury trials is the signature move of Fisch Sigler; nothing can throw it off its A game, whether that be an unfriendly jurisdiction, seemingly impervious science or an army of lawyers on the other side. It has chalked up more defence victories in Marshall, Texas, than any other firm and a string of crucial wins at the Federal Circuit. Founding partner Alan Fisch
is an IP trial lawyer with swagger, but he never gets ahead of himself. Respectful towards opponents, but a zealous advocate for clients, he has first-chaired litigations across the country and met with success every step of the way. Often called upon for insight by the press and a much-cited author, he has a broad perspective on IP protection which keeps him grounded in the heat of battle.
Fish & Richardson PC
No other firm in the United States earns as much positive feedback for patent litigation as Fish & Richardson; in a market where case filings are down and competition has intensified, it appears that Fish has separated itself from the pack. Having “smart, hardworking, proper trial lawyers” Michael McKeon
and Ruffin Cordell
in the DC office certainly helps, of course. McKeon’s “high-energy and tenacious” style lends itself well to ITC patent litigation, but he is “very comfortable in any courtroom” and has prevailed in many a district court, as well as before the Court of Appeals for the Federal Circuit. Cordell is invariably described as “phenomenally good” and an “outstanding lawyer” who is “very skilled in court”. Winning a $28.9 million jury verdict for Paice against Hyundai and a jury verdict of non-infringement for Citrix Systems against 01 Communique Laboratory are just two recent results that have kept him in the headlines. “In litigation, people who haven’t been to trial don’t necessarily understand what is and what isn’t important – Mike and Ruffin definitely do understand and they’re really easy to deal with as a result.” Lauren Degnan
is another seasoned campaigner in competitor-on-competitor suits; the former Federal Circuit clerk also runs a niche appellate consulting practice, doing intellectually demanding work which requires a unique perspective. She has been a frequent fixture in the ITC lately; as has forum specialist Joseph Colaianni
, a highly efficient due diligence, filing and discovery overseer who can also fill lead counsel roles to great effect. Deepening the ITC bench even further is Christian Chu
, a technology savant who moves between high-technology and life sciences with ease. Any patent litigation practice worth its salt these days is incomplete without that added layer of post-issuance expertise and Fish is certainly a “top name in terms of thought leadership” on both subjects. Post-grant co-chair Karl Renner
is in extremely hot demand, but never struggles to keep up and has advised on hundreds of matters since the America Invents Act came into force. “Karl has a prosecutor’s eye and has dived into the inter partes
review world wholeheartedly. He is one of those rare people who speaks well about the technology, in addition to the strategy behind it.” Timothy Riffe
is also “becoming quite the PTAB litigation specialist”; he is well suited to the practice, given his dual litigation and portfolio management background. Unusually for a firm positioned at the apex of the patent litigation and post-grant worlds, Fish also has one of the best infrastructures for prosecution and can safeguard and develop even the largest portfolios with consummate finesse. By sensibly spinning off routine tasks and investing heavily in automation, it can keep bills down for clients on day-to-day briefs – but the legal and technical expertise is available on tap whenever needed. Setting the tone is DC principal John Hayden
; he heads the group and sits on the management committee, but also doubles as a software patent luminary. Mechanical engineer Phyllis Kristal
is the person to call for anything medical device related. Leveraging her experience counselling large companies, she provides trenchant advice to many start-ups that are looking to compete or court attention.
The DC office of storied IP boutique Fitzpatrick has historically focused more on prosecution, but in recent years this has been balanced out by increased contentious instructions thanks to the tireless efforts of Edmund Haughey
and Brian Klock
, among others. Blending fine-tuned ITC expertise into his broad patent litigation practice, Haughey is a whizz at obtaining general exclusion orders at this forum – as he has done on more than one occasion for Canon. On top of his patent activities, he also chairs the trademark and copyright groups, making him a valuable resource for companies with diverse IP interests. Fitzpatrick lifer Klock also has expansive horizons, which are evident in the business-oriented approach he takes to patent conflict resolution. As an experienced prosecutor with an advanced contentious skill set, he is comfortable in a PTAB trial and an important contributor to the firm’s achievements in the area. The main man when it comes to post-grant instructions, however, is Justin Oliver
. The in-depth data analysis on PTAB decisions that he and his team undertake – which is neatly broken down by technical area for patrons – gives him a big-picture view of the arguments that work best; when you have him on your side, your chances of success multiply.
Foley & Lardner LLP
“Foley & Lardner does a lot of high-level patent prosecution and consulting, and is one of the rare general practices that has stayed true on both the contentious and non-contentious sides.” The patent group is one of its leading departments, and clients cherish its end-to-end service and ability to see beyond the immediate filing or litigation instruction. Pavan Agarwal
and Gilberto Villacorta
have taken this full-service ethos to heart and are both trusted advisers to clients at a time when patent law remains in flux. Agarwal is one of the top litigators on the roster, but also brings so much to the table as a strategic and business guide. DC IP chair Villacorta is highly adept at piecing together complex IP transactions, but can nonetheless take charge on any patent brief. He has a bioinorganic chemistry PhD from the Massachusetts Institute of Technology and is a key contact within an “impressive life sciences group”; so too is Courtenay Brinckerhoff
, a senior lawyer who provides leadership within the biotechnology and pharmaceutical, PTAB trials, appellate and medical device teams. Given the firm’s redoubtable litigation and enforcement expertise and deep technical bench, the post-grant area has become a real sweet spot. Stephen Maebius
is no stranger to favourable outcomes in inter partes
reviews (or other PTAB proceedings). He occupies a number of other niches that make him a valuable asset to a varied client base: he is an authority on biosimilars, commercial IP exploitation and the Japanese market. A guiding light on interference law, George Quillin
captains the USPTO trials section while keeping sharp on prosecution.
Gibson Dunn & Crutcher LLP
Having assembled a crack team of patent trial lawyers in recent years, Gibson Dunn is capitalising on its reputation as an inveterate big-ticket litigation winner to grow its IP practice. In a bifurcating market in which fewer names are being shortlisted for must-win infringement suits, the firm has timed it just right. While an expanding client roster has put the New York office in the spotlight, long-time partner Mark Perry
has kept the Gibson Dunn flag flying high in DC. The heavyweight advocate, who famously conjured up decisive arguments for CLS Bank in its Supreme Court suit against Alice Corporation, is undoubtedly one of the top appellate specialists in the country. Brian Buroker
rolled up his sleeves on Alice
, too, making a compelling case before the Federal Circuit. Persuasiveness is a gift he also puts to use in district court, ITC and PTAB trials.
Goodwin Procter LLP
Effusive client feedback confirms that Goodwin Procter is doing all the right things. “It has a very strong IP practice with a deep bench, which includes experienced trial lawyers, well-versed and technically accomplished patent specialists (in a wide range of fields), as well as all the support staff required to handle any type of IP matter.” The A-to-Z nature of its offering earns further praise: “In-house counsel don’t have the time to find multiple firms that can handle specific tasks such as EU compliance, licensing, patent procurement and so forth; with Goodwin, it’s all in one location.” Garnering particularly warm reports, Stephen Schreiner
has one of the broadest remits of any patent partner here. Though litigation is front and centre for him, he is incredibly versatile and can prosecute, develop portfolios, manage due diligence projects and provide commercially astute counsel. “These are times of great change in the patent world, but by using Mr Schreiner and his staff, we feel we are getting the very best legal advice possible,” reflects one client. “He has, for example, been instrumental in teaching us how to license patents for maximum monetary gain.” Another lengthy reference included the highlights: “His memoranda have always been concise, cogent, thorough and well reasoned, and his advice has the added aspect of being expressed in ‘real-world’ practical terms, rather than legal abstractions.... He demonstrates very effective Federal Circuit brief writing and oral advocacy skills.” Jennifer Albert
has been instrumental in nurturing the DC office into a real engine room of Goodwin’s national IP practice. “Jennifer is extremely smart, tenacious and exacting, and has a voracious mind when it comes to technical detail. She is a joy to work with.” The ITC is a forum in which the firm is expanding its sphere of influence and much credit for this goes to Marcia Sundeen
. Her peers on the ITC scene call her a “level-headed, sleeves-rolled-up, get-it-done kind of litigator”, who is “well suited to cases where cost efficiency is a concern”. Clients label her “a thought leader who pushes the envelope on cutting-edge ITC issues” and “an outstanding team leader who manages joint defence dynamics effectively”. While Schreiner, Albert and Sundeen concentrate on high-technology affairs, William James
upholds the firm’s famous standards of excellence in pharmaceutical patent litigation. The DC litigation division is led by William Jay
, who also co-chairs the appellate practice. Clients and colleagues walk into patent battles with added armour when he is by their side.
Greenberg Traurig LLP
A resurgence in filings at the ITC has spelled good news for Greenberg Traurig, which has a crack Section 337 squad stationed in DC. Mark Davis
, Stephen Shahida
and Ronald Pabis
have been involved in over 100 ITC investigations, making them an awesomely experienced line-up. Of late, Davis has been surefooted in his representation of Chinese steel manufacturer Hebei in one of the largest ITC actions ever brought. All three partners have also continued their sterling work for Samsung in multiple patent suits outside of the ITC, showcasing a district court litigation practice that is in excellent health. They are supported in these endeavours by a large cross-office team, which highlights the advantages afforded by Greenberg Traurig’s broad national patent platform.
Distinguished by the most exacting standards of quality, Harrity & Harrity is a prime pick for companies seeking to obtain patents that will stand the test of time and push their commercial agenda. Whether through training on the customer-facing aspects of legal practice or exploring innovative new approaches to data analytics, the set always goes the extra mile to exceed expectations. The architects of one of the most thorough second-attorney-review policies in the patent business and a uniform writing style that leaves no gaps while promoting efficiency, John Harrity
and Paul Harrity
are clever prosecution minds with a growing fan base among blue-chips. They have promoted a very proactive, team-oriented approach to account management, so customers can always get 100% attention from someone who knows their technology, business and portfolio.
Jones Day has a lot of irons in the IP fire and is fine tuning its offering in multiple areas, from pharmaceutical patents to ITC and district court patent litigation, and even trademarks. The breadth of its offering, combined with its expansive national and international organisational structure, allows it to go beyond allaying legal concerns to solving business problems. The DC bureau is a microcosm of the firm’s patent practice as a whole, in that it can do anything; in particular, though, it serves as an epicentre of Federal Circuit and ITC litigation expertise. Gregory Castanias
has been instrumental in driving the firm’s standout appellate practice; he has argued before the Supreme Court on several occasions and put in 150-plus appearances at the Federal Circuit. Blaney Harper
is the ITC sharpshooter and “a man of action who really knows how to drive a matter towards the right outcome for his client”. With a deep well of district court experience to draw upon, too, he relishes the cut and thrust of crucial disputes.
Jones Robb PLLC
Trusting in its patent protection work and recognising its value proposition, Fortune 500s are increasingly calling on Jones Robb. Spending face time with examiners in interviews – often with the client sitting alongside – improves its success rate dramatically and enables it to obtain patents that meet business objectives within tight timeframes. One patron observes: “I have seen them interview examiners closely, while also paying attention to larger trends in the examining group to obtain the best overall result.” In addition, “the team is quick to monitor and analyse new developments and announcements from the USPTO on Alice
issues, for example, and then quickly implement appropriate changes to its examination approach”. Susanne Jones
and, this year, fellow founding partner Kevin Robb
both make the IAM Patent 1000
cut. Jones is a paragon of insight in the medical device industry. Focused more on the telecommunications sector, Robb “offers a first-class prep and pros service at a good price. He is efficient and flexible in addressing billing issues and you don’t get the hassles of high hourly rates you get from large general practice firms. You can rely on him like a member of your own IP team”.
Kirkland & Ellis needs no introduction as one of the most fearsome patent litigation outfits in the land; it can take on serious cases and secure the right results, whatever their nature. Just as it does in Chicago, New York and California, it retains some classy litigators in DC, including gold-rated trial hound Edward Donovan
. He recently went out to bat for Samsung at the ITC in a case brought by Nvidia which had billions of royalty payments at stake; after making sweeping initial allegations, Nvidia dropped it down to assert five claims in three patents, before the judge found in favour of Samsung on each. Donovan combined with New York’s Greg Arovas and Robert Appleby, illustrating the firm’s ability to put together an A-team on any brief. Other local heroes include Gregg F LoCascio
and John O’Quinn
. The perfect marriage of technical aptitude and trial skill, LoCascio is an ITC dynamo who also draws lines in the sand in heavyweight district court and appellate litigation. Best known for his polished performances in the Federal Circuit, O’Quinn has a résumé adorned with interesting roles outside of private practice – including deputy associate attorney general – and notable pro bono representations while at Kirkland; he always brings a fresh perspective to a case.
Latham & Watkins LLP
“Latham & Watkins is a high-quality set-up which can present numerous trial-ready first-chair litigators – all of whom are excellent on strategy.” “It has established itself as a leading patent litigation firm.” One of the nation’s top life sciences transactional outfits, it has leveraged superbly on its industry knowledge, while beefing up its technical chops, to cultivate an outstanding pharmaceutical litigation practice. At the forefront of this is Michael Morin
, who has lately been crusading for AbbVie against companies trying to launch biosimilar versions of its blockbuster product Humira – the world’s best-selling drug. He garners praise for his ability to “succinctly capture complicated ideas and translate it all into a simple message”. Morin joined from Finnegan in 2015, alongside David Frazier
, who makes his debut in the guide this year. Frazier is a Harvard microbiology and molecular genetics PhD with a sophisticated understanding of antibody drugs; he is an excellent presenter in court and his technical credentials certainly see him through in PTAB trials. The firm has an embarrassment of riches on the high-technology side of the equation, with Maximilian Grant
, Matthew Moore
and Lawrence Gotts
in the line-up. Grant is hailed as a “ferocious litigator” and “a great leader” – qualities which helped him to obtain a major trial win in February 2016 for Nvidia against Samsung in a war over graphics processing units in mobile phones and tablets. Moore, who co-chairs the IP litigation division, has been putting heat on patent assertion entities in recent work for Jaguar Land Rover North America; he obtained a summary judgment of invalidity and reimbursement of his client’s litigation costs and attorneys’ fees. Recent highlights for Gotts include a trial win with full damages for Seoul Semiconductor against Enplas Display Device – a mission-critical triumph that cemented the former’s dominance in the field of LED television backlighting. Latham is a big name in ITC environs, too, and has been “consistently strong” in major Section 337 investigations. “Bert Reiser
is the ITC gold standard – he is flat-out excellent and nobody knows the commission better.” “He’s a very thoughtful guy who will take all the right information and cues to make the best decisions possible. He always puts the client first – everyone says they do it, but he is really extraordinary in this respect.” Jonathan Link
also knows the ITC like the back of his hand, but is an important contributor on all fronts – he (and Reiser) helped to mastermind Nvidia’s victory over Samsung.
Mayer Brown LLP
When it comes to patent protection and enforcement, Mayer Brown isn’t a one-and-done type of firm; it forges deep relationships with clients by getting to know their businesses and providing multi-disciplinary solutions that advance their long-term commercial interests. As a result, it has become a go-to in key industries, with aviation a good example: Stephen Baskin
recently defended over a dozen air carriers – including Delta Air Lines, Etihad Airways and Korean Air – against patent claims concerning weather radar systems and lightning detection technology. The seasoned first-chair litigator, who serves as the DC IP practice leader, has also been building a reputation in the financial services sector. Mayer Brown is also widely hailed for its ITC capabilities and, bolstered by its strong presence in Asia, has become a prime address for Korean technology companies seeking incisive representation in this forum. Section 337 practice leader Jamie Beaber
has been killing it lately: “He knows his cases inside out and hasn’t lost one for one of his key clients, which is really impressive.” A former president of the ITC Trial Lawyers Association, Gary Hnath
is another font of wisdom on ITC affairs. Bringing leadership to all aspects of the practice is Alan Grimaldi
, a luminary with broad and deep commercial, antitrust and IP litigation experience.
McBee Moore Woodward & Vanik LP LLC
Debuting in the IAM Patent 1000
this year, McBee Moore Woodward & Vanik offers something unique to the market in the form of a dedicated life sciences prosecution and post-grant service. According to a top innovator in the industry: “Litigation firms want to take things down the road to litigation and still haven’t wrapped their minds around what it takes to do post-grant cases; we prefer a group that is more specialised in front of the PTAB, and that is the McBee firm. It has strong patent practitioners who know the PTAB and the judges, and who have some novel ideas on how to handle cases; for example, they have useful manoeuvres to help defendants amend claims.” Susan McBee
has a broad portfolio management, post-grant and transactional practice, and is a doyenne of the life sciences.
McDermott Will & Emery
Functioning like a boutique, but embedded in a multinational commercial law firm, the IP team at McDermott Will & Emery affords specialised patent prosecution, litigation and transactional services, while also providing easy access to a treasure trove of resources in other legal disciplines. Its patent litigation practice remains robust, with big wins for the likes of Amgen and BlackBerry vindicating its model of cross-office staffing. Major contributions to its pharmaceutical and life sciences success come from DC resident Thomas Steindler
, who combines commercial astuteness with contentious dexterity; his track record at trial helps when sitting down to talk settlement. The local litigation team has expanded recently with the January 2017 arrival of Paul Schoenhard
via Ropes & Gray; he will help to further the agendas of McDermott clients at the ITC and the PTAB. As far as disputes in the latter are concerned, the firm is extremely well placed – partly as a result of its mixed prosecution and litigation experience, but also due to the presence of Bernard Knight
. He is a troubleshooter extraordinaire
with an unbelievable résumé which includes general counsel posts at the USPTO and the Department of the Treasury. Working with Silicon Valley partner Fabio Marino, he hit the bullseye for Diablo Technologies in a convoluted dispute with Netlist involving two district court litigations and three inter partes
reviews; the PTAB found in favour of Diablo in all three of the latter. Schoenhard and Knight are relatively recent additions, but Paul Devinsky
has been doing great things here for over 20 years. He is a smart choice for those with broad IP interests, given his blend of patent and trademark know-how. The prosecution division has been similarly robust, particularly given its loyal following of Asian corporates. Japanese entities may be filing fewer patents, but they are looking for quality and Michael Fogarty
delivers it. The Panasonic favourite goes the extra mile to get clients the protection they need, but he doesn’t nickel and dime them while doing it. Credit for growth in the group’s Korea and Taiwan practices goes to Hosang Lee
and Stephen Becker
. The pair have lately been securing protection for innovative fuel cell and other automotive technology for Hyundai Motor Company and Kia Motors, as well as assisting on licensing matters.
Merchant & Gould
Merchant & Gould is one of the largest boutiques in the United States, with a storied history going back to the turn of the 20th century. It has a compact but versatile team stationed a short hop from the USPTO in Alexandria, Virginia, which includes chemical and life sciences mavens Jefferson Boggs
and Matthew Fedowitz
. These former examiners both keep broad practices and undertake strategic prosecution alongside their litigation and post-grant activities. The latter is something of a specialty for Boggs Jr, who has a strong background in interferences.
Morgan Lewis & Bockius LLP
With its full-service structure and muscular litigation section, Morgan Lewis & Bockius isn’t your typical prosecution shop, but it has always been a trusted brand among large companies looking to develop their portfolios internationally. It is also a favourite among the start-up crowd; its experience, for example, with the USPTO’s prioritised examination programme enables it to obtain patents quickly for those starting out on their commercial journeys. Key DC contact Robert Smyth
concentrates on biotechnology, pharmaceutical and chemical patent prosecution, but also handles administrative contentious proceedings on multiple continents. His instinctive grasp of the needs of emerging companies was recently on display in his representation of Singular Bio; in little more than 12 months, he prosecuted three patents to grant, giving it the platform required to obtain further financing. One of his more established clients is Japanese chemical company Asahi Kasei, on whose behalf he has managed and prosecuted a portfolio of over 100 patents this past year; resources including US-based Japanese language experts and a Tokyo office certainly proved advantageous in these endeavours.
Morrison & Foerster LLP
Morrison & Foerster’s DC outpost is the central cog in the firm’s ITC and appellate patent litigation practices. Brian Busey
takes the lead on ITC proceedings and “runs a professional group of lawyers who, no matter what companies are fighting over, can sit in the room, have the right discussion and come up with a creative solution”. Recent favourable settlements for Fuji Electric and several others pay testament to this. The veteran of more than 40 Section 337 investigations and a past president of the ITC Trial Lawyers Association, Busey is a true authority. Reinforcements arrived in March 2016 with the hire of Mark Whitaker
from Baker Botts. He has a stellar reputation not only in the ITC milieu, but also in district court litigation nationwide. Deanne Maynard
inspires in her role as co-leader of the appellate and Supreme Court group. With her sparkling interpersonal and legal skills and ingrained IP and antitrust knowledge, she always comes across persuasively.
When you’re already at the top of the pyramid, growth becomes harder to achieve, but Oblon continues to expand its prodigious prosecution practice. For over 25 years, it has obtained more US patents annually than any other firm and each year it seems harder for the competition to catch up. Managing partner Bradley Lytle
has been extremely astute in his identification of creative approaches to prosecution in terms of staffing, technological investment and customer service. Also generating new streams of business, he has, for example, become a go-to for Middle Eastern universities looking to establish effective IP programmes. Heading up the electrical and mechanical wing – the largest within the prosecution area – is Philippe Signore
, a patent strategist par excellence.
The fluent French speaker can bring order and commercial impetus to weighty portfolios and represents the Commissariat à l’énergie atomique et aux énergies alternatives
– a prestigious research organisation with over 16,000 technicians and staff – on hundreds of active matters. Signore is getting Oblon some real traction in the European market; as is Kirsten Grüneberg
over on the chemical and life sciences side. She has a deep reservoir of experience representing European and Japanese pharmaceutical and biotechnology companies – she understands their needs and how to contextualise them in US patent law on the way to creating compelling value propositions. Former chemist Derek Mason
prosecutes proficiently and knows how to exploit patents for commercial gain. The certified licensing professional co-chairs the IP transactions group. Growth has been even more pronounced on the contentious front, which Oblon has reinvigorated in recent years. Section chair Robert Mattson
and ITC chief Thomas Fisher
have been tireless in taking the practice a rung up the ladder, and are increasingly sought after for crucial suits. Eric Schweibenz
regularly rolls with Mattson, giving clients the necessary firepower to prevail in arduous Section 337 investigations. They take great inspiration from founding partner Arthur Neustadt
, a luminary with several landmark decisions to his name. In April 2017, Oblon also recruited former Cadwalader hotshot Alexander Hadjis. He is well accustomed to the relentless pace of Section 337 investigations and has a combination of finely honed technical skills and trial craft makes him the complete package. On top of it all, Oblon has arguably the deepest post-grant specialty unit in the country. Management committee member Stephen Kunin
is a trailblazer in the area who supervises much of the work being done; second-to-none policy experience makes him one of the most percipient tacticians out there. Another pathfinder, Scott McKeown
serves as head of this award-winning group; covered business method proceedings for eBay and inter partes
reviews for Eastman Kodak have been occupying him lately. An interference guru and American Intellectual Property Law Association board member, Todd Baker
is another leading light. He focuses on mechanical technologies, medical devices and e-commerce; while biochemistry PhD and experienced prosecutor Vincent Shier
shepherds players in the life sciences business to success. Few people know as much about patent eligibility jurisprudence in the software field as Michael Kiklis
, who puts his weight behind the PTAB and district court litigation practices. Collectively, these lawyers generously share their knowledge through the well-received “Patents Post-Grant” blog and also regularly take to the lectern as speakers.
Orrick, Herrington & Sutcliffe LLP
Orrick has a compact team in the capital, but it’s a solid one that is well worth a look for those in need of assistance with high-stakes litigation. The firm has a very strong brand among Japanese companies, so it is no surprise to find it frequently ducking and weaving in ITC bouts. Trial lawyers Sten Jensen
and Steven Routh
have plenty of Section 337 experience and recently joined forces to mount a robust defence for various Fujifilm and Oracle entities in an ITC action concerning magnetic data storage tape cartridges, which paved the way for a favourable settlement following mediation. “Many questions arise during the course of litigation and Sten can always be counted on to clearly explain each step. He is extremely knowledgeable; and very generous with his time and the guidance he provides.” “Steve gets the tech very quickly and is comfortable at all stages of a case. He isn’t one of those huge extroverts – he has a matter-of-fact, plain-spoken style and is very on point. Thoroughly drilled on facts, he keeps his eye on the key issues.”
Paul Hastings LLP
Paul Hastings’ pristine track record in top-end patent litigation is one of its main draws; focusing on the end game from the moment the whistle blows, it has resoundingly proven its ability to drive a business resolution, whether going the distance or getting out early. Its quality lawyers don’t just grind a case out, but strategise creatively – something that Allan Soobert
does particularly well. The patent and trade secret trial lawyer is in the prime of his career and continues to stack up the wins for Samsung, among other eminent high-technology companies. Other great litigators in the capital include Blair Jacobs
, who has settled in nicely and has been teaming up with fellow ex-McDermott man Yar Chaikovsky over on the West Coast to bring home the bacon for the likes of Fairchild Semiconductor; after two weeks of trial testimony, he recently served up a clean sweep for the company in a fraught and protracted dispute with Power Integrations over power conversion technology. Paul Hastings has also assumed the mantle of leadership in the post-grant space – another important factor in the purchasing decisions of clients. “Fair, honest, one of the hardest workers and a genteel guy”, PTAB trial guru Naveen Modi
is deeply impressive. He is currently acting for Samsung against Elm 3DS Innovations in a high-stakes, 13-patent tussle over three-dimensional memory chips (with Soobert leading on the related district court litigation). He also won three inter partes
reviews for CoreLogic against Boundary Solutions in a parcel mapping technology dispute in which much was on the line. Modi had back-up in the form of Joseph Palys
, a former USPTO supervisory patent examiner who knows the government institution like the back of his hand. Jacobs, Modi and Palys have all come on board within the last three years; few firms, if any, have been as successful as Paul Hastings in their recent talent aggregation efforts in DC.
Paul, Weiss, Rifkind, Wharton & Garrison LLP
Paul, Weiss, Rifkind, Wharton & Garrison’s is the number to call when there is a lot on the line commercially or when the substantive issues at stake are exceptionally complex. In New York, Nick Groombridge continues to demonstrate leadership in the emerging area of biosimilar litigation; while the DC team is flying the flag high in the technology sector. Born-and-bred IP litigator David Ball – who joined Paul Weiss together with Groombridge – handles challenging suits in the most assured manner and is the trusted ally of many marquee companies. Local managing partner Kenneth Gallo is a pre-eminent expert on the confluence of antitrust law and intellectual property, and is another unique asset within this prestigious organisation. The firm scored a coup in January 2017 with the hire of leading post-grant mind Steven Baughman, who joined from Ropes & Gray.
Pillsbury Winthrop Shaw Pittman LLP
Pillsbury bolstered its fast-growing global pharmaceutical industry team in 2016 with the hire of new co-chair Keeto Sabharwal
, the former litigation leader at Sterne Kessler. A polished trial lawyer who has appeared in venues across the country in technically diverse lawsuits, he is best known for his abbreviated new drug application work and close relationships with top pharmaceutical companies internationally. Outside the life sciences space, Pillsbury maintains a broad patent platform and it is listed on each of the accompanying tables as a result. Jack Barufka
has shaped the group in his image of a start-to-finish counsellor. Adviser, prosecutor, litigator and deal broker are all labels that fit him perfectly: “Jack really has the respect of his clients and is a very nice option to have in a quasi-in-house counsel role.” True-blue litigator William Atkins
supplies all the advocacy and trial skills that parties to a patent or technology dispute might possibly need. The registered patent attorney has translated his courtroom abilities well to the PTAB; as editor in chief of a comprehensive work on PTAB decisions published in early 2016, he has all the relevant case law on lock.
Quinn Emanuel Urquhart & Sullivan LLP
“Quinn Emanuel can take on the most challenging matters – it is an aggressive litigation outfit and makes for a formidable opponent in patent suits.” It has one of the deepest benches of first-chair trial lawyers in the nation, with high fliers standing ready to deploy from either coast at a moment’s notice. Suitably geared up for the whirlwind pace of ITC trials, many Quinn lawyers do big-ticket work in this forum. However, leadership of the Section 337 practice falls to DC resident Paul Brinkman
. The smartphone wars veteran is distinguished by his trade law background, so he understands the workings of the ITC – and US Customs and Border Protection, which enforces its exclusion orders – better than most; sources report that he is “super-well known there and is treated with deference by judges”. Whether on the offensive or the defensive side, he really knows how to bring it, but is a “careful lawyer who manages expectations well”. Fellow ITC aficionado Alex Lasher
had a packed 2016 representing Sony and, together with Brinkman, United States Steel Corporation – the latter in a sprawling dispute with 40 Chinese steel manufacturers and distributors.
Ropes & Gray is one of the few firms with a nationwide and fully integrated patent rights management, litigation and prosecution practice. Though its DC roster took a hit recently, with the departure of several prominent names, it remains an important point of contact for those who want to get things done in the USPTO. The ensemble has enjoyed particular success in post-grant actions and while the impact of PTAB specialist Steven Baughman’s withdrawal remains to be seen, Ropes is expected to remain in the thick of the action.
Rothwell Figg is resolutely focused on delivering not just a quality legal service to clients, but guidance which goes right to the core of their business. Intellectual property – and particularly patent law – is the firm’s raison d’être
, and as such it provides a potent A-to-Z prosecution and litigation offering. Some of the warmest praise is reserved for its superlative post-issuance work, and particularly for the efforts of R Danny Huntington
. “He originally got into interferences almost by accident, but rapidly became an expert. He has handled tonnes of post-grant matters and is extremely knowledgeable about the process, possessing a feel for what issues are going to come up and an ability to communicate with judges effectively. Also, his mind is like a bear trap – he remembers absolutely everything – and he is a worldly-wise person who is pleasant to deal with.” His reputation spreads far and wide, and Latin American commentators cite him as “one of the most knowledgeable pharmaceutical and biotechnology patent practitioners”. Joining him on the US national post-grant table are Martin M Zoltick
and Joseph A Hynds
. Zoltick is a protean patent lawyer who can turn his hand to anything – one reason why he does so well in PTAB proceedings, which are a hybrid of prosecution and litigation. Coming from a background of interference practice and patent litigation, Hynds cuts a dash in pharmaceutical disputes. Hatch-Waxman litigation has always been a key area of expertise for the firm; luminary E Anthony Figg
blazed a trail in some of the first cases under the 1984 Drug Price Competition and Patent Restoration Act amendments and has been leading the field ever since. A trial lawyer to the marrow, Steven Lieberman
is a veteran of battles between originators and generics, while also delivering bravura performances in areas such as e-commerce. “Steve is an impressive guy with a strong courtroom presence that comes from a nice conversational style. He is an extremely good speaker and very quick on his feet.” Sharon Davis
can also cross over from the pharmaceutical field into technically dense high-technology cases without batting an eyelid. Her glowing credentials include a clerkship at the US Court of Appeals for the Fifth Circuit and a decade spent at top contentious shop Williams & Connolly – which, like Rothwell Figg, is another DC institution.
Sidley Austin LLP
Sidley’s Herculean national patent litigation practice is truly world class. With over 100 lawyers stationed in seven offices from coast to coast, the firm has redoubtable contentious bench strength, for sure; but one aspect in which it outperforms competitors is by fitting the right talent to the right case. The DC group is vital to the success of this cross-fertilisation, particularly as it contains key appellate advocacy specialists and ITC experts. Former DC managing partner Carter Phillips
is one of the biggest names in the legal industry, given the extent of his experience – and track record – before the Supreme Court; during his time both as assistant to the solicitor general and as a Sidley lawyer, he has made over 80 arguments in the SCOTUS. Brian Nester
is the ITC authority, though he is at ease litigating in any forum. The biggest hitters in the technology world trust his instincts and ability to see a case through from start to (triumphant) finish. His proficiency on the subject of standard-essential patents (SEPs) is one of many strings to his bow. Trendsetters in the life sciences find able running mates in DC too, in the form of Jeffrey Kushan
and Paul Zegger
. Kushan, who leads the local patent team, understands the finer points of Hatch-Waxman litigation and knows how to innovate within this well-defined system. In recent years Zegger has been busy on Hatch-Waxman suits concerning Tamiflu, staunchly protecting the interests of Gilead Sciences, Hoffmann-La Roche and Genentech. He has some big jury trial damages awards on his résumé, but can dial down the intensity when it’s time to talk settlement.
Steptoe & Johnson LLP
A full-service international player that provides a wraparound US patent prosecution and litigation service, Steptoe & Johnson is certainly a rare beast. ITC patent litigation is a famous vocation of the group, particularly in DC, which is home to several top trial lawyers and a luminous special counsel in the form of Charles Schill
. Schill’s career spans more than 130 Section 337 cases – in which his track record is near unblemished – and he is a valuable strategic sounding board for the likes of Steven Adkins
and John Caracappa
, who themselves have more ITC seasoning than most. Both Adkins and Caracappa regularly take the lead on significant trials in the district courts too, and are well-rounded advocates who can reliably hit on the most persuasive narrative in any circumstances. Boyd Cloern
is another respected litigator, who delivers crisp results in disputes in which IP and antitrust issues intersect; he runs a busy standalone antitrust practice alongside his patent activities. Overseeing prosecution is Harold Fox
, a Massachusetts Institute of Technology chemistry PhD with a love of science that has shone brightly throughout his distinguished legal career. Seeing beyond the technical minutiae, he gives strategic direction to guide portfolios in commercial advantageous directions.
Sterne Kessler’s leadership team is one of the best in the business; those in positions of responsibility are committed to the fortunes of both colleagues and clients, which has kept the ensemble at the forefront of US patent practice. Investing in people is a recurring motif: “Everyone there receives phenomenal training – it is amazing how much they prepare, so they really know their stuff”. Applauding the group’s “in-depth technical expertise” and “thorough approach”, peers are full of respect and “won’t hesitate to use Sterne Kessler for a second opinion or if there is a conflict”. A founding director (at the age of just 26), Robert Greene Sterne
has been instrumental in building the firm into the IP powerhouse it is today. Innovation is in his genes and technology companies love him for it. Fellow founder and revolutionary Jorge Goldstein
has maintained a place at the forefront of biotechnology patent law for decades, bringing plenty of others along for the ride. Like Goldstein, managing director Michael Ray
has an unimpeachable prosecution background, which he has translated into broad patent strategy thought leadership. Bringing on the right staff has been critical and electronics mastermind Donald Featherstone
has set the appropriate tone as recruiting committee chair. “Don is great to deal with. Though extremely talented, he isn’t full of himself and remains very customer focused.” Continued dominance of the post-grant realm was central to the firm’s narrative through the past year; in fact, since the establishment of the PTAB in 2012, Sterne Kessler has been setting the volume and success benchmarks to which others aspire. “A master of technology and of advocacy”, Eldora Ellison
has won many fans. Interference expertise has given her uncommon familiarity with the PTAB judges, whom she loves going toe to toe with on technically demanding biotechnology material. As post-issuance filings have picked up in the life sciences space, she has been getting busier and busier. In addition to post-grant, she supervises key projects within the prosecution division helmed by Eric Steffe
; both add a great deal of value to procurement efforts with their strategic oversight. Operating out of the electronics group, Lori Gordon
is also at the forefront of PTAB affairs. When the firm stepped up to represent Veeam Software in district court actions against Symantec, Gordon masterminded a winning patent invalidation offensive strategy – crucial, given the large damages and injunction being sought by her opponents. The case is a good example of how seamlessly the litigation and post-grant units cooperate; litigation chair Mark Fox Evens
took the lead on the dispute, bringing to bear his three-plus decades of trial experience. Whenever matters go up on appeal, Jon Wright
is at the ready to provide enlightened guidance. Entering the IAM Patent 1000
for the first time this year, Wright is a “reasonable, no-drama guy and a talented practitioner” who wins particular credit for his conduct of inter partes
review appeals. With pleasure, peers note that he is becoming increasingly involved in the Federal Circuit Bar Association. ITC skirmishes are meat and drink to Daniel Yonan
, whose intuitive appreciation of its positioning gives him a rare facility for closing down disputes swiftly and favourably, saving both time and money. The firm has multiple other weapons to deploy to safeguard the diverse interests of its client base. Michael Lee
is a connoisseur of the art of IP commercialisation and a beacon in a licensing landscape fogged by uncertainty over patent eligibility. Shield and sword, Robert Sokohl
is one of a select few to win prosecution, litigation and transactions laurels in the guide. Tracy-Gene Durkin
needs no introduction as the country’s top design patent expert.
Sughrue Mion PLLC
In terms of depth of experience before the USPTO, few are on a level with Sughrue Mion; its 100-plus patent attorneys – who collectively cover just about every technical area you can think of – efficiently handle prodigious volumes of prosecution and are in and out of the USPTO on a daily basis. Its reputation is especially strong in Asia – it has cultivated a particularly loyal following among Japanese and Taiwanese innovators – but, judging from the IAM Patent 1000
research, it is popular in Latin America too; sources from Argentina, Mexico and Brazil all declare themselves fans. International department head Alan Kasper
is much loved by foreign associates, who call him “an outstanding software and IT patent practitioner”. Though it has a lower profile, the firm also runs a successful litigation practice that, with the take-up of inter partes
reviews and other America Invents Act post-grant proceedings, has become even more attractive. Exhibiting “very clear judgement in cases which are challenging from a business perspective”, senior litigator William Mandir
is “a top-notch lawyer and a great guy who is smart, technically excellent and commercial”. Mandir practises on the electrical engineering side, while fellow litigator Michael Dzwonczyk
demonstrates his strategic prowess in chemical and life sciences suits.
Venable’s 360-degree IP service encompasses fully fledged prosecution, litigation and transactions arms; the IAM Patent 1000
’s recognition of multiple pros on each of the accompanying individual league tables pays testament to its holistic IP ethos. The walls between the IP and other departments are also low – blending in the expertise of the firm’s quality government and regulatory, antitrust and tax divisions really facilitates the provision of one-stop solutions. Venable is in hiring mode at the moment, betokening a practice in fine fettle, and prosecution mandates certainly continue to flow in freely. A go-to for anything high-technology related, neural networks PhD Michael Sartori
provides effective leadership to the cosmopolitan prosecution crew, which includes experienced patent agents with advanced degrees as well as USPTO and in-house experience. His life sciences counterpart is Michael Gollin
, a portfolio development champion with transactional and litigation nous to boot. Technology companies have a distinct advantage when they charge into battle with Venable’s “formidable litigation team”. “You can call on it anytime, day or night, and get a response within minutes. Giving honest answers about potential outcomes and transparent in terms of billing, the group is upfront about everything and represents amazing value for money.” One enthusiastic customer reflects: “We feel like Venable has become part of our family.” Litigator and counsellor William Coston
is a “consummate leader”. “He has incredible perseverance and is brilliantly intelligent – it is almost sad to watch others have to go up against him.” Fielding smaller teams that are aggressive when it counts is an approach fostered by trial ace Frank Cimino
, a client-whisperer whose “every action is consistent with your exact needs”. He joined Venable in 2015, but has already earned a spot on the management committee – a testament to how well he has settled in. When he and Megan Woodworth
join forces, great things inevitably happen: “Both are exceptionally gifted and will never be outworked by their opponents on a case. They break down complex subject matter very effectively and focus on core issues, and prove time and again that they are up to any task.” New to the listings this year is Adam Hess
, an “entrepreneurial and pragmatic thinker who maps out a good strategy and calmly executes”. Sources note his proficiency in ITC patent litigation. Deep specialisation in patent and technology transactions is another string to the firm’s bow. Understanding how individual deals fit within broader strategies has been critical to the success of DC’s Nora Garrote
and William Russell
. Garrote, the IP transactions head, is an outsourcing doyenne with a strong command of all IP deal types; she can sew up multi-faceted agreements with ease and recently assisted a major public biotechnology company cement a technology transfer, development and manufacturing arrangement with a Chinese entity. Russell loves to broker transactions around game-changing technologies and does so with poise. Patrons often view him as an extension of their own internal groups and tend to regard him on the revenue rather than the cost side of the equation.
Weil hires and retains only the best lawyers, and its patent transactions and litigation wings on both coasts are packed with top talent; it is no surprise, therefore, that its client roster reads like a who’s who of technology industry leaders. DC is home base for Brian Ferguson
, who co-leads the national patent litigation practice. He is a down-to-earth lawyer, but pin sharp when handling matters in the district courts and the ITC. The trusted confidant of one of the world’s premier consumer electronics companies, he is accustomed to satisfying the needs of the most demanding of rights holders. Alongside him in the capital sits sophomore IAM Patent 1000
inductee Anish Desai
, an up-and-coming litigator with advocacy instincts beyond his years. Each day his responsibilities grow and he is laying extremely strong foundations for a first-chair practice.
White & Case LLP
Eminent international outfit White & Case makes for a sturdy anchor when patent waters get choppy; its litigators bring the heat in fraught infringement disputes, driven by an innate desire to safeguard clients’ competitive edge. While the distinguished New York and California sets continue to dominate in the hottest district courts, the DC contingent is lighting up the ITC. Shamita Etienne-Cummings
is in her element in the fast-paced forum and captains the Section 337 practice. Clear sighted on strategy and judicious in the way she draws on the firm’s interdisciplinary global trade group and unfair competition section, she is well positioned when it’s trial time – and she never fails to deliver. Pursuing an aggressive strategy which included PTAB filings, she recently secured American Express’s place in the mobile payments market, putting to bed an infringement action filed by Maxim Integrated Products. Authoring amicus briefs and teaching at the George Washington University School of Law, Etienne-Cummings is a servant to the community and isn’t just in it for herself. The local team also maintains White & Case’s USPTO practice. Running the show is David Tennant
, an electrical engineer who brings a litigator’s perspective to preparation and prosecution. Incredibly versatile, Tenant can lay claim to cultivated post-grant and transactional skill sets; clients – especially Japanese conglomerates such as Toshiba – appreciate all that he brings to the table.
“Ultra-prestigious” DC litigation force Williams & Connolly is a “quality organisation with top lawyers” who, in the opinion of peers, are “as good as it gets at trial”. Clients concur, saying: “There isn’t a better group of lawyers in the country when it comes to litigation, PTAB proceedings and Federal Circuit Appeals.” “The team masters sophisticated technology quickly at the outset and shows exceptional skill in researching issues, then briefing and arguing each case. Thorough and responsive, it yields excellent results.” Under the stewardship of Adam Perlman, the ensemble is building a burgeoning biotechnology practice at a time when biosimilars are about to take off. Perlman’s cutting-edge trial wizardry is on daily display in the life sciences patent litigation space; the smart, creative, hungry young lawyer has been riding shotgun with Eli Lilly to protect its blockbuster anti-cancer drug Alimta, recently acting as lead appellate counsel to see through trial victories secured in 2014 and 2015. Williams & Connolly has supreme confidence in the training of its lawyers and isn’t afraid to turn over the keys to the next generation. Perlman co-leads the patent litigation division with another young gun, Thomas Selby – a “terrific, bright and well-spoken advocate”. Selby, like all lawyers in the crew, can operate across technical divides with dexterity. Recent pharmaceutical action includes securing a Federal Circuit affirmance of a district court win for Pfizer protecting billion-dollar cancer drugs from generic incursion by Mylan Laboratories. Massachusetts Institute of Technology biology grad and Stanford Law alumnus David Berl has put his sparkling academic credentials to fine use throughout his legal career. He is another repository of trust for major corporations such as Bayer; he is currently representing the company in a multibillion-dollar suit brought by Biogen against a multiple sclerosis biological product – a charged case with a backstory involving a highly contentious interference proceeding. Bruce Genderson is also in the limelight on this one, and his “top-notch trial skills and persuasiveness” are shining through. As the patent litigation group’s senior trial lawyer, Genderson plays a key role in many of its lawsuits. Over on the electrical side, he prevailed with Kevin Hardy and a redoubtable team of other partners in an International Chamber of Commerce arbitration for Korean chaebol Samsung Electronics involving SEPs – a masterclass on how to constructively resolve a complex licensing dispute. The intersection of IP and antitrust issues is a sweet spot for Hardy, a connoisseur when it comes to the licensing and enforcement of SEPs.
Wilmer Cutler Pickering Hale and Dorr LLP
“WilmerHale is an outstanding firm – simply one of the best in country” when it comes to intellectual property, and particularly patent litigation. Putting technical and forum specialists at the disposal of clients, it can tackle any case anywhere, anytime. The DC office is replete with accomplished lawyers and is, for example, an epicentre of appellate expertise. Seth Waxman
has virtually no equal when it comes to Court of Appeals for the Federal Circuit and Supreme Court advocacy; the former solicitor general of the United States and current American College of Trial Lawyers fellow handles IP cases as part of a broad litigation practice involving regulatory and commercial law and government policy. William McElwain
has first-chaired must-win cases all over the country and also delivers at the highest level. The firm knows exactly how to play it at the ITC, too, and in Nina Tallon
it has one of the scene’s brightest and most popular representatives. She has an encyclopaedia of attack plans ready for any complex multi-patent Section 337 investigation. James Quarles
has also tasted victory at the ITC, often pairing up with Boston’s William Lee to form a tailor-made strike force. “Next-generation superstar” Tara Elliott
is hailed as a “first-rate lead litigator” in district court cases. “She is the complete package – incredibly smart and client focused.” Her CV is a page-turner: she started out professional life as a computer engineer and intelligence analyst at the Central Intelligence Agency, before serving as a law clerk in Delaware and later at the Federal Circuit. As a litigator, she has an instinct for the right strategy and the courage to stick to it. WilmerHale is also making a strong play in the post-grant space – as every successful litigation practice must now do. Multi-talented David Cavanaugh
is taking the post-grant lead and has exercised his technical and presentation abilities in a slew of PTAB oral hearings.
Winston & Strawn has assembled a “crack ITC team” in its DC office to take the lead on Section 337 investigations; the specialised local group, in turn, leverages on the wider firm’s considerable patent litigation and trial manpower to drive cases to the best possible outcomes. With a fresh wave of filings hitting the ITC, Thomas Jarvis
, Steven Anzalone
and Paul Goulet
have been busier than ever. They headed into 2016 in buoyant mood off the back of a victory for Ericsson in two simultaneous ITC cases (connected with nine US district court suits and a German litigation), which forced Apple into a licence under Ericsson’s patents. More recently, they have been putting in serious work for Comcast in an ITC proceeding plus two district court cases against Rovi – a tussle over 14 patents. “Tom knows the inner workings of the ITC as well as anyone and is a brilliant legal strategist”; “Steve is scary-smart and possesses excellent technical skills”; while “Paul has a considerable depth of ITC trial experience and is someone to call on for an important case”. In the pharmaceutical industry – a bastion of strength for the firm – commercial litigation chair Charles Klein
has been on a striking run. He makes a habit of pulling out game-changing wins and recently prevented Takeda from locking out generic competition for a gout medication manufactured by clients West-Ward Pharmaceutical and Hikma. He also scored big for Celltrion Healthcare in one of the first actions brought under the Biologics Price Competition and Innovation Act. Klein is a “smart lawyer and a hard fighter who is all about the substance of a case”. Winston & Strawn is lucky to have Andrew Sommer
as an anchor of its PTAB practice; but given the extent of his first-chair trial experience and ITC know-how, he can turn the tide on virtually any type of case.