Adduci, Mastriani & Schaumberg, LLP
When it comes to Section 337 investigations at the International Trade Commission (ITC), specialist outfit Adduci, Mastriani & Schaumberg is peerless. It knows the commission inside-out, enabling it to efficiently identify and execute the most effective strategies for any and every dispute. The three founding partners, James Adduci II
, Louis Mastriani
and Tom Schaumberg
, are each highlighted by their peers for commendation. Managing the firm with poise, Adduci II has superlative expertise in all matters that fall under the ITC’s jurisdiction; as is the case for Mastriani who, when it comes to intellectual property, “has absolutely no problem digging into the technology”. “With Lou there is no bluster – he’s reasonable, pragmatic and a super-strong lawyer all round.” Meanwhile, Schaumberg is lauded as “simply the best at the ITC”. What’s more, “their associates are excellent and the depth of the group is fantastic – it doesn’t field B-teams”.
Alston & Bird LLP
According to some of the best-known specialists, Alston & Bird has been hitting its stride at the ITC lately. Jamie Underwood
– who leads the Section 337 practice – knows what the trends are at the commission and how these affect business interests; as a result, the wins she scores always correlate with the long-term plans of her clients. She also thinks internationally when it comes to IP strategy and, as testament to this, has proven to be highly effective at bringing about global resolutions in battles that are fought inside as well as outside the ITC. Another ITC veteran – and a highly experienced district court litigator – is Scott Pivnick
, who has also been burnishing his alternative dispute resolution credentials lately. His down-to-earth and cooperative approach, and ability to cut out background noise and focus on the most critical points of a dispute, has smoothed his transition into arbitration. He has been at Alston & Bird for seven years, and its DC IP operations have flourished in that time partly because of him; the recent promotion of two associates to partner, necessitating further recruitment to maintain leverage levels, is a sure sign of the health of the practice. The firm at large presents an increasingly rare offering to the marketplace as a general practice organisation with a robust litigation and post-grant practice and a commitment to patent prosecution.
Arnold & Porter Kaye Scholer LLP
As a result of its merger with Kaye Scholer, a number of Arnold & Porter’s past priorities – most notably the need for a heftier pharmaceutical patent litigation practice – have been resoundingly addressed; it is now roaring along and leaving many of its competitors in the dust. The group has garnered attention following some big wins and many of these have been delivered by trial supremo Matthew Wolf
who has, as a consequence, been getting instructions on some of the biggest fights now kicking off. For example, he is currently representing Boston Scientific against Edwards Lifesciences in two patent infringement cases relating to replacement heart valves – and serving as international coordinating counsel for related disputes in Canada, Germany, France, Ireland and the United Kingdom. Wolf cultivates team spirit internally and with clients and, despite the demands on his time and intellect presented by the largest and most complex cases, never forgets that general counsel and chief IP officers are expecting a first-rate customer service; he returns calls and is always mindful of budgets. In terms of his approach, he assumes he will be in front of a jury and, from day one of a case, builds his story and enhances his credibility with the judge. “A fine advocate, he does a top job punching and counter-punching, but doesn’t make life difficult for anyone just for the sake of it. Judges are always impressed by his cooperative style.” The firm’s prosecution practice is cooking on gas at the moment, and bringing home the bacon for industry leaders such as Monsanto and other lesser-known yet equally cutting-edge innovators. David Marsh
, who has been busy protecting DNA breakthroughs for Monsanto, is “much more than just an IP lawyer – he is a brilliant big-picture thinker and counsellor with a 360-degree business view”. “He has vast experience, which really shows.” In acting for Fortune 100s and spirited start-ups across a kaleidoscopic range of technologies, the transactions team, meanwhile, continues to showcase its impressive range. A lynchpin here is Susan Hendrickson
, a versatile deal broker who knows what it takes to get new technologies successfully launched.
Baker Botts LLP
Baker Botts is one of the busiest firms at the ITC right now, which is all the more impressive considering that its dedicated Section 337 practice is just five years old. In recognition of the group’s success – not to mention her own qualifications and expertise – ITC section chief Lisa Kattan
debuts in the listings this year. She joined Baker Botts in September 2016 from the commission itself, where she spent five years as an investigative attorney in the Office of Unfair Import Investigations. Alongside New York colleagues Robert Scheinfeld, Robert Maier and Neil Sirota – all fellow IAM Patent 1000
inductees – she is representing Fujifilm in a big tussle with competitor Sony which includes three separate ITC cases, parallel district court actions and several US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) challenges. In one of the ITC actions, the team secured a finding of infringement of Fujifilm’s patents which, if affirmed, could exclude Sony’s LTO Ultrium 7 cartridges from the US market. The DC office has also had a banner year on the technology transactions side of the practice, which Luke Pedersen
has recently taken the reins of. He has overseen many highly sophisticated deals, among them DXC’s acquisition of Tribridge, one of the largest independent integrators of Microsoft Dynamics 365 and Wolters Kluwer’s acquisition of the adaptive learning technology behind the PrepU educational nursing program. Pedersen previously led the firm’s post-grant committee and he certainly keeps his hand in there, as well as in prosecution thanks to his ongoing management of CA Technologies’ substantial patent portfolio. The protean professional reaps highly favourable reviews for his conduct: “He rapidly understands widely varying technologies across diverse product sets and turns a high volume of work around quickly. Under his supervision, Baker Botts provides cutting-edge prosecution services by adopting new USPTO procedures early, and by utilising big data to inform strategy.”
BakerHostetler has extremely accomplished senior IP partners and a phenomenal squad of junior partners building strong reputations, giving it enviable staying power at a time when the practice of law – and particularly intellectual property – is changing. In patent prosecution, the firm recently created a new IP services role at director level – a move which has done wonders for the internal cohesiveness of a group which is the product of a significant merger (with Woodcock Washburn in 2014) and spread across several offices. A sophisticated single docketing system has also enhanced the provision of a seamless service. Size is another thing going for the prosecution team, which has over 100 registered patent attorneys; for any technology presented to it, there is a specialist available. Flexibility in terms of fee arrangements, which has been cultivated and encouraged, is yet another favourable feature. Key contacts in DC include Kenneth Sheehan
, Erdal Dervis
and Robert Hails
. At any point in the lifecycle of a patent, Sheehan shows himself to be an adept guide as to the best course of action thanks to his well-rounded portfolio management and post-grant skill set. He safeguards an impressive client base that includes SPX Corporation, a multibillion-dollar concern at the forefront of global infrastructure development, and Sinclair Broadcasting Group – one of the most diversified television companies in the world. Another international thinker, Dervis supports multiple divisions of Teleflex in the protection and maintenance of its global IP portfolio. To his mind, patents are business assets – something he has seen first-hand in his transactional practice. Hails, who prosecutes patents protecting video conferencing technologies for Apple, blends prosecution and litigation expertise and is a brilliant ally to have in any post-grant scenario. A pure-bred litigator, William Bergmann
is another name for the contact book. The former US Department of Justice trial and appellate attorney specialises in government contracts and regularly appears before the Court of Federal Claims in technology disputes. In this forum he is currently representing L-3 Communications, whose STORM multi-function laser rangefinders – sold to the US government for use by the army and Special Forces – have been accused of patent infringement.
Banner & Witcoff, Ltd
“Few firms know their way around the USPTO better than Banner & Witcoff.” The lawyers at this storied boutique customise their claims based on the most meticulous analysis of prior art, while the bespoke advice they render to clients is tinged with good business sense. The group is especially conspicuous for its leading design patents practice, which sits on the shoulders of Robert Katz
and Darrell Mottley
. Clients such as Nike and Microsoft entrust their design patent portfolios to these two experts, whose originally drafted patents have withstood many a litigation test in their time. Katz is singled out by peers as “one of the most creative attorneys” and “extremely thoughtful about where patent law is heading”. “He has vast prosecution experience, enforcement expertise and a diverse client base and is solid through and through.” The preparation and prosecution of utility patents is the forte of Ross Dannenberg
, who continues to make the grade in the IAM Patent 1000
as he has done for several consecutive years. Watchful of the merest twitch made by any of their competitors, he provides insightful counsel to Mentor Graphics and Citrix Systems among many others. Another multinational technology leader cared for here is Comcast, for whom Frederic Meeker
is responsible. Meeker receives unqualified endorsement as a “top-tier patent counsel” who you can consult on just about anything with the utmost confidence. He maintains a healthy practice in the post-grant area, a field in which Banner & Witcoff is incredibly active and highly esteemed; in the first half of 2017, the firm filed more inter partes
review petitions than any other.
Birch, Stewart, Kolasch & Birch, LLP
Birch, Stewart, Kolasch & Birch has a profound understanding of USPTO procedures and knows how to circumvent bureaucracy to carry the day. Without ever failing to secure robust protection, the firm prosecutes patents with rare efficiency and cost-effectiveness; crucial in this regard are the open lines of communication – and not just via email – it maintains with examiners as well as clients. It also directs its eagle eye for detail inwards and is constantly analysing its software and workflow systems to identify improvements. End-to-end technical proficiency is one of the hallmarks of the organisation, but the life sciences practice is something to shine a spotlight on. Standing out as a perspicacious strategic adviser in the field is MaryAnne Armstrong
, who has lately done much to alleviate the distinct frustration around ineligible subject matter issues currently being felt by pharmaceutical and medical device companies. Also worth highlighting is the organisation’s “exceptional reputation as a patent and IP educator – something which it still does a fantastic job of”. It cares not just about the immediate concerns of its clients but seeks to promote the highest standards of quality and expertise in the wider IP community.
Blank Rome LLP
Fielding fully fledged prosecution, litigation and transactions teams, Blank Rome impresses with the scope of its patent capabilities. In fact, many of its top operatives transcend practice area boundaries, which serves to further enhance the comprehensiveness of its offering. Although best known – and recognised here – for prosecution, James Brady
demonstrates a rare sophistication of thought across the contentious/non-contentious divide. There is nothing he loves more than solving problems and he pours his heart and soul into his clients’ matters. When he interfaces with the USPTO, it is not just a case of papers being anonymously filed – he maintains a good personal rapport with examiners. He acts for a host of specialist chemical companies and keeps his ear close to the ground in the polymer chemistry space, which is abuzz with all kinds of patent controversies. His high-tech counterpart is Stephen Soffen
, who blends litigation wisdom into his patent procurement and counselling practice to great effect. In the words of one client: “It is very hard to find a patent attorney who has successfully been through the full lifecycle of a valuable patent, from creation through expiration, including several intervening legal challenges, but Stephen is one of the few members of this club. He crafts excellent patents that withstand the acid test of litigation; his documents are well written, his file wrappers are consistent and well prepared and his claims are sufficiently broad so as to be of commercial significance, yet not so broad that the patents don’t hold up in court.” As testament to his quality, he brings in a lot of business through referrals; Fiat and Ferrari are two new prosecution clients that anyone would be proud to represent. Competitor-on-competitor suits have coloured the firm’s litigation narrative in recent years; the team is relied on when much is at stake commercially thanks to its proactivity, fleet of foot and streetwise strategies. When you need to play your trump card, it’s time to bring in Jeffrey Sherwood
, “a fabulous lawyer and balanced advocate with a knack for explaining difficult issues in an understandable and relatable way”. He showed what he could do recently with a double damages win for Dominion Resources against Alstom Grid concerning smart meter grid efficiency improvement technology. Dipu Doshi
has been an ace up the firm’s sleeve, but the IP and technology group chair is now breaking through as a lead litigator and consequently enters the IAM Patent 1000
listings for the first time this year. He has added to his résumé of post-grant wins recently by successfully defending The Chemours Company following a petition for inter partes
review brought by Daikin. For the transactions contingent, there have been no grand changes this year – a good thing given the consistent health of the practice. However, for software marvel Jon Grossman
one shift has occurred: he has become a go-to specialist for clients and colleagues looking for artful solutions to subject-matter eligibility problems. As a leading light on the interplay between IP transactions and government contracts, he plays another unique role. Clients love Grossman to bits, calling him “an extraordinarily customer-focused lawyer and extremely attentive to detail”. Perhaps one of the biggest endorsements he received from a respondent was that “he multiplies the value of your intellectual property”. Donald Gregory
has a broader technical compass but the same mix of counselling, licensing and acquisitions expertise as Grossman. Acquisitions for private equity companies have kept him plenty busy this year; at the same time, he has sustained the many long-term relationships he has built with market-leading technology companies, whose licensing programmes he oversees with alacrity.
Bookoff McAndrews PLLC
An unstinting dedication to quality in patent prosecution and counselling has enabled Bookoff McAndrews – a young, single-office IP specialist – to attract a highly sophisticated client base. In the medical device area – of which the set has exhaustive knowledge – it manages over 1,000 pending patent applications for Boston Scientific’s endoscopy, pulmonary, urology and cardiac business units; HeartFlow, a leader in the analysis of patient-specific coronary blood flow, is also a loyal adherent of the group. By no means limited in terms of technical proficiency, the set operates at the vanguard in the payment processing space, acting for Vantiv; in electric transport, representing Proterra; and in heavy industry, serving Caterpillar. As usual, clients are quick to sing their praises: “The firm puts customer service first, and has the most diverse, personable and professional team which is incredibly responsive across the board. Its bills are very easy to handle because the lawyers troubleshoot any niggles; other firms try to leverage various assistants but often they don’t understand the source of the problem, making the fix time consuming on both ends. BoMc also represents better value for money and is more thoughtful in the ways it communicates with clients prior to starting work on a matter; it is eager to show the great work it can produce but stops to listen to the needs of clients and discuss options – something which many others don’t.” An accomplished four-partner line-up comprises Les Bookoff
, Roland McAndrews
, Dinesh Melwani
and Christopher Agrawal
, each of whom receives loud applause. Bookoff is a master at tailoring advice and services precisely to the needs of the recipient and “has all the qualities you could want in your outside counsel. He is extremely conscientious and consistent and, though brilliant, is never arrogant”. An opinion giver par excellence
, “Roland is an excellent leader and patent strategist who builds the best teams to get the best outcomes”. Melwani leads the PTAB practice here and is a PTAB Bar Association board member. “He is great at brainstorming and identifying different approach angles and cost structures for matters. You can be confident that he will come up with the most advantageous solutions and at a good price.” “An outstanding patent strategist who ensures that maximum protection is achieved in the challenging fields of software and business methods”, Agrawal also displays uncommon IP commercialisation dexterity. As testament to the impressive depth of the team, Kirsten Johnson, Jessica Winchester, Thomas Ho and Jameson Ma all received a shout-out from clients.
Buchanan Ingersoll & Rooney PC
Intellectual property has been and remains a significant driver of growth at Buchanan Ingersoll & Rooney, a general practice outfit with its finger on the pulse of patent law. At a domestic level, a good indicator of this is its mastery of post-grant proceedings. This has been demonstrated over a long period of time, thanks to the efforts of individuals such as re-examination and chemistry ace Robert Mukai
and interference maven Todd Walters
. Walters, who now serves as chair of a thriving PTAB practice, “made the transition from interferences to America Invents Act (AIA) proceedings easily and is a confident lawyer who is always busy”. From a client perspective, “Todd proactively provides high-value services that make everything easy and less time consuming in-house. He is prompt, responsive, personable and easy to partner with, his billing rates are reasonable too, and accurately reflect the work done”. He recently secured a resounding win for FibroGen in six inter partes
review proceedings against GlaxoSmithKline in which the PTAB denied institution of trial with respect to all patents at issue. Another lawyer with rich post-grant expertise to tap into is biotech chair Erin Dunston
, a multifaceted professional who can deliver turnkey solutions to just about any patent problem. She co-heads the litigation section with Lloyd Smith
and the two of them have got their charges firing on all cylinders right now; having recently welcomed ex-Merchant & Gould life sciences litigator Matthew Fedowitz
on board, it is a growing group. Smith’s trick has been to make the best use of the firm’s wider infrastructure – including dedicated presentation and tech support teams and litigators in non-IP departments – to ensure clients have all the support they need for a critical patent case. A resplendent prosecution and counselling unit also deserves its share of the limelight. “You can work with the team as a partner and colleague – it isn’t just your classic supplier-client relationship. As a result, you get a greatly improved quality of service and advice that clearly tends towards your commercial interests.” Board member Matthew Schneider
is “always willing to go the extra mile” and “a lawyer whose legal and business advice you can trust”. “His analysis is profound, yet he presents it concisely and in easy-to-understand language.” He works in the mechanical and electro-mechanical group which falls under the supervision of fellow director William Rowland
, a font of insight and knowledge on international patent matters, especially those linking the United States and Japan. Among the most experienced prosecutors, and someone with a highly diversified technical practice, Charles Wieland III
knows how to catch the eye of USPTO examiners, having been one himself. He is an entrepreneur too – something which is not missed by the C-suite. So where does Patrick Keane
fit in? Pretty much everywhere is the answer – he sits on the executive management committee with responsibility for the IP, corporate and Food and Drug Administration (FDA) and regulatory divisions; as an IP practitioner, he builds complex patent portfolios for monetisation and transactional purposes; and, as a Federal Circuit Bar Association board member, he finds himself right at the heart of US and international IP policy discussions.
Cooley is by turns known as a commercial IP leader, a major patent litigation player and a go-to for counselling and prosecution. The firm is all of the above and representatives of each can be found in its Reston, Virginia and DC offices. For emerging or established technology companies seeking to gain maximum business advantage from their IP assets and innovations, DC’s Adam Ruttenberg
is the main man. He has cut deals myriad in type across virtually all high-tech industry sectors, but has a special facility for transactions involving digital business platforms. Singled out for praise this year among the firm’s contentious-minded lawyers is Frank Pietrantonio
: “He is extremely well prepared, great to deal with and highly effective in any adversarial setting.” Erik Milch
also has experience litigating in district courts, the ITC and the USPTO, but he is best known as a 360-degree practitioner. According to a top name in patent practice: “Erik has fine-tuned litigation and prosecution expertise and stands out as one of the most thoughtful and strategic advisers around.” Counselling is a forte for Scott Talbot
and Christopher Hutter
, both of whom are cited for the passion they demonstrate for engineering and technology. They tend to be found in particularly lively areas – Talbot in medical devices and Hutter in cybersecurity, software and the Internet – which is a good thing, as they are cutting-edge thinkers.
Covington & Burling LLP
“One of the few White Shoe firms to have made a real success of IP work”, Covington & Burling continues to shine resplendent in patent litigation and life sciences transactions. It has “a cadre of prominent trial lawyers” who distinguish themselves as “worthy adversaries”; “they focus sharply on arguments that are really going to move the needle” and “explain complex material with crystal clarity”. Commentators highlight the organisation’s proficiency in ITC litigation, in the thick of which are “extremely hardworking and exceptionally knowledgeable lawyers” Sturgis Sobin
, Maureen Browne
and Alexander Chinoy
. Deep experience has taught them just what they need to do at every juncture in a Section 337 investigation and peers note that they are “always happy to see them in a joint defence setting”. When it comes to district court and appellate actions, the people to turn to are George Pappas
, Richard Rainey
and Kevin Collins
. Pappas is the stand-out star in this constellation and is a “superb advocate” who has put in performances of great éclat
in scores of important lawsuits. Having previously served as head of global IP litigation at General Electric, Rainey is also unafraid of shouldering the greatest of responsibilities and is another natural choice for big-ticket cases in which business resolutions are urgently required. When disputes make a pass through the PTAB, Andrea Reister
is there to provide staunch support. “Covington is showing up on more deals right now and is one of the relatively few firms nationally with a strong, dedicated transactional practice. Its IP and technology lawyers partner up with specialists in excellent corporate and FDA departments to great effect.” Helping this to happen is John Hurvitz
, who co-chairs the life sciences industry group, vice chairs the corporate division and leads the technology transactions division. For IP-driven agreements outside of the life sciences, brands make a beeline to Stuart Irvin
. He is up to speed on every deal archetype but is especially noted by the market as a dispute settlement phenom and e-sports authority.
Dentons US LLP
The Dentons narrative is compelling and complex and made up of many different strands: its Latin America practice has been percolating nicely; its merger with Scottish leader Maclay Murray & Spens has been consummated; major signings in the San Francisco and Silicon Valley offices have been unveiled; and its post-grant group has been formalised. Another significant development was the September 2017 appointment of Song Jung
as captain of the global IP and technology group, which is home to a staggering 600 professionals. The DC partner is perfect for the role given his international horizons and the passion he has always displayed for the development of his colleagues, for the realisation of clients’ goals and for technology itself. His longstanding patrons such as LG – with whom he has a relationship which stretches back 27 years – stand to benefit much in terms of the support package he is now better placed to mobilise. With such incredible resources, the firm, unsurprisingly, maintains highly multifaceted patent capabilities – it really can do it all. Focusing on prosecution, lawyers such as Eric Sophir
, Mark Kresloff
and Martin Bruehs
consistently perform miracles not only in terms of getting patents granted but also in coalescing them into strategically well-defined and commercially valuable global portfolios. Sophir, who makes his IAM Patent 1000
debut this year, secures the most meaningful patent protection for Massachusetts Mutual Life Insurance Company, Citigroup and Ipreo. A thought leader on mobile standards and communications technology, Kresloff is a key liaison for LG alongside Jung. A whizz at coordinating both non-contentious and contentious international affairs, head of the chemical practice Bruehs is seen by clients not just as an external counsel but as a business partner and confidant. Turning the spotlight to litigation, Mark Hogge
and Lora Brzezynski
work wonders when the chips are down. “Super-sharp advocate” Hogge, who marshals a particularly outstanding team of associates, is active across myriad litigation and dispute resolution forums and knows what buttons to press in each to get a result out of the decision maker. Of late he has been putting the treble damages clause of Section 284 of Title 35 of the United States Code in focus in his representation of Pulse Electronics. Without prototypical trial lawyer Brzezynski, Dentons simply would not be the formidable force it is in the courtroom.
DLA Piper LLP (US)
DLA Piper’s global platform and robust A-to-Z US patent practice are invaluable to companies with sophisticated patent portfolios. While a lot of firms have moved away from prosecution, DLA Piper has not; it procures patents efficiently and cost-effectively thanks to a finely tuned administrative infrastructure. Making sure this works optimally in the interests of clients while overlaying refined strategic advice are Reston, Virginia-based partners Gianni Minutoli
, Dale Lazar
and James Heintz
. Minutoli, who has senior industrial engineering experience on his résumé, gets a kick out of anything technically complex in the medical device, computer, software and communications spaces. He does a fair amount of litigation alongside prosecution and has enjoyed some excellent inter partes
review results lately. Lazar has a registration number around the 30,000 mark with the USPTO, which speaks to his experience. A lodestar for many Japanese corporations, he is looked up to as an opinion giver and counsellor. Labelled “one of the finest, most strategic practitioners in the patent field” by his peers, Heintz “has tremendous hands-on experience with prosecution” but is best known for his prowess in litigation. Either way, “he’s wonderful at translating complicated ideas – be they technical or legal – into straightforward, on-point explanations”. More squarely focused on litigation and trial representation are Joseph Lavelle
and Kathryn Riley Grasso
, who can both be found in Washington DC. Of Lavelle, a leading economist espouses: “I think highly of his courtroom skills, and particularly his ability to articulate difficult IP concepts for lay people. He’s also great at getting the best out of his experts and making juries understand what the story is about and why it matters.” An expert on damages law, Grasso is also renowned among economic experts. She tries tough-to-win high-tech and life sciences cases with relish and has scored winning touchdowns on litigation contests across the country.
Drinker Biddle & Reath LLP
Performing clever analyses of USPTO stats – which drill down into the tendencies of individual examiners – and utilising streamlined docketing tools, Drinker Biddle & Reath is a well-oiled machine for both US and foreign patent filings. In Robert Stoll
, it has a leading expert on the USPTO itself – he is, after all, a former commissioner for patents. In his role as co-chair of the IP group, he keeps the team’s focus firmly on quality. In Mercedes Meyer
, the firm has a virtually peerless portfolio developer, and an “extremely dynamic and committed” biotechnologist who is “just someone you want to spend time with”. An expert on the tricky ethics issues which are often tied in, she is in hot demand as a lead lawyer on complex collaborative prosecution projects in the pharmaceutical industry. Her counterpart on the high-tech side is John Smith
, a counsellor par excellence
who supervises sweeping prosecution programmes with a deft touch for a diverse clientele that includes many Japanese companies. With his litigation experience he knows where chinks in the armour of patent protection commonly lie and how to reinforce them.
Although it is still a compact, nimble and efficient boutique, Fiala & Weaver has experienced a growth spurt in the past year with the addition of four new attorneys. The recent arrivals will help it cater to its increasingly diverse client base and smoothly handle a growing workload. The team remains thick with some industry leaders, including a global software company which has been expanding the firm’s role because of the sheer quality of patents it has been able to procure. According to Thomas Fiala
and Jeffrey Weaver
, ‘quality’ means strategically drafting claims to read on third-party competitors and meet all the very latest standards for definiteness and patent eligibility. The pair of partners put pen to paper on rich specifications with lots of embodiments, enabling them to pivot easily during the prosecution process should that be necessitated by a change in patent policy or law. They collaborate extensively on all major projects and check each other’s work on top of thoroughly examining that of their associates.
“A perennial leader in intellectual property”, “Finnegan is considered a model of well-roundedness in patent practice”. This feature has been crucial to its incredible success in the all-important post-grant space: “It cross-pollinates the skills of its litigation and prosecution groups extremely effectively” and is “certainly a top PTAB firm”. Because the team handles so many inter partes
reviews and other AIA proceedings, it has become incredibly efficient. At the same time, the presence of Erika Harmon Arner
and pharmaceutical and post-grant strategy mastermind Thomas Irving
makes it a destination of choice for the most complex cases. A “supremely talented lawyer”, Arner has a lot to offer and is hailed as a thought leader on patent eligibility. However, she particularly wows the market with flawless performances in USPTO trials and in appeals to the Federal Circuit. Finnegan is almost uniquely qualified in the appellate area; the renowned Donald Dunner
’s gravitas and unbeatable experience continue to be crucial in this regard, as does the leadership supplied in abundance by J Michael Jakes
and Charles Lipsey
. An American College of Trial Lawyers fellow, Lipsey shines brilliantly in life sciences patent litigation. Up against 11 generic pharmaceutical companies, he recently netted an important win for AstraZeneca, when, with infringement having been conceded prior to trial, the District of Delaware court (and the PTAB in parallel proceedings) ruled that the listed patent for the active ingredient saxagliptin in two of the company’s type II diabetes drugs was valid. Another name which resonates in the drug industry is Finnegan chairman James Monroe
. He is the protector-in-chief of the oldest independent biotech company in the world, Biogen, which in Summer 2017 filed 30 litigations against 26 different sets of defendants seeking FDA approval to market generic versions of Biogen’s Tecfidera multiple sclerosis treatment – this is the largest set of Abbreviated New Drug Application (ANDA) cases ever filed for a single product. Finnegan has “many sophisticated lawyers” in its litigation line-up including two new IAM Patent 1000
inductees for 2018 – Sanya Sukduang
and James Barney
. Excelling, like Lipsey and Monroe, in pharmaceutical cases, Sukduang is “incredibly smart and a superb technical lawyer who gets right to the point and litigates with excellent judgement”. “He has great vision and a disarming personality – as opposing counsel, you might not notice what ‘litigation thing’ he is doing to you.” Impressing all who cross his path, whichever forum it is in, Barney is “an amazing lawyer”. “He doesn’t get rattled, works quickly and is a thoughtful and practical team player who never lets ego get in the way of progress.” Another litigator garnering excellent feedback is Doris Johnson Hines
who leads the electrical and computer technology practice. “She has grown up in the patent field – she knows prosecution and litigation and is great in appeals – and has an excellent legal mind. She communicates with clients in perfect pitch and has their trust when they are most in need.” Alongside her in the computer and telecoms field is Reston partner and fellow all-rounder Jeffrey Berkowitz
. He frequently takes to the podium as a speaker on the hottest IP topics and, having prosecuted thousands of patent applications, issued many opinions and litigated dozens of cases, is well placed to impart knowledge. Anchoring the ITC practice, meanwhile, is Smith Brittingham
who has lately been winning make-or-break Section 337 cases for Hangzhou Chic Intelligent Technology Company, which was the first business to introduce two-wheeled personal ‘hoverboards’ to the market. Finally, taking the lead on design litigation is Elizabeth Ferrill
, who is “one of the few lawyers in the country with experience in inter partes
reviews on the validity of design patents”. “She is very involved in the design bar and really starting to build her name – she isn’t a dabbler and is very much in the club. She also gives her clients an outstanding service.” The links between different practice groups are close, given that many Finnegan lawyers contribute in multiple areas. This is true of transactional aces John Paul
and Brian Kacedon
, who each possess litigation experience. Licensing Executives Society board member Paul is seen by his clients as “a core team member”. “John’s curiosity, knowledge and deep experience make him indispensable to strategic discussions, and his insight into IP design and architecture is vital in business model planning.” Kacedon has been cutting many deals in the biopharmaceutical sector and always has the right answer for clients who may know what they want in an agreement, but do not necessarily know what the state of the market is with respect to key deal terms. Kacedon is more than comfortable with the finer technology points in his transactions but does not hesitate to utilise the firm’s stacked roster of PhDs where it is advantageous to do so. Many of the prosecutors on deck get called in to analyse and evaluate the intellectual property of companies for transactional purposes – something they do extremely well alongside their prosecution and portfolio management duties. Among the best strategic counsellors are managing partner Mark Sweet
, Google leading light Gregory Gramenopoulos
and international pharmaceutical ace Bryan Diner
. Keeping the patent office practice in the best of health in her role as its captain is Adriana Burgy
. “She stays consistently on top of complex portfolios and makes herself available at all times. Her team engages fully in scientific discussions with inventors to master the subject matter and is head and shoulders above others in terms of providing an efficient, highly specialised prosecution service.”
Fisch Sigler LLP
For companies embroiled in patent disputes that go right to the heart of their business, Fisch Sigler parts waves. Its professionals – all born-and-bred trial lawyers and artful technologists – work dynamically as a team to notch up wins in court and at the Federal Circuit for the likes of Amazon. The set’s intensity and creativity also frequently result in quick dismissals. The firmament’s brightest star is Alan Fisch
, a fearless advocate with an unmatched passion for his craft.
Fish & Richardson PC
“Fish continues to do a lot of great prosecution work.” “Its partners and senior associates are super clued in and operate at the highest level in terms of substantive legal knowledge. Their understanding not just of US prosecution but of European and international processes is fine-tuned too.” Highlighted for special praise, IAM Patent 1000
newcomer David Jordan
is burning brightly in fields such as software and human-computer interfaces. “A highly disciplined former military guy with amazing attention to detail, he is a smart lawyer who thinks well on his feet and produces fine quality.” John Hayden
is also noted for his software expertise, although he has the technical chops to get to grips with any electrical, computer-related or mechanical invention. He also leads the patent practice and does a top job keeping all members of the team focused on patent quality, the satisfaction of clients’ commercial desires and excellent customer service. Across an extensive domestic office network, there are connoisseurs in every technical discipline you can think of. Manufacturing and medical device matters are the province of DC’s Phyllis Kristal
, who is a beacon for many a dynamic start-up. While the prosecution wing acquits itself with distinction in a challenging market in which companies are demanding more for less, the litigation unit is consistently out-performing competitors in high-stakes patent infringement actions and post-grant proceedings, measured by both volume and wins. Michael McKeon
and Ruffin Cordell
continue to light up courtrooms and would be deserving of a platinum ranking if there was one. “Michael is incredibly smart, works intensely hard, has a way with people and delivers arguments and presentations with finesse. He is also outstanding in terms of developing strategy.” “Ruffin has a high level of seniority and experience and manages big cases brilliantly. His performances in court are always great – he’s extremely sharp thinking on his feet and has a folksy, unpretentious style that goes down well.” Fish is “a juggernaut at the ITC” and McKeon and Cordell, together with Joseph Colaianni
, form the backbone of a redoubtable Section 337 team. “Joseph is excellent technically and a sensible guy who is great to deal with – he’s not going to get into silly discovery disputes.” There are many others besides who rightly pride themselves on their courtroom skills and ability to make what is complex simple. Unflinching when reputations and finances are on the line, Indranil Mukerji
has mastered the art of persuasion. The same can be said for Christian Chu
, although his recommendations focus on the way he “deep dives into the technology”. In this respect he is uncommonly versatile too, being seasoned in life sciences, mechanical and electrical cases. Blending extensive appellate expertise into the practice is Lauren Degnan
, who is an accomplished lead at all levels of the court system. Making the firm’s contentious offering even more compelling is a vigorous PTAB practice, chiefly manned in DC by Karl Renner
, the post-grant group co-chair – alongside Minneapolis-based Dorothy Whelan – and Timothy Riffe
. Renner has remarkably overseen more than 300 actions and was recently elected to serve on the PTAB Bar Association board. Riffe is well suited to post-issuance work given his 360-degree litigation, prosecution and counselling experience.
Top-of-the-range New York boutique Fitzpatrick is one of the best in the business for pharmaceutical patent litigation, but brings the heat on high-tech battlegrounds too. Its lead DC-based attorneys comprehensively cover all technology-rich sectors, from electronics, computers and software to semiconductors, telecoms and more besides. Long-time client Canon gets a lot of mileage out of the local squad, especially Edmund J Haughey III
, a seasoned district court, Federal Circuit and ITC advocate. Joining forces with Michael Sandonato over in the Big Apple, he recently secured a verdict of wilful infringement by Color Imaging and General Plastic Industrial Co against Canon after a 10-day jury trial. The DC office has a lot of senior folks in it, including post-grant chair Justin J Oliver
and transactions team chief and patent prosecution co-captain Brian L Klock
. Oliver knows that, to sway the technically expert judges at the PTAB, he has to dig deep into the details of the science at issue – something he does with grace and poise. A former examiner, Klock intimately understands the workings of the USPTO and what it takes to get the government agency pulling in the same direction as his clients. Whether he is prosecuting patents, litigating them or negotiating deals, he is guided by the commercial best interests of his clients.
Foley & Lardner LLP
Recommended on each of the prosecution, litigation and transactions tables, Foley & Lardner is one of the patent world’s top triple threats. As chair of the IP department, Michele Simkin
is doing a fantastic job keeping the wind in the sails of all three practice areas, in recognition of which she more than earns her debut in the IAM Patent 1000
this year. Of the chemical and life sciences aficionado, one client comments: “Without her, we could not successfully achieve our many worldwide goals. She is unbelievably diligent and proactive and runs an outstanding team.” Fellow pharmaceutical and biotech virtuoso Courtenay Brinckerhoff
also plays a strong hand in keeping the firm at the cutting edge given her role chairing the associate training and IP policies and procedures committees. The author of Foley’s pharmaceutical patents blog and “an excellent panel speaker, she is very current on the practice” and a “high-quality professional”. Further exploration of the life sciences and leadership themes brings Stephen Maebius
into view. A post-grant master, he recently took the lead in successfully defending three inter partes
review challenges by Dr Reddy’s against his client Galderma’s Orange Book Oracea patent. Maebius is a former chair of the IP division and among the most versatile lawyers; he wins awards for his transactional work, spearheads vital litigation campaigns and, being a former USPTO examiner, can shine prosecution and portfolio management lights for clients. Given the well-roundedness of its practice and the technical depth of its bench, Foley & Lardner is naturally suited to post-issuance tasks. Alongside Maebius, George Quillin
, who takes the PTAB practice’s reins, knows all the nuances of the quasi-litigious AIA proceedings. However, in district court litigation, ITC investigations and appellate affairs, the main man in DC is Pavan Agarwal
. A clever strategic counsellor who manages complex cases deftly and cost-effectively, he is also a resonant courtroom performer.
Gibson Dunn & Crutcher LLP
Litigation hotshot Gibson Dunn & Crutcher has gone virtually undefeated in patent infringement actions for a number of years. Such consistent winning puts it right in the frame for big-ticket cases where it is do or die. A repository of trust in such situations is Brian Buroker
who, together with Mark Perry
, recently won a reversal of a $533 million patent judgment against Apple; they got the Federal Circuit to find all claims asserted by Smartflash to be ineligible under Section 101. Perry, who co-chairs the firm’s national appellate and constitutional law group, is a powerful force at both trial and appeal.
Goodwin Procter LLP
Goodwin Procter is highly acclaimed for its staunch representation of drug companies in pharmaceutical and biologic patent litigations. Contributing indelibly to the firm’s reputation in the practice is DC resident William James II
, a pathfinder for Teva in litigation relating to its first branded product Copaxone among many other matters. His activities in this regard have taken him into the Supreme Court and the Federal Circuit, but he has also been showing what he can do at the PTAB of late. There, he secured an inter partes
review win for Aegerion Pharmaceuticals supporting the patentability of its claims covering its first marketed drug product over the prior art raised by the Coalition for Affordable Drugs. In this, his expertise on the highly technical aspects of his cases shone through, as the evidence he gleaned from his experts – and got out of the other side’s on cross-examination – turned the case. “Bill is a hands-on manager of all phases of pre-litigation and litigation and is an exceptional trial and patent lawyer. He has a deep scientific understanding and can communicate complex concepts to a judge without any technical knowledge. To ensure that his work aligns with their expectations and commercial strategies, he partners very closely with clients. He also understands the interplay between regulatory and IP law and how to leverage it effectively in patent litigation.” Attracting similarly effusive feedback on the high-tech side of the practice is head of intellectual property in DC Jennifer Albert
. “The epitome of a top legal professional, she operates with diligence, smarts and integrity. She attacks difficult technical problems with ease and can effortlessly pick up new concepts and maintain logic and focus in very splintered cases. One of her best attributes is that she is an acute listener.” Another source adds: “She is the best-prepared IP lawyer I have ever met and is distinguished by her absolute knowledge of all her cases. She is also a superb strategist.” She has had a lot on her plate recently and has been busy representing Gillette against the Dollar Shave Club in a commercially significant battle over razor blade coatings; together with Stephen Schreiner
, she has also been acting for Personalized Media Communications against Apple in an Eastern District of Texas suit stayed pending the outcome of an inter partes
review. Given his blend of litigation and prosecution expertise, Schreiner is well placed to handle post-issuance patent challenge procedures particularly in his focus areas which include financial services, software, business methods, telecoms and the Internet. For crucial ITC clashes, Goodwin Procter is fortunate to have Marcia Sundeen
on board. A former ITC attorney and past president of the ITC Trial Lawyers Association, she is steeped in the practice of Section 337 like few others. All the lawyers identified above love having William Jay
in the office because he is highly proficient at backing up their wins when they go up on appeal. “Willie is one of the hardest workers in the appellate realm. He knows all the most obscure details of cases and has an innate ability to craft narratives that make sense of the law.”
Greenberg Traurig LLP
Greenberg Traurig can deploy any number of lead patent trial lawyers from a wide spread of locales across the country. One of the closest-knit teams in its network can be found in the DC office and comprises Mark Davis
, Stephen Shahida
and Ronald Pabis
. They are the fulcrum around which a robust ITC practice turns, but are just as ready to roll in any forum. Right now, they are slogging it out for Samsung Electronics and have recently prevailed at the PTAB in multiple inter partes
reviews. An attitude of mutual assistance prevails across the firm; all the GT lawyers are serious about giving the best strategic advice to clients to help them gain and preserve market share and they effectively leverage each other’s skills and expertise to do so.
Harrity & Harrity LLP
“As well as in preparation and prosecution, Harrity & Harrity excels at competitive intelligence and pre-litigation patent analysis. It delivers high-quality results promptly and within budget and can handle any type of technology and any degree of complexity in invention disclosures with ease. Its attorneys interact fluently with inventors and in-house counsel and are super easy to work with. The team strategically uses examiner interviews to expedite prosecution and avoid placing unnecessary information into the written record at the patent office. It performs all tasks quickly and cost-effectively.” John Harrity
and Paul Harrity
have set up the firm so that it delivers all this with incredible consistency; among other things, they have devised a uniform writing style and thorough second attorney review process. With prosecution on lock, the set has been expanding its horizons in the past few years, which has led to the recent formalisation of an analytics group that provides clients with business-focused data analytics that can improve decision making; in-house IP counsel love this tool because it makes them look good in front of the C-suite. Coming in for particular praise this year, “Paul is quick to understand what his clients need and is always looking at the big picture. He is extraordinarily responsive and understands that effective legal counselling hinges on honesty and top-quality work”.
Hunton Andrews Kurth LLP
This firm has two new representatives in the IAM Patent 1000
with backgrounds in the high-tech realm. Getting their heads around any electro-mechanical invention is a cinch for Daniel Shanley
and Shawn O’Dowd
, who together represent Toyota and Nichia among other prolific patentees. Giving the DC litigation crew plenty of positive things to report is John Hutchins
, a lawyer who stays sharp and ready thanks to the sheer diversity of cases that land on his desk. An electrical engineer, he is as technically proficient as any of his prosecution colleagues, but he is judicious enough to leverage their support wherever it helps his clients – a collaborative approach that has borne fruit in a post-grant context of late. He is currently acting for Apple as petitioner in an inter partes
review proceeding relating to a redundancy circuit in a semiconductor memory device.
Looked at from any perspective – practice type, technical subject matter, geographic scope – the patent activities of Jones Day are virtually limitless; this is something that very few firms around the world can claim. Capitalising on this in the interests of patrons are DC lawyers Blaney Harper
and Gregory Castanias
, who are heavy hitters within the contentious practice – Harper at the ITC and Castanias at the Supreme Court and Federal Circuit. Harper is very much cut from the lead trial counsel mould and has advocacy skills that many important high-tech companies seek to take advantage of. One of these is LED lighting concern Cree, on whose behalf he is fighting multiple major inter partes
reviews in a dispute with competitor OptoLum, which is seeking substantial monetary damages. With him on this one is new IAM Patent 1000
inductee Doug Pearson
, an impressive former Navy scientist with an applied physics PhD. Specialising in post-grant, litigating proficiently and overseeing associate training in prosecution, he adds value for the firm and its clients in many meaningful ways. Appellate chief and fellow of the American Academy of Appellate Lawyers, Castanias is a cornerstone of the organisation’s litigation success. He is currently representing the SAS Institute in the Supreme Court in an important case concerning the PTAB’s claim review practice.
Jones Robb PLLC
With experienced professionals offering a tailored service while utilising technology effectively to drive efficiencies, patent boutique Jones Robb makes good on its promises of quality and value. Having recently upgraded its IT infrastructure, the set has had more time for outreach and its efforts have paid off with both significant growth in instructions from devotees and new clients joining the side. All of them look to Susanne Jones
and Kevin Robb
not just for routine preparation and prosecution, but to fix old patents and perform other highly technical tasks. Jones keeps abreast of all changes in the law and is meticulous when it comes to the detail – she looks over documents carefully, and does not just have her secretary prepare everything to file. Robb’s in-house experience cultivated in him a very practical approach to legal tasks. He is great at developing client relationships and at getting favourable results without drawn-out prosecution. His expertise overcoming Alice
rejections is cited by clients, who say that “he wins more than he loses, which is impressive in this area”.
Firms are competing aggressively for talent, and Kirkland & Ellis scored a coup when it brought Paul Brinkman
into the fold in 2017. The former Quinn Emanuel pro is a “smart, patient and extraordinarily thoughtful” ITC sharpshooter. “He’s an obviously senior lawyer who doesn’t make mistakes in writing or in oral presentations. He has the right amount of stubbornness to defend his clients’ interests very effectively.” “Kirkland has historically had a very strong ITC practice”, and alongside Brinkman on the IAM Patent 1000
US national ITC rankings sit “superb lawyers” Gregg F LoCascio
and Edward Donovan
. Putting on a clinic at the commission, LoCascio recently got an exclusion order against Umicore on behalf of BASF; in the case, he made Umicore’s expert witnesses look silly while running his own credible and highly persuasive case in this dispute over patents on cathode materials used in lithium-ion batteries. The DC bureau is also the base of operations for John O’Quinn
, one of the firm’s best appellate advocates. “He’s a fantastic writer who doesn’t get bogged down in minutiae but sees the bigger picture. He knows administrative law as well as anyone.”
Latham & Watkins LLP
Latham & Watkins has a stable of phenomenal litigators in Washington DC and nationally and is an unstoppable force in bet-the-company patent trials. First to mind for many is Maximilian Grant
, who has had an “instrumental role in building up the practice”. “He’s smart and aggressive but fair and you know he’s not playing games. He’s a brilliant leader, too – he stays hands on and understands all of a case’s issues, but he delegates effectively and doesn’t micromanage.” Matthew Moore
also earns plaudits as “a really good manager of complex, multi-party litigations, which is not a skill a lot of people have. On top of that, he’s just a great lawyer”. “Someone you can trust with your crown jewel assets is Michael Morin
, a talented, extremely clever, hardworking and experienced lawyer. He stands up in court and presents complex subject matter in an even-handed, compelling way. The litigation profession is becoming increasingly uncivil, so it’s great when you get to deal with someone like Mike.” “When it comes to ITC cases, Bert Reiser
is one of the best in the country. He’s a phenomenal lawyer who has always had a deep understanding of Section 337 practice and procedure. You can count on him to remain calm in a storm.” “The team is superb from top to bottom” and other names to note are Robert Steinberg
, Lawrence Gotts
and David Frazier
. “Latham has developed its post-grant capabilities significantly” and credit for this goes to Steinberg, who chairs the patent office trials practice. A veteran of cases in the triple digits, Gotts recently won eight appellate victories for Ford arising out of its high-profile tussle with Paice, acting in concert with Moore. Microbiology PhD Frazier’s province is biopharmaceutical litigation. He has recently linked up with Morin to give AbbVie ample firepower in its defence of best-selling drug Humira among other products.
Mayer Brown LLP
Replete with technical talent and a confidence-inspiring line-up of trial lawyers across its offices, Mayer Brown does not have to deal with bandwidth problems and can take on huge patent infringement cases. It gains another edge by occupying roles on both sides of the docket, which grants its lawyers an impressive ability to predict the moves of their opponents. What seasoned IP strategist and litigator Alan Grimaldi
has created as co-head of the IP practice is a group that works extremely hard and with passion for and enjoyment of the task – which precipitates an atmosphere in which stress is reduced and creativity enhanced. Thriving in it himself, Jamie Beaber
has become a co-promotor of this environment with Grimaldi. He does not just communicate with clients and colleagues via email – he prefers face time and social interaction so that tactics can be brainstormed. As peers acknowledge: “Jamie is extraordinarily busy, but he always finds the time for people. He is a straight shooter who puts in intense effort to get difficult jobs done.” Clients adore him too: “For an in-house counsel, having someone like Jamie with his vast experience and attention to client needs is invaluable. Moreover, his and his firm’s billing flexibility is unmatched. He treats relationships as long-term partnerships, rather than just a business transaction.” Beaber leads a buzzing ITC practice, a key cog within which is Gary Hnath
. A former president of the ITC Trial Lawyers Association, Hnath is an authority on Section 337 investigations and a lodestar for many Chinese companies fighting at the commission. Litigating primarily in district courts, meanwhile, is Stephen Baskin
, an ace on fintech among other subjects. “Aggressive yet affable, Steve is a great storyteller in the courtroom. Judges like him.” In common with his colleagues, “he works exceptionally hard and is highly effective”.
McDermott Will & Emery
One of McDermott Will & Emery’s principal features is its strength in all facets of patent law. Deep in the prosecution game, it has an outstandingly strong technical bench – something its trial lawyers capitalise on effectively. The ability to make complex stories simple is showcased in style by the DC litigation contingent in both life sciences and high-tech disputes and in all forums. Taking the lead on pharmaceutical matters of import is Thomas Steindler
who is battling hard on behalf of Novartis against AbbVie and its counsel Latham & Watkins as they seek to invalidate 11 Novartis patents relating to hepatitis C drugs. Steindler makes it his business to understand what makes all his clients tick; in the case of Novartis, he has safeguarded its interests for nearly two decades and knows the company extremely well. He is ultra-dedicated and has a great track record to show for his efforts. In high-tech areas, there is a large local crew from which to pick a lead representative; frequent collaborators and erstwhile Ropes & Gray colleagues Paul Schoenhard
and Nicole Jantzi
have completed their induction and are right in the thick of things now. They are not just great litigators but people who provide tailored advice and can dot Is and cross Ts when necessary – it is all about relationships with them. When they are on a case, they focus on the best arguments they have got rather than throwing everything at the wall and seeing what sticks; they also do a terrific job making everyone on their team feel like they have a stake in the matter. There is hardly a more experienced ITC lawyer on the market than Jay Reiziss
, who worked at the commission in various roles for over 12 years up until 2007. Forming a dynamic duo with Chicago’s Charles McMahon, he is busy representing ZTE in numerous cases in district courts, the ITC and the PTAB. Many of McDermott’s lawyers – Paul Devinsky
and Hosang Lee
come to mind – are protean thinkers. Litigator and counsellor Devinksy makes his mark in all areas of intellectual property flexing a refined knowledge of patent, trademark and copyright law. Lee has notable prosecution, litigation and licensing faculties and dexterously serves many Korean clients; he oversees sweeping prosecution campaigns for Samsung. Recommended alongside Lee on the prosecution listing is Michael Fogarty
, who also has many loyal devotees in Asia; he has been a steadfast ally for Panasonic for many years.
Morgan Lewis & Bockius LLP
Morgan Lewis & Bockius’s star is on the ascendant at the ITC, one of the hottest patent litigation venues in the United States right now. Taking charge of a dedicated and highly specialised Section 337 crew is Eric Namrow
, who has represented both complainants and respondents in around 50 investigations, more than half of which have proceeded to trial. Company boards and CEOs always take an interest in ITC cases, given the powerful remedy that may be made available to them, and Namrow relishes the high-level contact he has with his clients – and it goes both ways. He loves the fast pace of things but does not get carried away by it; he maintains an unrelenting focus on the business interests of his clients, which often requires taking his foot off the gas pedal. Of course, Morgan Lewis is also celebrated for the vibrancy of its patent practice across the waterfront. It has not taken its eye off the prosecution ball whatsoever and continues to lean on partners like Robert Smyth
to provide holistic support to patrons. Pharmacology PhD Smyth has put pen to paper on thousands of life sciences patents and had the USPTO sign them off. Lately he has been prosecuting for Merck & Co and Asahi Kasei Kabushiki Kaisha.
Morrison & Foerster LLP
National IP powerhouse Morrison & Foerster has long been one of the most active, and indeed dominant, participants in ITC patent litigation. Its team includes luminary Lynn Levine
, a former director of the commission’s Office of Unfair Import Investigations, and fellow senior counsel Brian Busey
, “an excellent litigator and outstanding leader”. At partner level, ex-American Intellectual Property Law Association (AIPLA) president Mark Whitaker
spearheads the practice while also fulfilling his district court and Court of Federal Claims duties. Morrison & Foerster’s senior IP lawyers are all IP leaders in some capacity. In terms of appellate practice, names do not get much bigger than Deanne Maynard
. “She’s the queen of the Federal Circuit and Supreme Court and although she handles cases in all legal disciplines is super up to speed on patent practice.”
Hailed for its pure prosecution prowess, Oblon is ahead of the curve when it comes to the deployment of software and artificial intelligence tools to make the procurement of patents more efficient and less costly. Electrical prosecution leader Philippe Signore
is another international strategist and a bellwether for many French and European clients. Lately, Essilor and the French Alternative Energies and Atomic Energy Commission have both been increasing his workload, which is testament to the percipience of his strategic advice and the quality of protection he obtains. PhD J Derek Mason
also prosecutes with aplomb, focusing on the chemical industry; he doubles up as co-chair of the transactions group. Although Scott McKeown departed for pastures new, Oblon’s distinguished post-grant practice remains fighting fit, as shown in stark fashion by PTAB statistics. This is largely down to the efforts of W Todd Baker
, Stephen G Kunin
and Vincent K Shier
, among others. Baker is captain of the PTAB section and has “an incredible work ethic and demeanour which engenders confidence. The clarity of his communication is also outstanding”. Management committee member Kunin has “impeccable knowledge” and understands the specialised rules and practices of the PTAB at an unprecedented level of detail. Shier is a biological chemistry maven and a beacon for life sciences companies in both prosecution and post-grant. With founding partner Arthur I Neustadt
and ITC chair Thomas J Fisher
laying solid foundations, building up the litigation group into a position of strength has been one of Oblon’s priorities in recent years; rising stars Eric W Schweibenz
, Robert Mattson
and Michael L Kiklis
have really come through for the firm and made it a reality. Schweibenz has been working his socks off at the ITC lately but has always kept that glimmer in his eye. “He’s passionate and can be a real bulldog for his clients.” The same can be said of Mattson, a dexterous trial attorney and fount of knowledge on standard essentiality. Computer science and software guru Kiklis “has a nice confident style” and is “extremely knowledgeable about litigation and post-grant strategy”. The 2017 recruitment of Alexander Hadjis
has also given the set more litigation clout. The ex-Cadwalader pro matches trial skill with technical nous and is an artful lawyer who plots clear litigation directions from the outset, but also nimbly changes tack when circumstances change.
Paul Hastings LLP
Paul Hastings is home to a first-rate life sciences and high-tech patent litigation unit and what many consider to be one of the very best post-grant practices in the nation; so far as anything contentious is concerned, it really is a top-class organisation. Among its most sought-after lawyers right now is post-grant mastermind Naveen Modi
– everyone in PTAB practice is talking about him. Among his recent headline-grabbing victories were inter partes
review wins for Boehringer Ingelheim resulting in the invalidation of all claims of a key patent covering AbbVie’s Humira drug. He comes under considerable pressure given the high-stakes nature of the disputes he is called in to, but “has a wonderful temperament and stays cool, calm and collected. He’s a great leader too, and has a knack for motivating those around him to do their very best”. He draws vital support from Joseph Palys
, a former USPTO supervisory patent examiner and technical expert who is a PTAB Bar Association Committee chair. Like Modi, Blair Jacobs
has also been in the limelight, being noted as an experienced trial lawyer with a head for heights. He followed up an appellate win for Fairchild Semiconductor against Power Integrations two years ago – which was important in the context of the law on inducement – with another successful argument at the Federal Circuit in which the court held that proven direct infringement must be shown to have been caused by the inducing acts. “Blair isn’t a pitbull, but he’s a boisterous, aggressive litigator who is great if you have an issue you really want attacked.” Paul Hastings can put a lot of weight behind unwieldy litigation campaigns. Jacobs and Allan Soobert
played key roles alongside gold-rated Palo Alto lawyer Yar Chaikovsky to set a precedent regarding patent eligibility under Section 101 on behalf of Trend Micro against Intellectual Ventures. Soobert is a go-to for many technology leaders when only a win will do.
Paul, Weiss, Rifkind, Wharton & Garrison LLP
“Among general practices, Paul Weiss is right up there in terms of PTAB work.” Its hiring of Steven Baughman
at the start of 2017 has evidently payed off and given this elite firm post-grant wherewithal to match its trial capabilities. “Smart, hardworking” and uncommonly successful in inter partes
reviews and other AIA proceedings, Baughman also “treats everyone with respect” and happens to be “one of the nicest guys in the game”. In terms of district court and ITC litigation, the main man in DC is David Ball
, a dyed-in-the-wool trial lawyer who also possesses arbitration expertise in abundance.
Quinn Emanuel Urquhart & Sullivan LLP
Quinn Emanuel may have lost Paul Brinkman to Kirkland & Ellis, but it certainly has not fallen off the ITC map. Alex Lasher
has taken the reins of the Section 337 practice, important contributions to which also come from the firm’s trial aces in New York, Chicago and California. Quinn lawyers are accustomed to working under pressure – in fact, they positively thrive when the stakes are highest and timeframes tightest – so the ITC is a natural home for them. To no one’s surprise, its IAM Patent 1000
submission is packed with commission cases and highlights: San Francisco’s Sean Pak recently secured an exclusion order against Elekta on behalf of Varian Medical Systems; while Dave Nelson of Chicago has been selected by Qualcomm to serve as lead counsel in multiple actions against Apple, including at the ITC.
“Rothwell Figg continues to thrive in its focus areas of litigation and post-grant proceedings.” “Its trial lawyers are strategic, creative and extremely knowledgeable” and “can save you potentially hundreds of thousands of dollars by getting you to a good result efficiently”. “Their expertise is critical to making sure you have a cost-effective – and winning – strategy in place.” The top dog in the pack is Steven Lieberman
, “an incredibly quick learner with an agile intellect”. “He is well informed about life within the law and outside of it and can comment insightfully on lots of topics so, as well as being a top lawyer, he is just an interesting guy to talk to.” The embodiment of a sharpshooter, Lieberman can pick out the dispositive issues in a dispute right away because of his experience – and do this in pharmaceutical, e-commerce and high-tech cases. He has been on a winning streak for a long time now, but a recent highlight of particular note was an Eastern District of Texas defence win for Turner Broadcasting System and a swathe of other media companies against Bartonfalls, whose case was dismissed with prejudice and without leave to amend. With him on this was Sharon Davis
, with whom he often collaborates. Davis is chiefly known for her prowess in Hatch-Waxman Act litigation, which has been a focal point for the firm ever since E Anthony Figg
established it. One of the market’s elder statesmen, “Tony is still a top-notch adversary. He hits hard in litigation but is a stand-up guy who is honest and genuine. If he says something you can take it to the bank”. A veteran of 50 originator versus generic battles, Joseph A Hynds
is another lawyer with plenty of seasoning in the life sciences. Putting the set’s PTAB proficiency under the microscope, Rothwell Figg was selected to handle the first covered business method review case precisely because of its longstanding expertise in interferences, upon which the AIA proceedings were largely based; one can reasonably say that few firms are as steeped in post-issuance practice. R Danny Huntington
and Martin M Zoltick
are names to commit to memory. Former Gilette Research Institute chemist Huntington is a “premier practitioner in post-grant and in the life sciences industry. He has watched closely as the US IP landscape has evolved and has always understood the needs of his clients and how to execute strategically in a way that fulfils them”. Zoltick has an intimate knowledge of how the USPTO and PTAB work and how to bend processes and procedures to his clients’ advantage. His dual prosecution and litigation experience gives him a real edge.
Sidley Austin LLP
As the main seat of its ITC and appellate groups, Sidley Austin’s K Street office is crucial within the context of its potent national patent litigation practice. Taking the lead on Section 337 investigations is Brian Nester
, a “practical, level-headed guy” and “all calm, like the eye of a storm”. “He’s a really solid attorney, indicative of which he is constantly busy on high-level tasks for industry leaders like Microsoft.” When it comes to appeals, Carter Phillips
is undeniably one of the top lawyers in the country – the Supreme Court is his home away from home. Other swashbuckling advocates in the capital include Jeffrey Kushan
, who coordinates the firm-wide IP litigation practice, and life sciences connoisseur Paul Zegger
Steptoe & Johnson LLP
Of Steptoe & Johnson, one foreign associate comments: “I keep on referring clients there because the service provided is amazing.” This is especially true in consideration of the efforts of its ITC team. Cited as an “experienced, responsive and efficient”, Section 337 litigator John Caracappa
demonstrates consistent thought and practice leadership at the commission. However, as he is an “excellent strategist all round”, he also fights the good fight in district courts and the PTAB; he and Boyd Cloern
recently linked up to represent Continental Automotive Systems in an Eastern District of Virginia dispute over tyre pressure monitoring systems. For Cloern, IP cases complicated by antitrust issues are something of a speciality. No one-trick pony, Steptoe uses patent law tools to solve technical, legal and business problems for clients, whatever shape they take. Having a multidisciplinary lawyer like Harold Fox
in the fold is crucial to the success of this endeavour. Fox co-chairs the IP department and leads the prosecution team whose recent growth, particularly in New York, he has astutely brought about. Flexing his expertise in chemistry, he has been doing great things for exciting companies such as GeNO, which has developed unique nitric oxide generation and delivery technology for the treatment of human diseases. He earned his PhD in chemistry from the Massachusetts Institute of Technology and now represents his alma mater
With a patent law and technology visionary like Robert Green Sterne
as its talisman, Sterne Kessler is at the cutting edge of patent law and practice. Outstanding contributions come from an extensive bench of thought leaders, among whom biotech kingpin Jorge Goldstein
, managing director, electronics guru and sharp strategic counsellor Michael Ray
and design doyenne Tracy-Gene Durkin
are stand-outs. When picking out compelling threads in the firm’s recent narrative, growth in litigation is a good place to start. In January 2017, the set recruited John Christopher Rozendaal
, “a former Supreme Court clerk with an impressive knowledge of patent issues and how they are developing”, and Michael Joffre
; both slotted into leadership positions as co-chair of the trial group and co-chair of the appellate practice respectively. They do not run a standard playbook in litigation; instead, they think hard at the beginning of a case about the arguments that are most likely to lead to a successful outcome and focus with intensity on those. Around these two and fellow new IAM Patent 1000
entrant Dennies Varughese
, an impressive life sciences litigation practice is coalescing. A pharmaceutical doctor who loves getting deep into the facts and writing briefs, Varughese also has the gift of the gab in the courtroom and in July 2017 secured a Federal Circuit affirmance of an earlier success for Alembic Pharmaceuticals defeating temporary restraining order and preliminary injunctions motions filed by Otsuka. Sterne Kessler is engaged in a significant percentage of patent disputes currently before the ITC and taking the lead on many of those is Daniel Yonan
. He is embedded in the automotive industry and recently represented Volkswagen Group of America in a Section 337 investigation brought by Advanced Silicon Technologies; contained aggression got his client an extremely favourable settlement. All these litigators draw on an enviable pool of hardcore scientists to carry the day, many of which can be found in the prosecution section, which is chaired by biotech and chemistry maven Eric Steffe
. In the electrical arts, former USPTO examiner Donald Featherstone
and Michael Lee
are names to note. Featherstone helms the foreign filing practice and captains the nanotechnology industry team while Lee props up the state-of-the-art licensing practice. The organisation’s incredible success and leadership in the post-grant arena are partly a product of its dual litigation and prosecution expertise. It is also the result of the pilotage of Eldora Ellison
, a life sciences champion who is “really distinguishing herself at the PTAB”. “She has an instinct for the approaches that will lead to the best outcome in each case and has gotten a lot of fantastic results. She is also an extremely hard worker.” A renaissance man listed on each of the prosecution, litigation and transactions tables, Robert Sokohl
has been taking on increasing inter partes
and covered business method review duties. He is highly competitive by nature and advocates for his clients with zeal. Appeals from PTAB decisions are typically handled by Jon Wright
, who has been instrumental in growing and broadening the appellate practice here in the last three years.
Sughrue Mion PLLC
It has been steady as she goes over the past year or so for Sughrue: headcount has held at around the 90 mark while the volume of instructions across the contentious/non-contentious split has remained consistent. Best known as a prosecution shop, the firm is also proficient in litigation and post-grant proceedings thanks to lean and efficient staffing of technically well-qualified teams with dependable captains such as William Mandir
and pharmaceutical whizz Michael Dzwonczyk
. In Alan Kasper
, Sughrue also has a lawyer to whom many look for an authoritative take on the state of patent law and policy internationally. Kasper is a past president of AIPLA and recently published a treatise entitled Patents After AIA: Evolving Law and Practice
– a piece of work which puts him at the vanguard of IP legal development.
Venable has really cracked the code for providing a seamless service across departments and legal disciplines and is a one-stop shop for technology innovators who want not only to procure, monetise and enforce IP rights, but to also put themselves on a solid regulatory, tax and competition law footing. Judging by the client feedback garnered by Michele Van Patten Frank
, the set is hitting all the right notes in prosecution right now. Frank makes a well-deserved debut in the IAM Patent 1000
this year, having proven her “unique ability to successfully navigate applications through the USPTO while keeping business objectives in mind and providing clever strategies for the development of portfolios. The quality of her work is excellent, her counselling is comprehensive, and her attentiveness and responsiveness are second to none”. Another respondent calls her “thorough, diligent, creative and perceptive”. Chair of the prosecution and counselling practice Michael Sartori
evidently performs brilliantly as a mentor to his colleagues and is also a trusted adviser for his clients. Complex litigations are handled by a robust team chaired by William Coston
, who shines when it comes to issues at the intersection of IP and antitrust law. The group’s top trial lawyer Frank Cimino
litigates with speed and aggression, delivering arguments with pinpoint accuracy. Together with Coston and Megan Woodworth
, he recently successfully litigated numerous inter partes
reviews in a complex patent dispute in the energy industry. High-flying competitors call Woodworth “fantastic”. “Clients really love her – she does great work and is excellent value for money too.” Another litigator receiving effusive praise from the market is Adam Hess
, an experienced ITC trial lawyer and “determined strategist who exudes quiet confidence and really knows his stuff”. Venable is much respected for its facility for patent and technology transactions of all kinds. Nora Garrote
and William Russell
anchor deal negotiations and secure signatures with minimal fuss. Garrote’s favoured provinces are software, pharmaceuticals and data, while Russell’s are medical devices, life sciences and energy.
Weil’s IP team in the capital may have thinned out at partner level in recent years – staying within the organisation, Anish Desai recently relocated to New York – but the DC office continues to be strategically significant as part the firm’s muscular national patent litigation practice. Co-chairing this is local resident Brian Ferguson
, who has had a successful and exciting 12 months bursting with competitor-on-competitor action, much of it between leaders in the consumer goods, semiconductor and chemical sectors. An experienced lead trial lawyer, Ferguson has litigated in district courts across the country, although some of his biggest results have come in the ITC. He has his finger on the post-grant pulse too.
White & Case LLP
Absolutely in its element when industry rivals are duking it out over cutting-edge technologies and laying it all on the line, White & Case has not really felt the patent litigation market’s overall decline, the main contributor to which is a decrease in lower-value non-practising entity suits. In line with this, Shamita Etienne-Cummings
has been assuredly dispatching complex ITC cases. Stoking her passion for the job, many of her cases implicate innovations that are central to people’s everyday lives. In the telecoms field, for example, she is extremely well placed given her background as an electrical engineer and programme manager for GTE Corporation. She astutely leverages her firm’s broad platform to infuse her counsel with insights from other legal disciplines such as competition. Clients also come to White & Case to procure patents, making a beeline to the versatile David Tennant
. He oversees Toshiba’s US prosecution efforts but goes above and beyond the brief for his clients in delivering percipient counsel that accounts for litigation and post-grant factors.
“Williams & Connolly may be the finest overall litigation outfit in the country. It only hires the best-quality lawyers – they’re aggressive yet personable and respectful, outstanding advocates in the courtroom, and among the most creative representatives you could hope to have on side.” “On the branding side in pharmaceutical patent litigation, it is the absolute best in the business” – an epithet that is also becoming evident in the biosimilar arena. At the forefront of many of the set’s most complex and crucial life sciences suits is Adam Perlman
, “an incredibly clever guy with unbelievable street smarts”. Working with senior advocate Bruce Genderson
, “a truly superb lawyer who believes in every case he takes”, Perlman has lately successfully represented Eli Lilly against generic challengers to patents covering its blockbuster anti-cancer drug Alimta, including in a bench trial in the Southern District of Indiana that was the first pharmaceutical case to address the issue of divided infringement. Alongside David Berl
, he has also been acting for Genentech in biosimilar litigation against Amgen. Berl and Thomas Selby
, meanwhile, have paired up to prevail for Pfizer in one of the first pharmaceutical inter partes
review cases to be decided by the PTAB. Although life sciences is a forte, none of the set’s lawyers are confined to any one technical area, which lends an impressive breadth and diversity to their boundary pushing. Newly minted in the IAM Patent 1000
this year, Jessamyn Berniker
brings this into sharp focus; she is a biotech star, but can carry the day in other types of dispute too, as her victories on behalf of Petroleum Geo-Services in several inter partes
reviews and associated appeals attest. Conspicuous for his expertise on standard-essential patents in the wireless field, and for his adroitness at the confluence of IP and antitrust law, Kevin Hardy
is another of the outfit’s stellar young partners.
Wilmer Cutler Pickering Hale and Dorr LLP
“An excellent set-up filled with top-drawer lawyers who can handle anything” is the verdict on WilmerHale. The firm is at the bleeding edge of practice in multiple forums; for example, at the PTAB, David Cavanaugh
has demonstrated mastery leveraging AIA proceedings to put related district court cases to bed; Nina Tallon
has yet to lose a case at the ITC; former solicitor general and American College of Trial Lawyers fellow Seth Waxman
continues to set precedents advocating in the Supreme Court and at the Federal Circuit, as does William McElwain
and former clerk Tara Elliott
, who serves on the Federal Circuit’s Lawyers’ Advisory Council.
When you anticipate going to trial, the smartest move is to call in Winston & Strawn. A gilt-edged patent litigation firm, it prepares thoroughly and has a battalion of first-chair litigators forged in the fires of the courtroom. In the DC office, Thomas Jarvis
, Paul Goulet
and Steven Anzalone
form a tailor-made strike force for prestigious clients litigating at the ITC. “The commission is a high-stakes, high-pressure environment, and Tom is a master there – he makes everything run so smoothly.” “Paul handles procedural issues expertly” and is a guru on the domestic industry requirement. Fiendishly smart, “Steve has deep technical expertise” and when he steps up to cross opposing experts, the court fills up with expectant listeners. Predominantly on the petitioner side, but also for patent owners, Winston has been showing what it can do at the PTAB. The narrative is important to get right in post-grant actions, and Andrew Sommer
makes for a compelling storyteller. At the appellate level, Charles Klein
is one of the most accomplished on the roster. He also flies the flag of the firm’s elite pharmaceutical practice in the capital and has lately been lighting the path for clients in complex disputes under the Biologics Price Competition and Innovation Act.