United States - Oregon

Firms

1
Klarquist Sparkman LLP
2
Chernoff Vilhauer
Marger Johnson PC
Perkins Coie LLP
Schwabe Williamson & Wyatt
Stoel Rives LLP
Chernoff Vilhauer
As a result of the scientific capabilities of its professionals, Chernoff Vilhauer operates with virtually no technical boundaries when it comes to protecting patents. It has a reputation for quality founded not only on its meticulous dotting of Is and crossing of Ts in its presentations to the US Patent and Trademark Office (USPTO), but also on looking objectively at a client’s commercial aims and providing straight-up, practical advice. Founding partner Jacob Vilhauer has extensive procurement, transactional and enforcement experience, and embodies the firm’s do-it-all ethos. This versatility is shared by Peter Staples and Donald Haslett. Staples has an affinity for brands and patents, as well as copyright and trade secret law; while Haslett blends licensing and technology transfer expertise into his patent and design rights prosecution practice. All three bring every ounce of expertise you could need to the table, while being unstuffy and easy to communicate with.
Klarquist Sparkman LLP
“First class” is the unanimous client verdict on Klarquist Sparkman, the runaway IP leader in Oregon. One satisfied customer relates: “Of all the law firms and lawyers I use in the world, Klarquist is right at the top.” No surprise, then, that many of its client relationships span back decades; the National Institutes of Health could be called a new client, relatively speaking, though it first came calling in 1997. The team represents the medical research centre as part of its work patenting vanguard medical technologies for the US government. Taking the lead is William Noonan, a physician and attorney who presides over a life sciences division that ranks among the best in the country in terms of successfully obtaining patents. Careful consideration before putting pen to paper on an application helps Noonan and his team get to an allowance in the straightest possible line, keeping costs down, but quality high. Chock-full of quality litigators, Klarquist also brings the heat on the national patent litigation stage – something which distinguishes it from its regional-facing Portland peers. Its playbook is deeper than that of a top NFL franchise, giving it the ability to get the jump on opponents and turn things around whenever disadvantaged by the twists and turns of a case. The star quarterback is John Vandenberg, a thought leader and a guiding beacon in the evolving patent landscape. “He is one of the most creative lawyers out there and, being more knowledgeable about patent law than almost anyone, he finds arguments that routinely go missed by others.” Having won on summary judgment at trial, he recently put in a polished performance at the Court of Appeals for the Federal Circuit on behalf of Mentor Graphics in its dispute with Synopsys over computer emulation technology. Another notable highlight was contributed by Scott Davis, a chemistry ace who is also fluent in many other scientific and technical disciplines; defending Patent Trial and Appeal Board challenges along the way, he successfully asserted two patents and false advertising claims on behalf of Capsugel against Bright Pharma Caps – a total victory which showcased his theoretical nous and pragmatic, results-oriented approach. “Too often, lawyers with big egos take things over without much concern for what the client is looking for; this is not the case with John and Scott, who always put your objectives first and act like a part of your team. They are both incredibly smart and they work in a cost-effective way.” For some of the most nuanced and persuasive argumentation around, look no further than Jeffrey Love, a pioneer in terms of sophisticated Section 112 defences.
Marger Johnson PC
Nothing in patent practice is off limits for Portland IP trailblazer Marger Johnson – from invention capture to rights enforcement and commercialisation, the set works hand in glove with its innovative clients. However, prosecution and strategic counselling are particular fortes and commentators are quick to highlight that the firm is “excellent at both, especially in the electrical engineering and software areas”. The compact nine-lawyer team moves nimbly and, unencumbered by bureaucracy, the lawyers here can tailor their service to the individual needs of each client; extensive in-house experience is another reason why they do this so well. Founding partner Alex Johnson puts his superior analytical skills to good use devising creative and commercially cogent solutions to infringement issues. New to the IAM Patent 1000 for 2017, Julie Reed manages portfolios in a way that prevents trouble brewing – though when things do get fraught, she instinctively knows how to gain the most leverage. A former Texas Instruments patent agent and IP strategy manager, the first in-house patent counsel at Sharp Labs and a two-term past president of Marger Johnson, she has an impressive résumé outside and in private practice; her advice is assured and inspires confidence.
Perkins Coie LLP
A famous IP name not just in the region, but across the country, Perkins Coie is a true heavyweight with over 225 professionals in its patent prosecution, litigation and licensing divisions. Though its local group is compact, IP peers nonetheless describe it as “one of the best firms in Portland”. A general litigator, but no less an IP expert, Julia Markley is a key contact in the city.
Schwabe Williamson & Wyatt
Schwabe Williamson & Wyatt is one of the largest full-service firms in Oregon, with formidable horsepower under the bonnet of its IP group. Its muscular patent unit has specialists for any and every occasion, but is best known for its contentious prowess. With Scott Eads, David Axelrod and Peter Heuser leading the line, the litigation team is a force to be reckoned with. Having seen combat in federal courts across the United States, nothing fazes Eads. He comes from a biology background, but isn’t someone you can pigeonhole technically; he is as adept at handling software cases as he is pharmaceutical spats. Axelrod has been a big name in Oregonian circles for many years; his trial experience gives him an edge at the settlement table. Heuser is another veteran who knows his way around the courtroom: “Pete is great on his feet and does a terrific job keeping track of all developments in the law.” Brenna Legaard also advocates effectively, but dedicates part of her time to complex transactions, including licensing for technology standards bodies. When the firm reorganised into industry groups in 2015 – a move which has gone down a storm among those seeking commercially infused guidance – Legaard stepped up to take the reins of the technology sector unit. Patent monetisation is the metier of Micah Stolowitz. The medical device connoisseur is also a key member of the ensemble’s prosecution practice, in which quality takes precedence over volume.
Stoel Rives LLP
The “terrific” Stoel Rives has won awards as Oregon’s "most admired" professional services firm. It maintains a vibrant IP practice, and while this is primarily run out of Salt Lake City, it has a small but noteworthy collection of technical talent in its Portland bureau. Perhaps unsurprisingly, given their commercial surroundings, the IP lawyers effectively partner with clients on a business, not just legal level. Litigators Randolph Foster and Steven Lovett view each case not as a standalone matter, but rather contextualised against clients’ market positions and wider objectives. When matters do pass beyond the steps of the courthouse, they do a sterling job of presenting technically complex subject matter in ways that can be easily understood by laymen and know how to tell persuasive stories, regardless of subject matter.

Individuals

Highly recommended
John D Vandenberg - Klarquist Sparkman LLP
Recommended
David W Axelrod - Schwabe Williamson & Wyatt
Greg Caldwell - Elliot, Ostrander & Preston, PC
David P Cooper - Kolisch Hartwell PC
Scott E Davis - Klarquist Sparkman LLP
Scott Eads - Schwabe Williamson & Wyatt
Randolph C Foster - Stoel Rives LLP
Donald B Haslett - Chernoff Vilhauer
Peter Heuser - Schwabe Williamson & Wyatt
Alex C Johnson - Marger Johnson PC
Brenna K Legaard - Schwabe Williamson & Wyatt
Jeffrey S Love - Klarquist Sparkman LLP
Steven T Lovett - Stoel Rives LLP
John Mansfield - MansfieldLaw
William D Noonan - Klarquist Sparkman LLP
Matthew C Phillips - Renaissance IP Law Group LLP
Julie L Reed - Marger Johnson PC
J Peter Staples - Chernoff Vilhauer
Micah Stolowitz - Schwabe Williamson & Wyatt
Jacob E Vilhauer Jr - Chernoff Vilhauer
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Issue 86