Akin Gump Strauss Hauer & Feld LLP
Akin Gump’s chief claim to fame is its extensive experience fighting patent battles in the notorious Eastern District of Texas; lawyers from across its coast-to-coast network contribute to its ongoing success in this patent litigation hotspot. The International Trade Commission (ITC) is another crucial venue in which the group excels; DC’s Cono Carrano
is a force to be reckoned with in the fast-moving forum, although he also brings the heat in the district courts. Peers deem him “an excellent strategist – much like a chess grandmaster, he thinks through all possibilities before taking decisions”. Clients are also quick to sing his praises: “An experienced patent litigator and strong oral advocate, he develops a good rapport with judges and other counsel. He also communicates well with his clients and does a consistently brilliant job staying within budget.” He is always in the good graces of Samsung, having proven himself particularly adept at quickly and painlessly solving its patent problems.
Alston & Bird LLP
Clear communication, pragmatism, commerciality and a culture of cross-office staffing are hallmarks of the service at Alston & Bird; the combination proves a potent one for clients of all stripes. Home to vibrant district court and ITC patent litigation practices, the DC office has been all systems go of late. Local IP litigation head Scott Pivnick
previously worked in the Department of Justice, where he honed his ability to scope out the most important issues in a case – he never gets distracted by the background noise that can muddle others. As a result, he can secure quick wins for the likes of Amazon.com; he recently went up to bat for the e-tailer to protect its Kindle cover products from infringement claims brought by M Edge Accessories. Jamie Underwood
is a sturdy anchor for the ITC Section 337 practice. She recently got an investigation launched against client Dell by Andrea Electronics moved into the ITC’s 100-Day Pilot Programme; she also forced the plaintiff’s counsel to capitulate in a complaint lodged by Broadqast Solutions. As well as maintaining a bustling practice, she generously devotes her time to teaching, writing and speaking on ITC subjects, and participates extensively in related committees and associations – all of which keeps her up to date on the latest word in policy and practice.
Andrews Kurth LLP
Andrews Kurth focuses on securing commercial advantages for clients through its comprehensive suite of prosecution, litigation and licensing services. While oil and gas is a stronghold for the Texas cohort, the DC unit has a strong biotechnology bent. One of the most dynamic and diligent lawyers around, Ping Wang
is “extremely knowledgeable about all aspects of the life sciences”. She has played a lead role on many inter partes
reviews before the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO), as take-up of these proceedings among the biotech community increases. Her extensive interference experience puts her in pole position on this front; commercialisation is another area of dexterity. Also flexing his intellectual muscle on prosecution, opinion and licensing matters is frequent Wang collaborator Michael Xuehai Ye
. Many Chinese companies maintain a hotline to this perspicacious counsellor, thanks to his cultural sensitivities, linguistic capabilities and technical expertise. His high average allowance rate and ability to connect with examiners have also caught the eye of many US innovators.
Arnold & Porter LLP
When it comes to patent practice, Arnold & Porter has a lot of irons in the fire; companies looking to obtain, monetise and litigate patents find that its expert panel of lawyers surpasses expectations at every turn. The prosecution wing has a new entrant in the IAM Patent 1000
for 2016 in Kristan Lansbery
, a multifaceted operator with many deft USPTO manoeuvres up her sleeve. She is riding high off the back of successful results for Boston Scientific in interference and inter partes
review proceedings. Alongside IP practice co-chair David Marsh
, she has also represented Monsanto extensively in the prosecution of patents relating to transgenic plants. Erudite molecular biologist Marsh is fluent in many a hot area of technology, such as microbiomes, and has steadily been taking market share away from competitors. As clients consolidate their legal service providers, they are seeking young, energetic, committed and hungry representatives, and the litigators here certainly fit the bill. “Premier trial lawyer” Matthew Wolf
“has been doing a high volume of important work recently”; this includes representing GE/Sightsound Technologies in its much-publicised dispute with Apple and securing a judgment in favour of Boston Scientific in a breach of contract action brought against it by G David Jang, who claimed over $200 million in damages. “He’s a superb opener, closer and questioner, and can try a case anywhere. As formidable an oral advocate as he is, he is also really down to earth and one of the few opponents you’d be happy to go out for a drink with after a case is closed.” Transactional mandates are dispatched with aplomb by the “incredibly business-oriented” Michael Raschid
and Susan Hendrickson
: “They know how to help companies get funding and commercialise their technology, because of their deep understanding of both the corporate and IP worlds.” Hendrickson is a touchstone for AOL and Barnes & Noble, which she assists on a host of different transactions.
Baker & Hostetler LLP
Baker & Hostetler makes its debut in the IAM Patent 1000
DC Metro Area listings this year: not only are several of its largest prosecution accounts managed out of the DC office, but there is also a highly experienced – and growing – litigation team on site. Co-leader of the electrical, mechanical and computer science prosecution branch Kenneth Sheehan
takes care of Fortune 50 player Caterpillar and global medical devices concern Teleflex. Clients appreciate his astute approach to portfolio development. With a varied practice, Barry Bretschneider
makes important contributions on both sides of the contentious/non-contentious divide. The influential figure deserves much credit for ensuring that the 2014 merger with Woodcock Washburn panned out smoothly; he has also done much to ramp up the firm’s post-grant capabilities. The recent arrival of Robert Hails
, previously at Kenyon, was a fillip. His procurement and infringement litigation know-how makes him a prime pick for inter partes
review work. William Bergmann
is a frequent fixture at the Court of Federal Claims – his knowledge of the forum outstrips that of any other private practice IP lawyer. He has recently handled intricate actions for L-3 Communications Corp and BoozAllenHamilton.
Baker Botts LLP
Baker Botts has one of the largest IP collectives of any commercial outfit in the United States, and it makes its presence felt from coast to coast. Many of its partners are proficient on both sides of the contentious/non-contentious divide and maintain a diverse practice; while all trainees cut their teeth on prosecution, litigation and transactions. This multi-disciplinary set-up is a major attraction for the firm’s high-level client base, for which patents are pivotal. In practical terms, for example, key points that could be exploited in litigation never go unnoticed, because the lawyers on the case have had granular exposure to patent prosecution. Head of the DC IP section – and chair of a thriving post-grant practice – Luke Pedersen
personifies this approach. CA Technologies calls on the IP savant for just about everything; he really knows its business – a trait which all his clients recognise and appreciate. On his watch, the DC office has grown organically and recruited some fantastic younger lawyers to ensure a bright future, as well as present.
High-end work for select domestic clients is the order of the day at esteemed boutique Banner & Witcoff. It has carved a deep niche in the design patent space, consistently obtaining more of these rights for Fortune 500 entities than any other outfit. “Keen strategic thinker” Robert Katz
is a top name in this regard and a favourite of Microsoft, which has called on him to protect its Surface Tablet and associated accessories; Nike is another long-time patron. The firm’s bread-and-butter utility patent prosecution practice also exemplifies the focus on US-originated instructions. The group has demonstrated impressive year-on-year growth in the number of patents it has procured for elite players such as Bank of America and Comcast. Its practitioners boast insight into a dizzying array of technologies; computer science whizz Ross Dannenberg
maintains a lively video games practice, acting as prosecution counsel for Techland and Wargaming.net
Birch Stewart Kolasch & Birch LLP
Prolific patent filer Birch, Stewart, Kolasch & Birch has one of the most significant inbound practices on the market; sources report that it is a key bridge into the United States for myriad Chinese companies. It effortlessly keeps pace with the latest developments on the post-grant front, as the wealth of information on its dedicated post-issuance website – postgrantproceedings.com – bears out. Litigation and licensing are other strongholds for this well-rounded, Virginia-based specialist IP shop. Charles Gorenstein is a name on the radar of those seeking litigation and deal negotiation expertise.
Blank Rome LLP
Blank Rome welcomed more than 100 lawyers from the now defunct Dickstein Shapiro. This acquisition gives the Philadelphia-born firm a substantial presence in DC. Among those joining the fold were Jeffrey Sherwood
, Jon Grossman
and Donald Gregory
. Sherwood is a trial lawyer with “an extraordinary ability to turn something complicated into something simple. He’s so smart and can separate the wheat from the chaff; he also presents to the court in a very effective fashion because he uses language that people can understand”. Transactions experts Grossman and Gregory have a combined 60-plus years of experience, roll up their sleeves and work hard, getting time-sensitive deals with hundreds of orbiting pieces of intellectual property inked with rare efficiency. They both have patent backgrounds, too.
Bookoff McAndrews PLLC
For many in the prosecution business, the folks at Bookoff McAndrews are “top of the list of people you can trust”. The lawyers at this Finnegan spin-off “have a sterling track record, but practise with a fresh new spirit”; market watchers label the outfit “very cohesive”. Founding partners Les Bookoff
and Roland McAndrews
are “two of the finest prosecution experts in the country”, both “great at serving large companies with the most sophisticated goals”. “Les graduated top of his class at law school and is just extremely bright,” say peers. “You can go about your job with confidence, knowing that your IP portfolio is under his excellent stewardship,” enthuse clients. “Roland is the complete package – he pays great attention to detail and is a team player. He comes up with outstanding patent strategies that really maximise protection.” Sources highlight the pair’s detailed knowledge of medical devices, though both can quickly get to grips with anything in the mechanical and electro-mechanical fields. Debuting in the guide this year is Dinesh Melwani
, a “diligent, responsive and perceptive patent attorney who demonstrates a keen eye for the most successful prosecution approaches”. All three practitioners represent Boston Scientific, managing over 700 pending applications worldwide for many of its business units. Christopher Agrawal
– another new entrant in the IAM Patent 1000
for 2016 – leads patent harvesting, prosecution and value mining efforts for AOL and subsidiaries including Huffington Post, MapQuest and TechCrunch.
Buchanan Ingersoll & Rooney PC
Buchanan Ingersoll & Rooney marries the holistic patent service of a boutique with the resources of a general outfit, to superb effect. A key recent development has been the formal establishment of a post-issuance division; with its extensive re-examination and interference expertise, the firm has always had skin in the post-grant game, but this move will help take it to the next level. Three individuals make the cut on the national post-grant table: Robert Mukai
, Todd Walters
and Erin Dunston
. Chemistry ace Mukai takes charge of the Alexandria office; “Walters is careful and makes sure all his ducks are in a row before taking a position”; while biotechnology group chief Dunston can step into the breach in any difficult situation. “She is so passionate about her job and she gets things done quickly and efficiently, which lowers bills. Moreover, you never need to teach her anything twice, because she has such a good memory.” Clients are “impressed with the support staff she has developed – the associates working under her are all very meticulous”. Walters and Dunston recently joined forces to obtain a judgment on priority of invention against the Carnegie Institution of Washington for the Commonwealth Scientific and Industrial Research Organisation and Bayer Biosciences in a case involving Nobel Prize-winning technology. The firm also stands out for its prosecution capabilities. The mechanical line-up continues to move through the gears, with William Rowland
and Matthew Schneider
in the driving seat. Rowland is a magnet for Japanese innovators seeking insight on US patent law and has authored a book, published in Japan, on the subject. Client service award winner Schneider ensures that the group maintains the highest standards of customer care in his role as IP division chair. Top-level management is the preserve of globetrotting strategist Patrick Keane
; he has done a superlative job weaving together different departments, ensuring that patrons receive holistic counsel. He maintains his regular practice, too, serving as a font of knowledge for marquee enterprises such as Alstom Power; he has developed its worldwide IP portfolio covering a billion-dollar product line and takes the initiative on commercialisation efforts.
Cadwalader, Wickersham & Taft LLP
The favourable outcomes that Cadwalader consistently secures for blue-chip companies in commercially vital patent disputes speak volumes about the quality on offer. The firm acted for Freescale Semiconductor in its mega-dispute with MediaTek over patents directed towards semiconductor arbitration and power management technology; it also fought the corner of Huawei Technologies in its mammoth ITC and district court battle against Apple spin-off Flashpoint Technology. Both of these cases underscore how success at trial has become a hallmark of this leanly built assemblage. “Hands-on lawyer” Alexander Hadjis
took the lead on the matters and drove his team relentlessly on to victory. “Alex is highly professional, responsive, efficient and deliberate with every detail. He communicates frequently and clearly with clients, so you are always fully informed about the progress of your case. He makes sure you understand the strategy and any trends and developments in your dispute. In addition, he honours his commitment to budget control and is very business oriented.” Hadjis brings to the table a deep familiarity with the intricacies of the ITC, although his gift for explaining complex technical concepts transcends any forum boundaries.
Cooley mixes match-winning litigation skills with prosecution and transactional nous in a potent brew that slakes the thirst of many cutting-edge innovators. Broad technical know-how is another strength. Reston residents Scott Talbot
and Erik Milch
are authorities on the medical device front. All-round counsellor and litigator Talbot “marries strong business acumen with IP expertise, allowing him to provide the best strategic advice to clients”. “Milch is a quality lawyer and a genuinely nice human being, too. He is a mechanical engineer by training, but he has a long technical reach and isn’t one of those litigators who is weak on the substantive patent law.” Coming from an electrical engineering background, Frank Pietrantonio
has acted as lead trial counsel in cases involving a multitude of different technologies. “He is a level-headed guy and a reasonable negotiator – you can trust his judgement. He communicates clearly with clients and gives good, solid advice.” Christopher Hutter
can also be found on the electrical side of the practice. Companies seek his wise counsel in situations where crown-jewel assets need reinforced protection. Hutter is a great match for the many start-ups he represents, because he cares as deeply about their technology and business as they do. He is one of those rare technical patent law experts who can build a rapport with the C-suite. Captaining the technology transactions group, Adam Ruttenberg
has seen just about every type of deal going; his gift for exploiting IP assets to their fullest in any situation makes him a hot commodity for emerging companies and large corporates alike. Cooley’s DC office has been growing rapidly in recent years and is home to a buzzing biotechnology and life sciences practice.
Covington & Burling LLP
“Its lawyers are always professional,” report commentators of prestigious DC heavyweight Covington & Burling. “They like to get straight to the point and don’t play silly games,” confirms one peer. “They are easy to work with and don’t let egos get in the way of anything,” adds another. “It does a great job putting together teams that clients will like” by handpicking the most suitable people for any matter from its “deep bench of attorneys”. Quality is the primary focus: “It offers top-notch services across the board.” Litigation is a mainstay for the IP department, which has no shortage of outstanding first-chair trial lawyers to deploy on the combat field. Perhaps best known of these is George Pappas
: “He just has a comfort level in front of the court that very few have.” In October 2015 the firm welcomed Richard Rainey
back into the fold – a move which has supercharged its offering. He returns after a stint at GE, where he served as executive counsel for global IP litigation. Kevin Collins
argues persuasively in district courts and at the Court of Appeals for the Federal Circuit, and is frequently recruited to central roles by the firm’s exceptional ITC unit. Sturgis Sobin
“continues to be a leader at the ITC – he knows the commission inside out”. “He provides consistently reliable advice to his clients”, as does fellow Section 337 investigations master Maureen Browne
. Rounding out the ITC squad is Alexander Chinoy
, a seasoned litigator with all-encompassing knowledge of trade matters. On hand to dispense worldly strategic wisdom in any case is senior counsel Roderick McKelvie
, a former US district court judge with decades of experience on both sides of the bench. Virtually unique to Covington is a dedicated dispute settlement transactions practice. The crack litigation team does a great job instilling the fear of losing in opposing parties, giving peace treaty negotiators par excellence
– such as Stuart Irvin
– a head start when it comes to settling out. Irvin has a faculty for putting disputes to bed globally, which is a major boon for world-leading technology brands. The firm has one of the best technology transactions practices on the East Coast; it is helmed by John Hurvitz
, who also co-chairs the life sciences department. Hurvitz has inked big-ticket deals on most continents and his presence further underpins Covington’s international credentials. The firm invested in the post-grant area long before it became essential to do so; Andrea Reister
, who heads the USPTO trials unit, counts among the leaders for post-issuance proceedings.
Dentons US LLP
International player Dentons has a large cadre of IP and technology partners in its DC office; whether you are looking for someone to prosecute patent applications and build a portfolio, enforce rights or make deals, the group can answer the call. In IP co-chair Song Jung
it has a one-man army – he is one of a select few individuals to be recommended by the IAM Patent 1000
in all areas of patent practice. The former McKenna Long & Aldridge (MLA) man “continues to specialise in prosecution, litigation and licensing and, following MLA’s merger into Dentons, he now has a much larger team of lawyers at his disposal in the United States and globally. The fact that he is on the board helps focus the firm on intellectual property”. The IP mastermind counts LG as a key client and does plenty for the Korean chaebol
, providing strategic counselling and prosecution services in connection with its flat panel display business and battery technology, and litigating mission-critical infringement disputes. Among the most experienced patent litigators on the books is Mark Hogge
, who doesn’t flinch when even the brightest spotlight is trained on him. He is currently acting as appellate counsel for Pulse Electronics on an issue of wilful patent infringement before the Supreme Court. Dentons’ quality legacy prosecution practice was enhanced by the merger with MLA, as it brought individuals such as Mark Kresloff
on board. Kresloff is a mobile technologies connoisseur who works closely with Song on the LG account. The litigators here all appreciate having a robust prosecution band at their back, as it helps to tie them into clients’ businesses and technologies at a more fundamental level.
DLA Piper LLP
DLA Piper has been doing a sterling job in the inter partes
review and covered business method review realms recently – which comes as no surprise, given its dual prosecution and litigation talents. James Heintz
has been scoring points for Oracle in contested proceedings at the USPTO relating to its e-commerce and click-to-call technologies. “Heintz pretty much knows everything there is to know about litigating patents and when you ask him something, he has the answer immediately – he never says, ‘I’ll take a look.’” “He’s an extraordinary lawyer for licensing, litigation and post-grant actions – just an IP bible”. The Reston local concentrates his energy on furthering clients’ commercial objectives – a focus shared by Dale Lazar
in his all-round USPTO practice. “Dale knows patent law in minute detail and is very experienced.” Peers regard him as “an excellent sounding board on anything to do with patents”. The firm’s mission is to provide the full range of legal services to clients and the IP department fulfils this brief in microcosm. Several individuals, such as Heintz and Gianni Minutoli
, are switch hitters who are equally proficient on prosecution and litigation. Specialists such as out-and-out litigators Joseph Lavelle
and Kathryn Riley Grasso
are also on hand. Lavelle can effortlessly navigate the most complex technical minefields and is a leading light on patent matters with antitrust implications. Grasso has more trial experience than many and always makes it count.
Drinker Biddle & Reath LLP
Companies that run into roadblocks at the USPTO routinely turn to Drinker Biddle & Reath – even when they are using another entity for their prosecution. It has a not-so-secret weapon in the form of Robert Stoll
, a sharp trouble-shooter who knows the USPTO as well as anybody; before coming on board, he capped a 34-year government career by performing wonders as commissioner for patents. He frequently lends his expertise on issues such as inequitable conduct and the rules of assignment. Given his role in introducing the legislation, his understanding of the changes wrought by the America Invents Act is matchless and only serves to increase demand for his services. Mercedes Meyer
is another client magnet and a leading name in the life sciences. As sharp as a tack when it comes to solving tricky problems, she can whip out-of-shape portfolios into fine fettle quickly and in a way that furthers the commercial aims of her clients. “Bright, personable and dedicated, she practises at the forefront of the biotechnology industry.” Stoll and Meyer both undertake a tremendous amount of non-billable work, writing and speaking on the most important patent issues of the day – and they do this internationally. Of Meyer, another leading biotechnology lawyer says: “She isn’t just sitting in her office practising – she really gives back to the community and is so involved in the evolution of patent law.”
Fiala & Weaver PLLC
Even though it has become tougher to obtain patent protection in the United States, specialist procurement boutique Fiala & Weaver is going from strength to strength. Technology owners – even traditional volume filers – are more interested than ever in securing really high-quality rights and the detail-rich, strategically oriented output of Thomas Fiala
and Jeffrey Weaver
fits the bill perfectly. As such, market developments have played into the team’s hands. Software patrons in particular love the duo’s ability to stay on top of the case law and the deep post-Alice
playbook they have developed.
Finnegan needs no introduction – it is one of the most celebrated names in the IP world. It leads the field across all areas of patent practice and particularly strongly in the post-grant realm at present. “Finnegan has a repertoire of highly experienced individuals to fill lead counsel and back-up roles on contested proceedings before the PTAB.” They include rainmaker Erika Harmon Arner
, who boasts “brilliant, accurate insights into cases and consistently comes up with the goods”. Together with Michael Jakes
, a “terrific lawyer who quietly and excellently does what he needs to do”, she recently prevailed for SAP America and SAP AG against Versata Development Group at the Court of Appeals for the Federal Circuit in a decision stemming from the first-ever covered business method review proceeding at the PTAB. Tactical wunderkind Thomas Irving
takes his inspiration from the creativity of clients and is one of the market’s true innovators. Also highly rated is chair Barbara Clarke McCurdy
, who practises with the utmost integrity, peers acknowledge: “She’s always straight with her opponents – judges see this and appreciate it.” Like many here, McCurdy is a versatile operator capable of emerging victorious from battle in any forum. Doris Johnson Hines
, Patrick Coyne
and Jeffrey Berkowitz
all fit that mould, too. Hines’ résumé is littered with wins in district courts, the ITC and the Court of Appeals for the Federal Circuit; she is also a top alternative dispute resolution expert. Coyne is an “articulate, forward-thinking, trend-oriented lawyer who carries himself well at the cutting edge”. He can take any IP case – not just a patent action – to trial and win. Berkowitz manages the Reston office and is well versed in all aspects of the contentious process. Litigation section chief Laura Masurovsky
can cross over from areas such as pharmaceuticals and medical devices to computer hardware and software without skipping a beat. As a result of her commercial litigation background, she takes a business-centric approach to IP spats. Concentrated life sciences know-how is never in short supply. “Charles Lipsey
and Bryan Diner
are straight shooters who truly litigate the merits of a case – if you have an issue, you can call them up and they’ll address it in a matter-of-fact way.” Diner makes his debut in the IAM Patent 1000
this year; as does fellow drug litigator James Monroe
, who currently serves as managing partner. Monroe has lately been taking the lead for Otsuka in connection with the ongoing protection of its blockbuster drug Abilify. “He is friendly and easy to deal with, so your researchers can communicate with him without being intimidated. He always gives comprehensive yet concise advice in response to any enquiry and comes up with ideal strategies.” One economic expert who has seen him at play hails his “unbelievable ability to build and bring out the best in teams – he doesn’t need the light shining on him at all times”. With Smith Brittingham
and Eric Fues
on the grind, the ITC remains a happy hunting ground. Fues does many other things at a high level besides ITC actions, and is currently representing Fujifilm in licensing negotiations with Apple over its digital imaging portfolio. Operations continue to proceed smoothly on the prosecution front; the firm files approximately 3,000 US patents and 1,500 foreign patent applications each year, and has more than 220 professionals registered to practise before the USPTO. These stats suggest that, contrary to some reports, it is far from de-emphasising its non-contentious practice. Mark Sweet
partners with marquee companies such as Caterpillar, always interfacing closely with inventors, legal staff and business executives. Charles Van Horn
assists Otsuka on the prosecution of its worldwide patent portfolio. The management and transactional crew, led by portfolio development marvel John Paul
, maintains the high standards set in other departments. Frontline dealmakers include William Pratt
, a go-to lawyer for Toyota; and Brian Kacedon
, a licensing maven with hardened negotiation skills born of litigation experience. Veteran Patrick O’Reilley
, now in a senior counsel position, is still active in the transactions practice as a high-level strategic adviser. No coverage of Finnegan would be complete with mention of its most celebrated lawyer, Donald Dunner
. Sources call him “the most effective appellate litigator in the history of the US patent system – he is really a god”.
Fisch Sigler LLP
Remarkably, Fisch Sigler represents more Fortune 1000 companies than it has lawyers – demand for its hotshot trial capabilities seems to reach a new all-time high every single day. Where many other firms are paralysed by a fear of losing – and putting their client relationships at risk – the compact group here boldly draws lines in the sand for clients whose business-critical products and services are under threat. Genius litigator Alan Fisch
is the brains behind the operation. “Alan can do it all and go all the way. If he’s on your team, you can take on all comers – and kick some serious ass.”
Fish & Richardson PC
Fish & Richardson maintains one of the most dynamic patent litigation practices in the United States and the DC office is home to some seriously potent weapons. Virtually nobody else on the market receives as many ringing endorsements as Michael McKeon
: “He develops cases very efficiently for trial and his broad strategic overview sets him apart as a stellar attorney. He can handle different cases in different venues – and different countries – simultaneously, and is excellent on his feet in court.” Moreover, “he is extremely affable and just a super gentleman all round”. Invariably, when people mention his name, they also bring up Ruffin Cordell
, another superstar with an international reputation. “Ruffin is incredibly charismatic and very engaging in trial – people like to listen to him. His technical and legal understanding is exceptional, and he can adapt quickly to developments as they occur during trial.” Both are heavy hitters at the ITC, but have won grand slams in district courts and at the appellate level. Focusing largely on Section 337 investigations at the ITC is Joseph Colaianni
, a cool head in cases where bad blood exists between the parties. He has been going to trial on the regular recently, building on his already stacked expertise in the mobile handset area. Not even counting the cross-office staffing that Fish does so well, there is a real depth to the litigation squad. New to the IAM Patent 1000
this year is Christian Chu
, “an up-and-comer who is taking on larger and more important roles with each year that passes”. “He is technically very astute, but strategically savvy too – he understands all the right moves to make.” Given the prolific nature of its contentious operations, it comes as no surprise that the firm is also at the vanguard of post-grant practice. Karl Renner
is the driving force behind the group’s PTAB activity and earns respect from all corners of the market. “He is incredibly proficient on the technology and can go toe to toe with any technologist from any background and understand what they are trying to communicate instantly. He also focuses on his clients’ business goals and is effective in getting commercially valuable patents.” Timothy Riffe
unerringly puts his best foot forward before the PTAB’s administrative patent judges, thanks to his litigation and prosecution experience. On the prosecution end, Fish has been doing some novel things of late. Mechanical engineer and medical device sage Phyllis Kristal
is the architect behind the FISHstep programme, which utilises a deferred billing mechanism to help start-ups protect their intellectual property while saving money for those all-important early business moves. In his role as patent group chief, John Hayden
really promotes such innovations. Another obsession of his is the development of efficient prosecution tools which help cut costs for clients; its sophisticated automated practice system enables the team to access files from anywhere, while its FishLink extranet confers the same advantage on those it represents.
Fitzpatrick, Cella, Harper & Scinto’s DC office may sit in the shade of its much larger New York headquarters, but its presence in the nation’s capital certainly should not be overlooked. Its F Street bureau is not only a home from home for its distinguished New York and California patent prosecutors and litigators, but also a permanent base for key group leaders. Justin Oliver
takes the reins of the ensemble’s post-issuance unit, while Edmund Haughey
serves as co-chair of the ITC practice. Both lawyers have broad technical compasses and can quickly tease out the fundamentals and minutiae of many different tech types. They have also both played significant roles on the team that has lately been winning general exclusion orders from the ITC for Canon. Brian Klock
is another name to heed. The former USPTO examiner has expansive patent expertise – a precious commodity for clients in today’s fast-evolving market. He serves as DC managing partner.
Foley & Lardner LLP
Foley & Lardner can do just about anything in patents – it has a varied crew of attorneys from a technical standpoint and operates across the counselling, prosecution, litigation, post-grant and transactional spectrums. It maintains one of the largest IP departments among the country’s full-service commercial players, with over 200 attorneys and agents in attendance; unusually in this category of firm, it has a strong non-contentious practice at its core. As such, it does a terrific job of building prosecution strategies and developing portfolios in a way that takes cognisance of contentious concerns and wider business action plans. Many of its lawyers are fabulously versatile: chairing the DC IP set is Gilberto Villacorta
, who features on the IAM Patent 1000
prosecution and transactions tables. He represents companies in diverse sectors on all aspects of the international protection and monetisation of intellectual property. Featuring on the same lists, and also appearing in the US national post-grant leaders index, is Stephen Maebius
, who draws on his innately commercial outlook to deliver trenchant solutions to virtually any problem. George Quillin
is likewise noted for his finesse in post-issuance scenarios; his interference expertise has helped him easily adapt to the way of things post-America Invents Act. He keeps one eye on prosecution, too, concentrating on mechanical and electromechanical technologies. Courtenay Brinckerhoff
is the roster’s go-to biotechnologist and pharmaceutical expert. She enjoys high standing in the life sciences and commentators applaud her writing, speaking and industry-promoting efforts: “She has an outstanding knowledge of everything that is happening in and affecting the community.” Also not easy to pigeonhole, Pavan Agarwal
is one of the firm’s chief litigators; while companies in many spaces make a beeline to this clear-sighted counsellor, he has won a particularly ardent following in the automotive sector.
Gibson, Dunn & Crutcher LLP
With a phalanx of gifted and determined trial lawyers on hand, global power player Gibson Dunn is a serious contender in the litigation stakes. “Very strategic when it comes to high-end work on cases that might change the law or set new boundaries”, it has steadily been growing in stature in the patent world. Much credit for this increased prominence is due to the passion and endeavour of lawyers such as DC’s Brian Buroker
. “His integrity is above and beyond anyone else’s out there and he is incredibly smart.” Peers call him “a good all-round ambassador for our profession”. The set’s sparkling appellate credentials help draw in the crowds. Mark Perry
has a stellar reputation and is “one of the best oral advocates there is”. He also produces “exceptional written work product” – something for which the firm is known more generally.
Goodwin Procter LLP
Goodwin Procter has an exemplary pharmaceutical patent litigation practice and is widely hailed as “the strongest opponent on the generic side of the industry”. DC’s William James
– who made the switch from Kenyon in Autumn 2014, along with four prominent New York partners – has been a major contributor to the ensemble’s success in Hatch-Waxman litigation and joins the IAM Patent 1000
this year on the say-so of peers, who call him “tremendously skilled”. He recently handled a landmark Supreme Court case for Teva Pharmaceuticals against Sandoz, which was significant not only because it overturned nearly two decades of Federal Circuit practice regarding the de novo
review of a district court’s factual findings in connection with claim construction, but also because it was Teva’s first litigation involving a branded product (billion-dollar drug Copaxone). Fast gaining cachet is a more than robust high-technology practice, manned by Jennifer Albert
and Stephen Schreiner
, among others. Crackerjack trial lawyer Albert and experienced litigator-come-prosecutor Schreiner make a great team: “Accomplished electrical engineers and skilful advocates, they are highly effective in difficult and arcane proceedings. Their preparation is exceptional and thorough, and they know how to overcome adverse circumstances to successfully move a matter to a satisfactory conclusion.” Among Albert’s notable recent successes was an action for ePlus against Lawson Software, in which the Federal Circuit had to set aside its vacation of an injunction and civil contempt sanctions against Lawson following the USPTO’s invalidation (upheld by a different Federal Circuit panel) of the claim on which they were based. Schreiner, meanwhile, has stepped up to the plate for JPMorgan Chase in a covered business method review against Intellectual Ventures, which has filed a series of patent suits against the banking industry. Albert, together with New York’s Mark Abate – who also wins IAM Patent 1000
laurels – kickstarted the firm’s ITC practice several years ago. It received a real shot in the arm when Marcia Sundeen
joined in March 2015. Sundeen is a dean of the ITC Bar and “a superior IP attorney who is extremely knowledgeable about the current case law”. Commentators caution: “You should not underestimate Goodwin Procter’s appellate practice, especially since William Jay
joined from the solicitor general’s office a few years back.” “He is a young guy, but has already argued many cases in the Supreme Court.”
Greenberg Traurig LLP
Things are going swimmingly for Greenberg Traurig in the capital, as Mark Davis
, Stephen Shahida
and Ronald Pabis
really hit their stride. The lively trio made their way here from Weil at the tail end of 2013 and have been firing on all cylinders since. In the past 12 months the tightly knit squad has been performing miracles for Samsung in nine different district court cases spread between the Eastern District of Texas and the District of Delaware. Hyundai, Kia and SK Hynix are other clients which have made serious headway under the group’s direction. Davis was also drafted in to play a key role in the defence of Samsung in a suit filed by Mobile Telecommunications Technologies. “The team is really effective in taking depositions and does an excellent job developing expert witnesses. The lawyers make for excellent overall strategists.”
“Harrity & Harrity is a go-to when it comes to having high-quality patent applications drafted and pending applications prosecuted efficiently. It employs a uniform writing style for applications and responses that is well thought out, and tried and tested at the USPTO – it makes for clearly written, well-organised applications that robustly cover the most important aspects of any invention. It also reduces any rejections that could be attributed to an examiner’s lack of understanding of the invention. The team is very proactive in conducting interviews with examiners, which helps to expedite the allowance of cases. It can quickly and proficiently perform intelligence analyses, which provide real insights into what competitors are doing and how you stack up against them; with this sort of information, you can refine your patenting efforts to best protect your most important technologies.” “One of John Harrity
’s strongest attributes is his fast turnaround time on any piece of work – you never have to pester him as to where a matter stands in terms of completion. In fact, he routinely delivers ahead of schedule, while keeping the quality at a very high level. His squad doesn’t have any weak attorneys from a skill set standpoint – they are all easy to deal with and very clear communicators.” “Paul Harrity
goes above and beyond of his own volition and is very sharp at tracking examiner behaviour, so he can make informed recommendations about how best to proceed. He is absolutely stringent about quality and is very dedicated.” “We consistently get high praise from our inventor community for what he does,” adds one respondent.
Companies seeking a multi-disciplinary team of first-class attorneys with the chops to handle complex global matters would be wise to seek out Jones Day. Such is the integration of its different practices and offices that you cannot talk about the DC office alone; nevertheless, it has sterling IP resources in the capital and can cover a wide swathe of other legal disciplines. Blaney Harper
is a leader in the firm’s ITC practice; utilising his intimate knowledge of patent law, high technology and the workings of the ITC, he comes up with innovative strategies that carry the day. The DC bureau is also the epicentre of a redoubtable appellate division. At the helm of this sits Gregory Castanias
, who has been a point man on milestone Federal Circuit and Supreme Court cases virtually throughout his entire career. Although he has argued a variety of appeals, intellectual property remains a central pillar of his practice.
Jones Robb is a compact group of “stellar attorneys and just wonderful people”. It was established in 2007 by Susanne Jones
, formerly a pivotal member of Finnegan’s mechanical engineering and medical device line-up. “Susie is a bright attorney with a good rapport with inventors and she develops the soundest patent strategies. She is also capable of doing a lot of other things at a high level, including prosecution, opinion work and IP due diligence.” The firm can proficiently handle all things patent related, short of litigation, and provides a tailored service to a mix of Fortune 500 companies and start-ups. Since 2009 it has acted for Sprint, doing preparation and prosecution, as well as invention harvesting; other key accounts include Ford and Intuitive Surgical, which manufactures robotic surgical systems. All patrons pay “a reasonable price for the high quality delivered”.
While some sources may murmur about departures from Kirkland & Ellis, the prevailing view is that “the firm remains extremely busy, getting high-profile instructions from marquee companies involved in big-ticket litigation – it hasn’t missed a beat in terms of the volume and quality of work it is doing”. “Clients view it as being top drawer and in my experience, that does hold true,” comments one peer. “The lawyers there are aggressive and willing to go the extra mile to protect their clients’ interests.” Having earned resounding recommendations from highly ranked peers, Edward Donovan
is promoted to the gold tier this year. “A master of detail, he gets deep into the weeds to know every fact and issue, and how to address them in a way that witnesses, juries and judges can understand. He takes a practical approach and has lots of great ideas on strategy. A superb trial lawyer, he is a pleasure to work with in a joint defence setting.” He recently teamed up with fellow gold-tier member Greg Arovas, based in New York, to represent Samsung in a patent infringement suit brought by Nvidia in the ITC – a crucial suit with up to $2 billion in royalty payments at stake. The veteran of many notable ITC campaigns, Sean Trainor
proved to be an invaluable asset on this one. “Sean is an outstanding guy – a real straight shooter.” “Top-notch trial lawyer” Gregg LoCascio
is another key man in the capital. Known for his assured performances in front of juries, he can be counted on to come through in the heat of the moment. John O’Quinn
has been rising up the ranks fast; no stranger to the inside of a courtroom, he has translated his previous experience serving as deputy associate attorney general in the US Department of Justice into a vibrant trial and appellate practice.
Latham & Watkins LLP
“Latham & Watkins has, over the last few years, done a brilliant job with its brand in patent litigation.” “It has some superb litigators who produce fantastic results in high-stakes cases. They exhibit great dedication and a will to win.” Sources are quick to extol the leadership qualities of Maximilian Grant
, an “aggressive, innovative lawyer who is magnificent in the courtroom”. He captained the IP litigation practice from 2009 to 2014 – a period of exceptional growth. Also “first rate” is Matthew Moore
, a “creative and strategic thinker with dogged determination”. Lawrence Gotts
’ career statistics are impressive: he has handled over 125 IP cases and has proved his mettle at trial – and at the Federal Circuit – many times over. “I am not aware that he has ever suffered a defeat,” remarks one peer. “He can look at a claim once and know what really matters, and can look at office actions and know how to overcome them – he is just a very effective operator.” The firm’s ability to attract and retain some of the legal industry’s elite talent has been nothing short of phenomenal of late. Michael Morin
arrived in February 2015; an expert on pharmaceutical and biologics matters, he is a persuasive option in DC for life sciences clients. “As, insightful and downright clever as they come, Morin is also a natural-born leader.” The firm’s ITC practice is a marvel; several of those mentioned above contribute to the firm’s success in this fast-paced forum, but Bert Reiser
is the sharp point of the spear. “He has the deepest knowledge of the ITC and knows how to do all the things you need to do to run a trial well. He’s smart, practical and very easy to work with, too.” Jonathan Link
has a strong focus on Section 337 matters, but has also lately become a go-to lawyer for PTAB proceedings.
Mayer Brown LLP
“Mayer Brown is a large, impressive organisation, with a lot of solid patent litigators. In DC, it has a particularly strong presence on the mechanical and electrical engineering side.” Clients are all repeat buyers, such are the quality of work and levels of customer service afforded by the conscientious crew, co-captained by veteran litigator Alan Grimaldi
. The ITC faction has been going gangbusters under the stewardship of Jamie Beaber
: “Looking at his numbers and successes, it is clear that Jamie has been doing an incredible job. He has this uncanny ability to handle multiple complex matters at the same time without ever dropping the ball – this is testament to his skills, but also to the strength of the team he took with him to Mayer Brown. He’s top notch, as is everyone at his firm.” Another commentator calls him “a charismatic, energetic and tireless guy, who either wins outright or favourably settles every case he’s on. He’s not the kind of person who leads from on high – he knows what is going on with his cases at a very granular level.” Gary Hnath
is one of the most experienced ITC experts in the country – “he knows the judges, he knows the rules and has done countless cases”. “If he is your opponent, then you’re going to have to work extremely hard.” He is in hot demand among Chinese companies, thanks to his pristine track record fighting their corner at the ITC and in district courts. He recently secured a verdict of non-infringement for Changzhou Kaidi Electrical Co after a seven-day trial in the District of Maryland – the jury returned its decision after less than two hours of deliberations.
McDermott Will & Emery LLP
The full-bodied patent practice at McDermott Will & Emery continues to set it apart from other commercial outfits, many of which merely dabble in intellectual property or focus solely on patent litigation. Its IP group, which is home to more than 100 registered patent lawyers and agents, is steeped in every aspect of the protection and enforcement of intangible rights, and keeps up to speed on all that is happening in the world of patents. Its cutting-edge credentials are on display in the post-grant area, where the hire of Bernard Knight
is really paying off. The former USPTO general counsel played a key role ushering in the America Invents Act and has first-hand knowledge of the post-grant proceedings introduced by the legislation. He recently secured a favourable settlement in an inter partes
review – and a dismissal of concurrent litigation – for oilfield services leader Halliburton against a subsidiary of Acacia, which established an office in Houston in 2014 specifically for the purpose of filing patent lawsuits against energy companies. Paul Devinsky
has also been busy on the post-issuance front within his all-round patent practice. When Ricoh was sued by non-practising entity (NPE) CyberFone in the Eastern District of Texas, he stepped in to hammer out a favourable settlement for the company, having persuaded the judge to grant a change of venue motion based on judicial efficiency reasoning and put in a robust inter partes
review petition. While luminary Joel Freed
brings inspiration, pharmaceutical ace Thomas Steindler
brings leadership to the DC IP litigation squad. He features in these pages for the first time this year: “Clients have a high degree of confidence in his skills as a lawyer and strategist. He has a rare ability to master the details of a complex litigation without ever losing sight of the big picture and to then persuasively convey his position to judges and juries.” He is a crucial asset for Novartis and, alongside colleagues in Chicago, has represented its generic arm, Sandoz, in a string of litigations, including two recent abbreviated new drug application cases in which positive settlements allowed Sandoz to gain early market entry well before patent expiration dates. Novartis is one of many clients which benefit from the firm’s blend of litigation and prosecution expertise. Top prosecutors in DC include Stephen Becker
and Hosang Lee
, who enjoy eminent standing among Korean and Asian enterprises. Their hands-on approach chimes well with patrons such as Hyundai and Kia, which feed them almost 500 patent instructions per year, often relating to the most innovative technologies being rolled out in the automotive industry. Michael Fogarty
handles a similar number of instructions for Panasonic; having started out several years ago focusing on the company’s semiconductors, he now prepares and prosecutes patent applications across a multitude of technologies.
Merchant & Gould
A venerable boutique of over 115 years’ standing, Merchant & Gould has a lot of pull on the national IP scene. A key differentiator is the diverse skill sets of many of its partners: DC’s Matthew Fedowitz
and Jefferson Boggs
are both listed in the IAM Patent 1000
litigation and prosecution tables. They develop strategies for the protection of clients’ crown-jewel technologies that work in practice, based on broad experience seeing matters play out in the USPTO and the courts. Intricate life sciences technologies pose them no problem and the pair have been on the frontlines of some crucial global pharmaceutical patent litigations recently. Boggs Jr adds post-grant experience to the mix, having practised in the arcane interference area for many years.
Morrison & Foerster LLP
Morrison & Foerster’s DC facility is home to key figures within its powerful ITC and appellate practices. “When it comes to Section 337 investigations, you have to note its name – it has Brian Busey
, who continues to be a levelling influence of sorts within the ITC community. He has the ability to remain calm when things get hot, which is to his great credit. He has developed a solid team around him, too.” Commentators line up to praise this stalwart ITC practitioner: “He’s a very careful litigator who knows the ins and outs of the commission”; “he has a knowledge of policy issues that is very important”; “he is a great all-round person, with lots of integrity”. The recent arrival of Mark Whitaker
, who joined by way of Baker Botts, gave the group a boost; he’s another steady hand in the ITC. In Deanne Maynard
, the set has “the current queen of the Federal Circuit”. “Deanne is an outstanding appellate advocate and someone with broad experience across a whole range of legal disciplines, including intellectual property.”
Oblon, McClelland, Maier & Neustadt, LLP
One of the largest boutiques in the United States, Oblon boasts rare insight into the modus operandi
of the USPTO. It is a major prosecution hub tasked by blue-chip technology companies the world over with protecting cutting-edge innovations. The patent procurement practice remains in rude health thanks to the foresight of Bradley Lytle
. As managing partner, he has done a fantastic job keeping the group on the front foot in this evolving market. The assertive examiner-interviewing approach that he has fostered ensures that prosecution efforts are not derailed or stalled by multiple office actions. He also played a key role in the recruitment of former commissioner for patents and trouble-shooter extraordinaire Peggy Focarino, who recently took up a post as senior patent adviser. Managing the electrical and mechanical patent prosecution stable is Philippe Signore
, a master at customising services to suit the needs of different patrons – a corollary of his willingness to literally go the extra mile and visit his many foreign clients on their own turf. He debuts in the IAM Patent 1000
this year, together with Kirsten Grüneberg
over on the chemical and life sciences side. As a former senior research scientist and chemist, Grüneberg has uncommon technical dexterity and has won an ardent following among European and Japanese clients. In the opinion of many, Oblon runs the country’s premier post-grant section; six of its lawyers make the national table this year – more than any other firm. Ex-Deputy Commissioner for Patent Examination Policy Stephen Kunin
“has an encyclopaedic knowledge of patents and is a true professional who won’t take silly positions; judges find him to be extremely credible. From beginning to end, he is a real pleasure to deal with”. Scott McKeown
is “definitely part of the elite when it comes to understanding the legislative, procedural and strategic aspects of running trials at the patent office, and for coming up with unique and helpful solutions to tricky problems”. Clients profess “great confidence in his leadership”: “You can relax when he is handling your PTAB litigation.” He often acts in tandem with Greg Gardella
; Google recently got the benefit of their one-two punch when it filed 14 inter partes
reviews against Rockstar Consortium US LP and MobileStar Technologies relating to telecommunications methodologies and interfaces. They have also recently acted for eBay and Paypal, successfully cancelling all instituted claims in various MoneyCat patents in a covered business method proceeding. Todd Baker
is another “wonderful person”. “He is one of the few young guys with interference experience and he really caught the post-grant wave after America Invents.” Baker learned a lot from Charles Gholz
, a litigation senior counsel and a superstar in patent interference circles. “No list of post-grant experts would be complete without Vincent Shier
’s name on it.” The chemical man is in increasing demand, as players in the life sciences industry engage enthusiastically with the new patent challenge mechanisms. As companies look for those that can handle actions at the PTAB and in district court in a coordinated, consistent fashion, Oblon’s contentious division is building up a head of steam. Under the watchful eye of luminary Arthur Neustadt
, next-generation stars Robert Mattson
and Eric Schweibenz
are on the ascendant. The two regularly unite to give clients such as LG Display, Toyota and Valeo North America the winning edge. ITC dynamo Schweibenz is “growing a brilliant litigation practice in a traditionally prosecution-focused firm, which says a lot about his quality. He doesn’t fall into the style-over-substance camp – he is technically sound and great at working with engineers on the scientific nitty-gritty. He does a great job in court, too.” As a former software engineer and consultant, ITC section chair Thomas Fisher
is another gifted technologist. His industry experience has been a real boon to software companies following the Supreme Court decision on patent eligibility in Alice Corp v CLS Bank International
. Software enterprises looking for further depth find it in the form of computer science maven Michael Kiklis
. Fisher and organic chemistry PhD and Certified Licensing Professional Derek Mason
co-chair a transactions unit that is gathering momentum and further cementing the firm’s status as a true one-stop shop for all things patent.
Paul Hastings LLP
Paul Hastings has attracted some titans of the patent scene to its DC office in recent years and moves up to the silver tier this year as a result. In Summer 2014 Naveen Modi
and Joseph Palys
both pledged allegiance to the prestigious global player, heralding the dawn of a new age of dominance in the post-grant review arena. People think the world of the “calm and collected” Modi, “an incredibly thoughtful guy who presents great strategic options tailored to the business goals of his clients”. “Pioneering and aggressive”, is the verdict on former Finnegan pro Palys; while post-issuance work is his primary focus, he is something of an all-rounder, with a talent for portfolio management and monetisation. In March 2015 the firm swooped on hard-hitting McDermott Will & Emery litigators Yar Chaikovksy and Blair Jacobs
– the former posting up in Palo Alto and the latter taking a desk in downtown DC. Jacobs is no stranger to bet-the-farm litigation between competitors; nerves of steel make him a stirring trial team leader.
Paul, Weiss, Rifkind, Wharton & Garrison LLP
Paul, Weiss, Rifkind, Wharton & Garrison brings comfort when make-or-break issues brew; its culture of intellectual creativity can get clients out of any scrape. The gilt-edged litigators can try any case involving any technology, but really come into their own when cutting-edge innovations are under the microscope. Ready to deploy from the DC detachment are Kenneth Gallo
and David Ball
, both of whom boast substantial, broad-based trial experience, along with finely honed presentation skills. Patent infringement actions giving rise to antitrust concerns are a particular forte.
Pillsbury Winthrop Shaw Pittman LLP
Pillsbury is steeped in intellectual property – it has plied a rich trade in the area for over a century. Its large, international team of IP attorneys, technical consultants and patent agents dispenses a comprehensive suite of services, marrying a thriving prosecution practice with a storied contentious arm; it is one of a select few to earn a place in each DC Metro Area firm table this year. Jack Barufka
is versatility personified; clients such as Bass Pro Shops look to him to prosecute and enforce their patent rights, while others – such as Stanley Black & Decker subsidiary Emhart Teknologies – dial up his strategic wisdom to launch or fend off validity challenges at the USPTO. The eloquent counsellor and co-captain of the IP department is “technically savvy and great at client relations”. Dyed in the wool trial lawyer William Atkins
is another name to note. A “tenacious litigator who will leave no stone unturned”, he has acted as lead counsel in IP suits in the triple digits. Having just written a book on the subject, he has a nuanced grasp of the ins and outs of PTAB procedure. The arrival of Keeto Sabharwal
, who recently joined from Sterne Kessler, adds further depth. Sabharwal is a guiding light on Hatch-Waxman litigations complicated by PTAB proceedings.
Quinn Emanuel Urquhart & Sullivan LLP
“With its brilliant record of success in the courtroom, Quinn Emanuel Urquhart & Sullivan continues to be a formidable force in patent litigation. It has significant resources and can throw waves of super-bright lawyers at a case.” “In DC, it has definitely increased its presence, particularly in terms of visibility at the ITC.” “Practical and efficient” Paul Brinkmann
is the vernier thruster strapped to the Section 337 practice: “He is technically great, very smart and he fits that Quinn mould of being aggressive. However, he is eminently reasonable and pleasant to deal with, too, and won’t fight you over silly, inconsequential points.” Brinkman collaborator Alex Lasher
continues to show off his finely honed trial skills. The two recently joined up with other Quinn VIPs – including Charles Verhoeven and Ray Nimrod – to represent complainant Dow Chemical Company against Organik Kimya in an investigation relating to opaque emulsion polymers; the team secured a 25-year exclusion order against Organik Kimya, which was also slapped with almost $2 million in monetary sanctions.
“A fantastic name in American law”, Ropes & Gray boasts one of the leading post-grant divisions among the country’s commercial outfits. The ace up its sleeve is Steven Baughman
, a prolific yet undefeated combatant in contested proceedings at the PTAB. “Steve is a highly intelligent litigator and strategic thinker, with a perfect command of the law. Whenever he steps in front of the board, he is extremely well prepared.” “He’s especially good at coordinating litigation and post-grant positions, which is incredibly important as the two increasingly intersect.” He was a lynchpin of a large cross-country team of Ropes lawyers that successfully represented Spansion in a headline-hitting series of litigations against Macronix International – one of the biggest recent competitor-on-competitor suits involving four ITC, three district court and 11 inter partes
review proceedings – as well as multiple actions in Germany. Fellow DC partner Paul Schoenhard
also did more than his bit on this one, displaying a flair for coordinating international litigation strategies. Many of the lawyers here can dramatically change the calculus of any dispute in clients’ favour; James Myers
has been doing this for players in the financial services sector for nearly two decades and repeats the trick in PTAB trials and the Federal Circuit. The spirited advocate serves up innovative solutions exquisitely tailored to the commercial needs and disposition of those he represents.
“One that clearly stands out in DC is Rothwell Figg. Its partners, and its associates for that matter, are very impressive – they exhibit excellent litigation judgement and superlative technical ability. The legal writing that you see from them is always exceptional and they argue well in court, too.” For a single-office outfit of its size, it is on the frontlines of a disproportionate number of patent trials; while it can go the distance with confidence and poise, its efficient, cost-effective handling of cases often results in early-stage wins. Litigation practice leader Steven Lieberman
is gold rated for good reason – “he is one of the best trial lawyers in the country”. “He does all the homework he can and is extraordinarily thorough. When he presents to the court, people believe what he says – he doesn’t overreach, but comes across as fair, honest and credible. He’s extremely quick on his feet.” Still a major presence on the scene is luminary and life sciences guru Anthony Figg
. “A class act and top-quality litigator, he has a wonderful intellect and strategic insights. He doesn’t confuse advocacy with argument and is a delight to deal with – someone you can have a fierce battle with in front of a judge, but say ‘Cheers’ over a drink with afterwards.” Sharon Davis
and Joseph Hynds
are other Hatch-Waxman litigation mavens, though they have the technical chops to handle cases involving almost any type of technology. The firm doesn’t just check the post-grant box; it redefines its boundaries. Hynds – with his USPTO registration number and deep district court litigation and appellate experience – is a major contributor here, as are Danny Huntington
and Martin Zoltick
; all three feature on the national post-grant list in the IAM Patent 1000
2016. Huntington has “a lifetime of experience” and is “an icon when it comes to contested proceedings at the patent office”. “He is very cool under pressure – you can’t ruffle his feathers,” say peers. Zoltick is among the most versatile operators in the capital, with a loaded prosecution docket and buckets of litigation experience. Software companies have had to grapple with major developments affecting their business recently and his guidance has been much sought after on this front. Of counsel Nancy Linck
is another weapon in the set’s post-issuance arsenal. As one of the drafters of the inter partes
re-examination legislation and an advocate of many of the improvements that the replacement inter partes
review introduced, she is ideally placed to challenge validity at the USPTO.
Sidley Austin LLP
A stone’s throw away from the White House is another seat of impressive power – Sidley Austin’s K Street office block. The eminent ensemble is a repository of trust for household-name technology companies in times of need, thanks to its sparkling track record in the district courts, the ITC, the Federal Circuit and the Supreme Court. While talent from across its US network contributes to this success, the DC contingent proves particularly eye-catching. For ITC matters, look no further than Brian Nester
; he garners plaudits for his “unflashy, genuine style which judges really appreciate”. Paul Zegger
has come up trumps on some heavy-duty ITC cases in his time and has claimed many a scalp in district courts, too. “Paul is excellent on strategy and knows just how far to push things.” Jeffrey Kushan
guides the DC patent group with a steady hand. Understanding how best to manoeuvre within the Hatch-Waxman system for maximum impact, “he knows how to craft the most persuasive arguments and where exactly to put the focus”. On the post-grant front, “he takes reasoned, well-informed approaches to the problems he is addressing and is a clear, very smart thinker with a lot of integrity”. Carter Phillips
is “brilliant at strategising at the Supreme Court”: “He is excellent at all the procedural wrangling and always comes prepared for the oral argument. He knows in advance what the most difficult questions will be and knows the personalities of his opponents and of the judges – which ensures that smooth, informative discussions take place.”
Steptoe & Johnson LLP
The celebrated ITC section is but one jewel in the glittering crown that is Steptoe & Johnson’s patent practice. It has been winning Section 337 cases for nearly four decades and for much of that time Charles Schill
has been in the driving seat. “An even-tempered, but forceful advocate, he’s got great judgement and real presence.” Steven Adkins
, who arrived in late 2014, also has abundant ITC experience: “He stays on top of everything, without losing attention to detail. He is always willing to listen to ideas and consider different perspectives, but is never afraid to stand his ground in order to get to the desired result.” “He’s one of the few people I have met who deserves to be called charismatic,” adds one client. IP co-chair John Carcappa
is another who can handle business in the high-pressure cauldron of the ITC, though his trial nous finds him in hot demand for district court cases, too. “He is as aggressive as they come and he understands what you really need and want. Service oriented, but also an outstanding substantive advocate, he really inspires confidence and it’s great fun to see him in action.” He has an enviable stable of patrons, including Honda and Continental Automotive Systems; he recently represented the latter, together with IP and antitrust sage Boyd Cloern
, in its tussle over tyre pressure monitoring technology with competitor Schrader-Bridgeport International. Cloern is another popular practitioner: “Boyd sees the big picture and can connect a large number of complex facts and simplify them into an excellent patent story that is easy to understand. He is also fast on his feet and able to provide persuasive answers to any questions he might get asked. Exceptionally capable in depositions, he obtains valuable testimony that ends up not only in the brief, but in the judge’s opinion.” More filings and larger competitor cases define Timothy Bickham
’s year. A committed business partner who puts in plenty of non-billable time for clients, he has a knack for defining long-term commercial solutions. He toughed it out for Huawei against Innovative Display Technologies (owned by hard-hitting, deep-pocketed NPE Acacia) in a seven-patent case relating to LED screens and displays, obtaining a favourable settlement at the end of an intensive mediation. He has also acted as lead counsel for MonoSol Rx in Hatch-Waxman actions against various generic drug manufacturers, including Teva and Watson Laboratories, often catching out opponents with his procedural nous. Vastly experienced luminary Roger Parkhurst
is also on standby for litigants. The prosecution division is directed by Harold Fox
, the IP counsel of choice for august brands such as the Massachusetts Institute of Technology, where he completed his chemistry PhD. Clients call him a “rare breed”, praising his “thorough understanding of your technology” and the way “he keeps on top of other patents in your field”. “His ability to advise on FDA strategy, as well, is of great help.”
“Sterne Kessler has always had a highly sophisticated approach to the practice of intellectual property” – something which has been emphatically demonstrated by its recent work in the post-grant space. “The firm is a trendsetter and has put a lot of effort into being a thought leader on inter partes review and other administrative trials.” Robert Greene Sterne is “a very prominent name in PTAB proceedings”. “He has a deep and rich understanding of clients’ needs and does an excellent job advising strategically.” Also operating at the highest level is Eldora Ellison, a “tenacious competitor with the ability to zero in on the small number of critical issues in the forest of minor issues that arise in a complex USPTO proceeding”. “Her broad experience, coupled with her calm demeanour, makes you feel as confident as you have any right to feel. She’s a great leader, with a vast amount of legal and technical expertise.” Right now, Lori Gordon’s practice is also about 90% PTAB litigation, evenly balanced between representing petitioners and patent owners. “Lori is very sharp from a technical perspective and has a broad outlook as a result of her prosecution and litigation experience – these things help her to obtain great results.” When it comes to district court litigation, “the outcomes she predicts come true”. “Fabulous lawyer” Mark Fox Evens is another contentious don: “He tried other cases starting out, which gave him a great platform for his IP practice. Smart and well prepared, he understands which arguments will have the most impact.” The group here can formulate winning strategies that will protect clients in any forum, including the ITC. Daniel Yonan, who takes the reins of the Section 337 practice, drew glowing notices recently when he represented Laboratorios Silanes in one of the earliest biologics matters before the ITC. Captaining the prosecution wing is biotechnology buff Eric Steffe. His success is mirrored on the electronics side by Donald Featherstone, a master of the art of portfolio creation. Most – if not all – of the partners here transcend basic practice boundaries, however. Featuring on all three individual tables in the DC Metro Area section, “phenomenal attorney” Robert Sokohl best exemplifies this multi-disciplinary approach. “An agile thinker, he identifies the best solutions quickly. He is also a great poker player, which bodes well in this practice area, where every patent is like a bet.” Michael Lee is a “super-reliable and efficient prosecution guru who knows the patent procurement business inside out”; he is also “very smart when it comes to licensing and other monetisation efforts”, and “does a tremendous amount of USPTO contested proceedings”. A colleague of Lee’s in the electronics group, Michael Ray is steeped in prosecution, but today is more of a top-level strategic counsellor; likewise life sciences pathfinder Jorge Goldstein, one of the firm’s eminent founders. Sterne Kessler boasts a market-leading design patents capability to boot; Tracy-Gene Durkin is a confidant of Apple and is responsible for the worldwide protection of its Apple Watch design.
Sughrue Mion PLLC
Sughrue Mion can efficiently handle prodigious volumes of prosecution at an attractive price point. Its proximity to the USPTO – and strong relations with its examiners – makes it exceptionally enticing for non-US companies, particularly the many high-technology concerns from Japan and Taiwan that have become its longstanding partners. Within the biopharmaceutical sector, it has a loyal following of successful domestic enterprises, too. Much of the savvy set’s activity falls under the radar; this may put it at a disadvantage in terms of marketing, but clients love it no end. As an example, it undertakes extensive work as an independent evaluator of standard-essential patents – work which is technically and legally challenging by nature; individuals such as Alan Kasper
– a past president of the American Intellectual Property Law Association – also get busy on the policy front. Those seeking to enforce rights or defend accusations of infringement will never feel short-changed; they can call on any number of seasoned first chairs, including William Mandir
, John Callahan
and Michael Dzwonczyk
. Capitalising on a long history of interference activity, Mandir and Callahan have been leading the group’s post-grant charge, while Dzwonczyk has concentrated on building out a robust pharmaceutical patent litigation capability. Companies keen to create efficiencies by instructing just one partner on all their patent matters congratulate themselves when they sign up Brian Hannon
or David Cushing
; the vastly experienced IP heads are true all-rounders.
With its many technical maestros, the Venable patent team reaps fine critical reviews from clients. “It is well organised and trained, and continuously exhibits superior performance on patent prosecution. For routine matters, its fees are very reasonable and they remain reasonable even on work requiring very special skills; you get value for money and are billed in a way that is transparent. The lawyers follow instructions precisely, but are very proactive, too; in responding to office actions, for example, they pay careful attention to the potential for future litigation.” The prosecution and counselling section is chaired by electrical engineering wizard Michael Sartori
, a firm favourite of Asian companies and IP firms alike. “Dr Sartori always reacts quickly to any request or enquiry, and he promptly takes care of all necessary arrangements – his customer-oriented attitude and clear communication are really appreciated.” “His familiarity doing business with Japanese clients is a major advantage.” Head of life sciences Michael Gollin
is another crack prosecutor with an impeccable track record building valuable portfolios. As a one-stop shop, Venable is also committed to excellence in the commercialisation and litigation arenas. Its transactional unit – one of the strongest and most dedicated in DC – is anchored by William Russell
, Nora Garrote
and Toni-Junell Herbert
. Russell regularly advises GE Healthcare on the negotiation of labyrinthine technology-driven global deals. Garrote co-chairs the national IP transactions group, instilling in her less experienced charges a practical mindset and detailed understanding of commercial law, technology and intellectual property. Herbert knows what it takes for a company to grow and is an ace on strategic acquisitions. Its contentious capabilities got a shot in the arm when litigators Frank Cimino
and Megan Woodworth
joined the firm in early 2015. “Cimino is a member of the patent bar and a first-chair trial lawyer; it’s a good combination – he’s great in the patent office and in the courtroom.” From a technical perspective, he is also “extremely savvy”. IP division chair William Coston
is a resonant presenter with a particular faculty for IP and antirust cases.
Weil remains a red-hot commodity among companies fighting tooth and nail with their arch rivals; thanks to its wealth of courtroom experience, it understands what it takes to win. The team can seal the deal in any forum, including the USPTO – the lack of a prosecution practice has by no means held it back from success before the PTAB. Brian Ferguson
has been tried and tested in district courts, the ITC, the USPTO and the Federal Circuit – and has passed with flying colours. He is currently fighting the corner of Under Armour in a 13-patent district court case against adidas relating to wearables and mobile fitness applications. The national patent litigation co-chair is the firm’s key man in DC, although Anish Desai
is moving up the ranks; thanks to positive client references, he makes his debut in the IAM Patent 1000
for 2016. “Anish has excellent judgement from a legal perspective, which plays well with his strong technical skills. He uses common sense when directing the case strategy, which is unusual for lawyers at times. He can take the lead on key projects – depositions and briefings, for example – in a litigation and ultimately drive things to a successful conclusion.”
White & Case LLP
The lawyers at White & Case demonstrate a rare level of commitment to clients – available 24/7, they are always working towards innovative solutions that satisfy both legally and commercially. The DC patent team, numbering some 10 attorneys, has been smart about exploiting synergies between different practices, leveraging in particular on the firm’s redoubtable competition and trade groups. The latter has helped to give it an edge at the ITC, where Shamita Etienne-Cummings
continues to do great things. The leader of the Section 337 practice is a gifted technologist with mobile telecommunications industry experience on her résumé; she has a pristine record in the smartphone wars that have dominated the ITC’s agenda in recent years. She has also had plenty of district court cases to get stuck into. Together with veteran Jack Lever
, she is acting for TPK Touch Solutions in asserting touchscreen-related patents against major adversary Wintek; the suit marks the first time that TPK has enforced its proprietary technologies used in the design and manufacture of touchscreens and is therefore of vital importance to the company. When new opportunities open up at the USPTO, David Tennant
stands ready to deploy; he also pitched in on the TPK matter, easily defeating his opponent’s validity challenge. The all-rounder draws on deep contentious experience in these situations; he also exercises his skills of persuasion to superb effect when brokering lucrative patent transactions.
Everyone knows that elite set Williams & Connolly actually tries cases – it isn’t there to just push paper and do discovery. “It is the finest litigation shop there is and has developed a cadre of highly sophisticated lawyers who have come to specialise in patents. They are very collegial in the way they approach procedural issues and reach compromises; but when the rubber hits the road, they are extremely tough advocates.” Clients can’t help but wax lyrical about Bruce Genderson
, Adam Perlman
and David Berl
, all of whom feature in the IAM Patent 1000
gold tier. Genderson, who has masterminded the firm’s rise to prominence in the IP space, is “a brilliant strategist and indefatigable worker, with extraordinarily good judgement”. “He commands immense respect from opponents and judges; when he’s on a case, as if by magic, nobody wants to fight over inconsequential points”. Perlman – who, together with Genderson, represents Eli Lilly in matters pertaining to blockbuster anti-cancer drug Alimta – is “smart and persistent”. His performances at the Federal Circuit in challenging situations are described as “extremely poised”. “David Berl is simply spectacular – he wows people with his creativity and intellect.” Facing off against Goodwin Procter (as the representative for Watson Laboratories), he has served as lead counsel for Bayer in several Hatch-Waxman actions recently. While pharmaceutical disputes are Berl’s metier, he can handle any type of technical subject matter with a consummate ease. All of the lawyers here match pure trial skill with “incredible technical aptitude”. Thomas Selby
’s stock in trade is his ability to explain the most complex concepts to those without scientific training. He has been busting a gut on Pfizer’s behalf recently, making a solid contribution to what must now count as one of the premier life sciences practices in the country. Thanks to Kevin Hardy
, high-technology has also become a happy hunting ground for the gilt-edged set. He embodies the firm’s entrepreneurial spirit, which his innovative and commercially progressive clients love.
Wilmer Cutler Pickering Hale and Dorr LLP
“WilmerHale continues to have a strong all-round national patent practice and it has top folks in DC.” At the cutting edge of just about everything happening in patents, the firm can be found on the front lines of every important dispute resolution forum. The DC bureau is home to concentrated ITC expertise in the form of James Quarles
and Nina Tallon
. Peers call Quarles “a lion of the ITC” and sound positive notes about Tallon, too, who “always does an excellent job”. In the district courts, look no further than William McElwain
, a “brilliant general trial lawyer” who is “as smart as they come”. His ability to weave eloquent and ultimately persuasive narratives has been honed over many years tackling a wide variety of IP and other commercial disputes. Highly accomplished lawyer Tara Elliott
is another inveterate winner with experience fighting multimillion-dollar IP and corporate battles. When matters go up a level to the Court of Appeals for the Federal Circuit – and to the Supreme Court – there is nobody better to have on your side than Seth Waxman
, a former solicitor general of the United States. Of course, to succeed in patent litigation these days, you need a post-grant specialist, and David Cavanaugh
fills the brief perfectly. His patent practice is about as diverse as a they come; with his understanding of prosecution file histories and razor-sharp instincts, he is a natural performer before the PTAB.
Winston & Strawn has one of the best ITC practices in the country – partly because Thomas Jarvis
is in the driving seat, but also because he has “an accomplished and supportive team behind him” in the form of Paul Goulet
and Steven Anzalone
. Clients call Jarvis “a terrific lawyer and a highly valued partner”. “Efficient and organised, he keeps his eye on the ultimate goal at all times.” A former senior investigative attorney at the ITC, “he leverages that experience very effectively”; as a result, “he enjoys a reputation there that is second to none”. “Goulet is an agile thinker who can make tough decisions quickly – something a lot of lawyers struggle to do.” Anzalone has served as lead trial counsel for luminaries in the communications industry, including Ericsson, HTC and Broadcom. It is a measure of the importance of the DC office to the firm’s national strategy that the chair of its top-rated complex commercial litigation group, Charles Klein
, takes his seat in the capital. “Chuck knows the case law cold and is very clued into all the latest developments. He comes up with great arguments and counters, and provides forthright advice.” The pharmaceutical and biotechnology specialist is doing all the right things on the client service front, too: “Very approachable, he is available for a consultation at the drop of a hat. He provides his reading of a situation unambiguously and keeps you clearly informed in a timely manner. He also bills very fairly.” He recently prolonged the firm’s winning streak representing generic drug manufacturers by securing victory for Actavis in a case involving a prescription sleep aid sold by Purdue Pharma. Now focusing on PTAB trials is experienced first chair Andrew Sommer
: “He is a former patent examiner and it is continually impressive how deeply he digs into and understands the technical and legal issues. He takes a very balanced view of matters, which holds you back from being too bullish about your chances of success. Drew is someone who lives and breathes patent law.”