Akin Gump Strauss Hauer & Feld LLP
Akin Gump Strauss Hauer & Feld has much more of a national profile than just a local one. A lot of credit for this goes to Philadelphia-based Dianne Elderkin
, a patent litigation alpha and one of the few lawyers to have been inducted into both the American College of Trial Lawyers and the International Academy of Trial Lawyers. Although she has fought – and won – high-profile battles across many industries and technical fields, her recent practice has focused on biotechnology. Highlighting her strategic nous, sources confirm that “she knows exactly what you need to do to be successful in life sciences litigation”.
BakerHostetler’s Philadelphia IP unit is accomplished in all areas of patent practice and serves a sophisticated client base for whom intellectual property is pivotal. Headline clients on the prosecution and transactional side include Johnson & Johnson and Teva, both of which patronised Woodcock Washburn for decades before it was acquired by BakerHostetler. Life sciences buff Joseph Lucci
, a key contact for these companies, is an impressive all-rounder whose advice blends legal and commercial considerations. Responsible for the protection of a slew of other big names besides is electrical engineer Steven Samuels
who, thanks to in-house experience and litigation expertise, provides some of the best-rounded and most considered portfolio advice going. While strategic patent counselling is a clear forte, the set is perhaps best known for its ability to see big-ticket patent infringement cases to a successful close. Dale Heist
, dean of the practice, is an astute behind-the-scenes tactician, brilliant trial lawyer and inspiring leader all rolled into one. Together with Daniel Goettle
, who co-leads the patent litigation group, he recently represented Comcast in the Eastern District of Pennsylvania in a fight with Sprint Communications over text messaging services. With substantial damages at stake and the potential for significant knock-on effects on other litigation between the parties, success was vital here – and Heist and Goettle delivered, securing a finding of infringement by Sprint and a satisfying financial award after a three-week jury trial. Goettle has been on a rocket ride lately, providing on-the-money representation to Comcast in a plethora of other suits and showcasing his post-grant proficiency before the US Patent and Trademark Office (USPTO) by successfully attacking the validity of 91 claims of eight patents that Global Touch Solutions alleged his client Microsoft had infringed. There is a deep bench here, and Steven Rocci
and Henrik Parker
are further worldly wise advocates to instruct with full confidence. Rocci has been in the game for nearly 40 years and consistently demonstrates an eye for technical detail and down-to-earth narrative style. A long-serving IP professor, his ability to teach has served him well in the courtroom. In any forum and on either side of the docket, Parker knows which buttons to push to sway decision makers to his position. He has been included in the IAM Patent 1000
since the first edition in 2012 and, over the years, has received recommendations for his technical chops, commercial sensibility, experience and presentation skills.
Buchanan Ingersoll & Rooney PC
Housing a broad-based squad of lawyers, Buchanan Ingersoll & Rooney’s Pittsburgh office provides a one-stop shop for the discerning rights holder. Thanks to the incumbency of Michael Dever
, this holds true even at an individual level; Dever is recommended on each of the prosecution, litigation and transactions tables – the only person in Pennsylvania with this distinction. Not just a hired gun, he often fills general counsel-type positions for mid-sized companies with no in-house IP capabilities; he relishes the role, as it gives him a chance to exercise his commercial mind, communication skills and industry understanding. In the words of one client: “Michael is an asset to have on side and a true partner. Extremely proactive, he always goes the extra mile and is a great business person, too.” For those with diverse portfolios, the versatile Carla Vrsansky
is a fantastic option; she co-chairs the trademark group and is at home with branding issues. However, she earns her recommendation here thanks to her sterling design patent expertise. Co-chair of the chemical section Duane Stewart
is also a renaissance professional with a practice spanning prosecution and enforcement in patents and trademarks. Impressively, Buchanan Ingersoll & Rooney can boast three individuals on the transactions list, compared to the single representative fielded by other firms. Stepping up alongside Dever are David Gurwin
and Susan Hartman
, each of whom each bring something unique to the table: Gurwin has a nose for the latest technology and business trends and is great at anticipating the direction in which things are heading legally; he can also be creative and improvisational – invaluable gifts given that the law always takes its time to catch up with innovation. The “practical and approachable” lawyer “relates well to anybody”. Hartman, a shareholder in the corporate division with a more straight-edged commercial practice, is a deft risk manager and software ace. When infringement headaches flare up, the best prescription is Lynn Alstadt
, an inveterate problem solver and internationally experienced litigator and arbitrator.
Caesar Rivise PC
Established in 1926, boutique Caesar Rivise is an IP institution in Pennsylvania. Its minimally leveraged structure means that clients have at their disposal a highly experienced, stable and cost-effective team, and do not have to train lawyers on their own dime. In view of this – as well as the group’s creativity, propensity for adding value and commitment to excellent service – many customers stay loyal to the firm. While there is no shortage of patent procurement and portfolio development expertise here, the group shines brightest in pharmaceutical patent litigation. Hatch-Waxman Act litigation maestro Robert Silver
has “unmatched experience” and “a knack for getting results in the most difficult cases”. When it comes to high-tech, innovators continue to seek out Manny Pokotilow
, a senior counsel who has taken the lead on many benchmark litigations.
When the stakes are high, Dechert’s patent litigators carry the day through superior strategic nous and a business solutions-focused approach. Setting the tone as leader of the 46-strong IP litigation group is Martin Black
, a lawyer who stays sharp thanks to constant demand and a diverse caseload. In pharmaceuticals, he fights the good fight for drug originators, while in high-tech he is aggressive and creative on behalf of the many plaintiffs he represents. Although gifted when it comes to the science, Black is first and foremost a dyed-in-the-wool trial lawyer, who gets hired for the amazing finesse with which he explains complex technology to judges and juries. Black and Kevin Flannery
hit the headlines in 2017, winning a seven-to-one Supreme Court decision in favour of SCA Hygiene Products against First Quality Baby Products, which held that the defence of laches does not exist to bar legal damages in patent cases brought within the Patent Act’s six-year limitation period. A respected trial lawyer with a national reputation, Flannery has also been doing great things for GlaxoSmithKline in a number of Abbreviated New Drug Application litigations – including one cross-border suit against Vectura Limited, which has filed a case in the UK High Court and the District of Delaware.
DLA Piper LLP (US)
Rare among full-service outfits with high-flying IP litigation practices, DLA Piper also runs a sizeable patent prosecution operation; there is also lots of interconnectivity (deliberate and natural) between its contentious and non-contentious units, meaning that patent filers can get a comprehensive view on the consequences of their actions. It all makes for a very tight service. Home to prosecution chair Daniel Christenbury
, the Philadelphia office is the engine room of the patent procurement and portfolio management practice. Capitalising on the firm’s global presence, Christenbury has built up an international following – with loyal clients in South Korea and Japan. He always does the right thing by his Asian (and other) clients and consistently goes above and beyond to help them; this might mean taking on their new hires for training purposes and returning them primed and ready so that the client does not lose momentum. Internally, he also fosters close relationships with DLA’s corporate division, which helps to smooth transactional due diligence efforts and serves to enhance his team’s commercial approach to prosecution and the appreciation of patent value.
Duane Morris LLP
Duane Morris started out life in Philadelphia and now, as a hefty international player with more than 800 attorneys, is one of the state’s biggest legal success stories. Flying the flag for its bustling local and national patent practice are two experienced litigators, Aleksander Goranin
and David Wolfsohn
. Goranin is a versatile advocate au fait
with all categories of IP right; on the patent side, he mines a rich seam of expertise in software. Wolfsohn is a fellow of the American College of Trial Lawyers and a born-and-bred advocate with many a big verdict to his name.
A “customer-focused, flexible firm that charges very reasonable rates”, Fox Rothschild is a popular pick – whether for patent enforcement and post-grant representation, IP due diligence investigations, licence negotiations, prosecution or portfolio management. One of the top representatives of its cohesive yet geographically diffuse team is James Singer
, who operates out of the Pittsburgh bureau. The sage counsellor and IP section chair is a lightning rod for praise: “As a transactional lawyer he brings incredible value to an engagement because he is so pragmatic. He’s not an academic type who only thinks of the law – instead he keeps his commercial needs and objectives at the forefront of his mind.” When it comes to acquiring patent rights both domestically and internationally, Singer “partners closely with clients in strategic planning phases while proving incredibly cost effective in obtaining rights. He also manages his team – and foreign associates – brilliantly”. Among the industry leaders he serves so diligently is Xerox.
“K&L Gates is a firm you won’t find lacking in patent litigation ability and, in spite of a fairly quiet year in terms of local case filings in Pennsylvania, it continues to be strong as a national platform.” Pittsburgh partner Patrick McElhinny
has secured over $1 billion in patent damages – in a single case. This was back in 2012 when he co-led a team to a $1.5 billion judgment in favour of Carnegie Mellon against Marvell Technology Group. Leveraging his nearly three decades of trial experience and USPTO registration number, he has done plenty of sterling work since then in a variety of forums, including the USPTO’s Patent Trial and Appeal Board. K&L Gates is also a name to note if you need direction on the commercialisation of intellectual property. A former coordinator of the IP group, George Dickos
comes into his own when there are deals to be done. He is a tidy negotiator whose underlying IP subject matter knowledge ensures that intangible assets and technology receive the requisite care and attention from a transaction’s start to its finish.
Morgan Lewis & Bockius LLP
When companies need someone who understands their products, their business and their industry, they turn to Morgan Lewis & Bockius. The firm has a platform that fosters this sort of 360-degree perspective; its superior life sciences group blends together the expertise of patent, regulatory and transactional lawyers and litigators to help to support the development of many emerging and mid-sized biotech entities. Philadelphia’s Louis Beardell
does a tremendous job bringing it all to bear in order to carve out secure spaces for patrons in highly competitive arenas, including the pharmaceutical, biotech and medical device industries. He is a great example of a strategist who works effectively with litigators in order to obtain defendable and enforceable rights. A great resource in this respect is Eric Kraeutler
, an “exceptional trial lawyer” and fellow of the American College of Trial Lawyers. “If you need a litigator who fights hard and who can harness a certain intensity for his clients, Eric is your guy. Even if he has bad facts, he always seems to have a winning case.” Alongside a piece of bet-the-farm copyright and trademark infringement litigation, Kraeutler is currently anchoring patent actions for BlackBerry. Competitors observe that the firm also has a “legit patent and technology transactions practice”. Enter stage right Peter Watt-Morse
, a Pittsburgh office founding partner and deal broker with over 30 years’ experience.
Panitch Schwarze Belisario & Nadel LLP
“First rate in prosecution”, Panitch Schwarze Belisario & Nadel “does outstanding work, prices it well and takes the utmost care of clients”. The gilt-edged boutique is fastidious about quality and has, as a result, been attracting new patrons in droves. Martin Belisario
has enjoyed a phenomenal year in this regard, his ability to get and keep companies out of litigation acting as a powerful magnet for those that want to conduct business, rather than just fight. The percentage of instructions originating overseas has risen sharply under the supervision of William Schwarze
, a founding partner and head of the chemical and foreign patent practices. He is virtually next to none in Pennsylvania in terms of his experience navigating the USPTO and the ever-changing US patent landscape.
Pepper Hamilton LLP
“Pepper Hamilton is excellent at life sciences transactions. Its team has a deep knowledge of and appreciation for the technology underpinning agreements and is strong on business as well as the law.” A thought leader in the health sciences, Raymond Miller
has inked myriad deals for a diverse clientele. Passionate about innovation and his craft, he is a member of the American Association for the Advancement of Science and has written and spoken on many technical and legal topics.
The Webb Law Firm
Nothing is off limits for The Webb Law Firm when it comes to patents; the eminent boutique offers a comprehensive suite of services and is fluent in all technical areas. Commentators are quick to label it “top for patent prosecution in Pennsylvania” and highlight its “incredible efficiency”; this does not mean that the firm skimps on quality, but rather that it ensures clients spend their money wisely. Its assured handling of issues around the patentability of software inventions is also worth shining a spotlight on. Over a long career, president Richard Byrne
has seen and done just about everything in the world of patents. He is an educator who has dedicated himself to helping rights holders to realise their ambitions and to fostering the development and improvement of IP practice in the wider legal profession. Another key contact is Byrne’s vice president Kent Baldauf
, a seasoned trial lawyer to call when under attack or launching an offensive.