Alston & Bird LLP
Alston & Bird has been established on the West Coast for close to a decade now and in that time it has consistently grown, becoming firmly rooted in the high-tech and life sciences scenes of the region. It recently cut the ribbon on a San Francisco office, putting it in the immediate vicinity of the many local companies it has long represented. It attracts high-level instructions, as illustrated by the practice of Los Angeles-based Jonathan Gordon
, a patent and technology transactions virtuoso in hot demand for life sciences, healthcare and enterprise software deals. As an example of his recent work, he represented biopharmaceutical company Advaxis in a clinical collaboration and licensing deal with Amgen; he has also been doing interesting things around participation in bodies establishing standards for technology powering the Internet of Things. “Jonathan is one of those rare lawyers who do not attempt to lord over you as a client; rather, he genuinely takes the time to understand your business model and needs and your desired outcomes, and accordingly tailors his advice, which he delivers confidently yet respectfully.” Further sophistication can be found in the biotechnology and pharmaceutical prosecution practice maintained by Silicon Valley’s Romy Celli
and Joe Liebeschuetz
. Celli is an assured international strategist with a gift for positioning global drug product patent portfolios on commercial fairways. Liebeschuetz excels at prosecuting biotech patents that can withstand the rigours of litigation and protect clients long term. Companies look to him to get them off to a strong start in the commercial marketplace; Seattle Genetics, which has recently launched its first product – a Hodgkin’s lymphoma therapy – has relied on the genetics PhD’s drafting and prosecution talents, as well as his percipient strategic counsel.
Arnold & Porter Kaye Scholer LLP
Arnold & Porter Kaye Scholer is a national life sciences powerhouse with sterling prosecution and litigation credentials. In California, the recent retirement of biotech patent litigation mastermind Michael Malecek is certainly newsworthy but, with Deborah Fishman
on deck, the ship is still going full steam ahead. “Deborah is extremely bright and has an outstanding ability to marry the science and the law and build up the most cogent arguments.” She has demonstrated this in an impressive five $1 billion-plus cases, which she has litigated through trial. Some of her best recent results have come in the medical device sphere; representing Japanese multinational Olympus Corporation, she has led the defence of an infringement action pertaining to surgical instruments in the Northern District of California and the Patent Trial and Appeal Board (PTAB), winning summary judgment of on-sale bar for one of the two patents in suit, and invalidating the asserted claims in the other patent in inter partes
review. Litigating with equal poise in the high-tech theatre is Michael Berta
, who resides in the San Francisco office. “Technically strong, creative, personable and relatable, he’s an excellent lawyer who runs complex cases well. He is results focused and very budget conscious.” He serves as patent litigation counsel to Google, taking on myriad cases and scoring home runs. In a suit against the company filed by Blue Spike, he obtained a transfer out of the Eastern District of Texas to the Northern District of California, where he earned a complete defence verdict of invalidity, upheld by the Federal Circuit in October 2016 and with certiorari
denied by the Supreme Court in June 2017. Whenever out-of-court dispute resolution negotiations commence, the litigators have a special weapon in Thomas Magnani
, a transactional lawyer with a particularly deft touch in settlement scenarios. Outside of any adversarial context, he works wonders on technology-intensive deals of all kinds and always keeps it classy; he is currently advising Fullpower Technologies on a complex licensing deal to enable MMT to produce Swiss-made horological devices with smart functions but in the style of a traditional Swiss watch.
Baker Botts LLP
A firm with Texan roots and huge experience taking cases to trial not just in the Lone Star State, but across the country, Baker Botts has been building impressive momentum in California of late. Accomplished trial lawyer Wayne Stacy
joined from Cooley in 2016, relocating from Denver to San Francisco in the process, giving clients another lead counsel option and greater firepower all round. As an example of Stacy’s profile-raising efforts – and giving back to the community – he recently created a unique experiential PTAB practice class for UC Hastings. In terms of his client work, he is busy representing Cisco Systems in the state’s Northern District against a former practising entity that has launched an extensive IP enforcement campaign against various technology leaders. Before Stacy’s arrival, there was little in the way of patent expertise in San Francisco – most of it was concentrated in Palo Alto, where Hopkins Guy
and Bryant Boren
reside. When cases look like they are going to go the distance, seasoned advocate Guy is a discerning choice of counsel; he had four trials scheduled in 2017, and while only one went all the way, he is always well prepared, putting him at a distinct advantage whatever route things take. Boren, who really kick-started it all out on the West Coast, brings strong leadership to the firm-wide IP litigation practice. He is a trusted ally to many a household name; one of those is AT&T, for whom, in March 2017, he won a Federal Circuit affirmance of an earlier Central District of California trial win against plaintiff Enovsys, in which a jury unanimously determined no infringement had occurred. Boren has also been defending the company in multiple lawsuits filed by Intellectual Ventures. It is rare for a full-service outfit to have litigation and prosecution depth, but Baker Botts is in that category. Although they are technology experts themselves, the litigators identified above all benefit immensely from the pure technical horsepower the firm has under its hood.
Bozicevic Field & Francis LLP
A staunch protector of quantum-leap discoveries in the life sciences, Bozicevic Field & Francis puts first-order technical and legal expertise at the disposal of its clients, with whom it collaborates on a close, commercial and personal level. Leading the team are Karl Bozicevic
, “an expert like no other at monetising patents” and Carol Francis
, a strategic counsellor par excellence
Dubbed “the best technology law firm in the United States” by foreign associates, Cooley has a glowing international, as well as domestic, reputation. When it comes to litigation, “it shows up a great deal, regularly taking lead roles on some of the fiercest battles”. A warrior in such mandates is Heidi Keefe
, who is “particularly famous for the fantastic work she does for Facebook”. “She is very impressive as an advocate and has stepped up in a big way these past few years. Her day-to-day running of cases is flawless, and it’s not like she needs any help at trial. She has also gotten a lot of great results at the Federal Circuit.” Also a connoisseur of the courtroom, Michael Rhodes
is the other big name on the team sheet. He continues to net vital wins in important cases while also chairing the global cybersecurity, data, privacy and internet practices. Not only formidable in litigation, Cooley is also “the number one life sciences transactions firm on the West Coast – it has the largest roster of clients, does the highest volume of deals, and is technically excellent too”. In charge here is Barbara Kosacz
, who has spent nearly three decades advising diverse companies in the industry at a deeply strategic and commercial level and overseeing their most complex and profitable deals. Flexing outstanding technical expertise in fields such as genetics, Marya Postner
is a go-to for biotech and biopharmaceutical companies as they make tactical manoeuvres. As is the case for Robert Jones
, a 360-degree corporate lawyer and leader in biotech licensing and partnering. Mika Reiner Mayer
continues to impress since she moved over from Morrison & Foerster in 2016. Her metier is patent prosecution and portfolio management, but she is often singled out by life sciences and medical device companies – and their investors – for her due diligence expertise. “Mika is really committed to her work and clients – this is not just a hobby for her. She makes extremely good use of her firm’s resources.”
Covington & Burling LLP
Life sciences transactions and high-stakes technology litigation are the two pillars of Covington & Burling’s West Coast and national patent practice. With respect to deals in the pharmaceutical, biotech, medical device and digital health spaces, Amy Toro
is the best bet for a successful outcome. She is a very experienced handler of all deal types and makes judicious use of the expertise to be found in adjacent practice groups such as M&A. For a world-class litigator, look to Robert Haslam
, a “top trial lawyer” who serves as senior counsel in Silicon Valley. He is a fellow of the American College of Trial Lawyers, which is testament to the respect he commands from his peers and competitors. Partner Kurt Calia
, who previously chaired the patent practice, also brings comfort when C-suite stress levels are high. He litigates with composure in all forums and is at ease with a vast array of technologies.
Dentons US LLP
Dentons made a killer move in July 2017 by swooping on a trio of Morrison & Foerster patent partners, along with a sizeable team of associates, patent agents and analysts. The firm now has a California prosecution practice to shout about, anchored by Peter Yim
, Brian Ho
and Christopher Eide
who each enjoy close relations with high-tech ground breakers from the Bay Area. Among other things, they bring with them extensive PTAB experience, which dovetails nicely with an already extremely robust post-grant practice run by Kevin Greenleaf
, an authority not just on inter partes
review, but also on hot-button topics such as patent eligibility. The prosecution talent here is not all new though; Stephanie Seidman
has used Dentons as a base to serve up perspicacious counsel on patent strategy to biotech and pharmaceutical companies for over seven years; embedded in Silicon Valley, Peter Su
has been doing the same for leading international technology actors for over six years. Suffice it to say, there is a lot of depth to the non-contentious side of the Dentons practice. Meanwhile, the litigation narrative has also been enthralling; the main protagonist Robert Kramer
has an outstanding track record and has been getting new instructions left, right and centre as a result. Winning a set of jury trials for Nistica, and earning plenty of victories for others, lately he has been flat out but never dropped the ball. One of the keys to his success is getting those around him to work collaboratively; he is a master at playing to people’s strengths without pigeonholing them. He also leverages the firm’s global platform judiciously in addressing his clients’ complex international concerns. Another litigator to trust when in a bind is Renzo Rocchegiani
. He prosecutes with assuredness, and is a technical expert and ace advocate all rolled up into one.
DLA Piper LLP (US)
“A big firm with a big patent practice”, DLA Piper is “very sophisticated when it comes to strategy” – something it shows in its litigation, prosecution and transactional endeavours. Clients get access not only to a deep bench of technical experts, many of whom also have prior industry experience, but also a stacked roster of litigators who can try a case with gusto. Leading advocates include Mark Fowler
, the global patent litigation practice co-chair and US chair, and John Allcock
, both of whom have immense courtroom experience. Silicon Valley-based Fowler tried no less than three cases in 2017, acting for household name technology companies in each, and winning those in which decisions have been reached. He also secured a Federal Circuit affirmance of a 2016 summary judgment win, which was a case of first impression addressing prosecution disclaimers made in the course of inter partes
reviews. Nothing throws Allcock off his game – he has seen it all, having been lead counsel in a remarkable 70 jury trials, 40 of them patent infringement suits. In San Diego, stand-out names, alongside Allcock, include Sean Cunningham
and Kathryn Riley Grasso
. “Cunningham is a privilege to work with – he is very thoughtful in his approach and believes in a team effort. He acts very much like an extension of in-house departments.” Strong in life sciences and high-tech – and a connoisseur of damages in patent litigation – Grasso is a truly versatile operator. Just as ongoing patent litigation success energises the entire organisation, so does continued vibrancy in the life sciences sector. Lisa Haile
, who leads the global industry group, serves a dynamic client base that includes a diverse crop of early-stage, pre-public and venture-backed companies, as well as universities and non-profits. It would be an insult to call her just a patent lawyer – she is someone who really gets involved in the business side of things, and keeps clients focused on their strategies and commercial end games. Mark Radcliffe
does the same, but for those operating in fields such as software, the Internet and cloud computing.
Durie Tangri LLP
“The folks at Durie Tangri are incredibly good, ultra-smart courtroom litigators who take a creative, pragmatic approach to cases and who can go up against anyone and win.” Its model is quite distinctive: the firm is not highly leveraged, so the partners are hands on and drive the work; there is no origination credit, so the team is extraordinarily collaborative in a focused, issue-driven way; and it is also more flexible than most when it comes to alternative fee arrangements. Another USP is the thought-leadership role it plays; particularly with Mark Lemley
in the fold, it is right at the heart of the global IP discussion. Lemley is the William H Neukom Professor of Law at Stanford Law School and the director of the Stanford law, science and technology programme; he has written multiple books and many articles and is one of the world’s most cited legal scholars. The team is also constantly looking for ways to improve the way it operates; this is particularly the case for Silicon Valley elite Daralyn Durie
, who lives up to the highest standards in her advocacy and client service. She and fellow senior trial lawyers Ragesh Tangri
and “phenom” Clement Roberts
have all “done a terrific job investing in the younger generation of trial lawyers”. Rising stars include Sonali Maitra
, who has a strong following in the video game industry, and coder Joseph Gratz
, an IP all-rounder but a force on patents who understands, at the deepest level, how the Internet works. Also young, but entering her prime now, is Sonal Mehta
, who leads high-stakes cases for Microsoft, Facebook, Twitter and many others.
Proficient at prosecuting patents in the United States and in Europe, and litigating cross-border UK-Germany IP disputes, EIP is a unique set-up. Leveraging the firm’s transatlantic capabilities, the team in San Diego addresses international IP issues with aplomb, but is also well placed for domestic affairs, such as litigation over validity in front of the PTAB. However, the set earns its IAM Patent 1000
laurels thanks chiefly to its sterling prosecution credentials. Mallary de Merlier
“gets on famously with business managers and engineers alike and does super high-quality drafting work” in the medical device space. Bob Blair
, on the other hand, focuses on the mobile and gaming industries and calls on his extensive in-house experience to give clients an ultra-precise commercial service. He joined EIP from Unwired Planet, where he was the sole US patent attorney with responsibility for prosecution strategy and the development of a portfolio of over 2,500 patents.
Fenwick & West LLP
Fenwick & West lives and breathes technology and maintains a uniquely qualified patent team to service the total needs of cutting-edge innovators across all technology-based industries. The prosecution and strategic counselling wing of the practice has had a bumper year in terms of attracting instructions and interest from companies particularly on the East Coast and in the Southwest who feel that their local markets are lacking in the sort of strategic, business-focused counselling Fenwick & West is in pole position to provide, and has long given to Silicon Valley’s best. Many of these come calling for IP group chair Rajiv Patel
and patent division captain Michael Farn
, who are absolutely in tune with the future of technology. “Rajiv and Michael possess the deepest understanding of the law and are great at giving clients sanity checks around issues such as patent eligibility.” Together they serve as strategic counsellors and prosecution lawyers for Synopsys as it manages and grows its substantial portfolio. “Rajiv in particular is a thought leader who does much to add to the general body of knowledge that Silicon Valley patent practitioners share.” The firm is well known for its Facebook work, at the forefront of which are Robert Hulse
and Antonia Sequeira
. Hulse is “the patent attorney’s patent attorney” and “an oracle of the patent office who is highly creative in terms of strategy”. “Bob is very thorough at helping uncover prospective business models in which inventions could operate – his inquisitive nature enables the identification of new approaches which you would not have previously thought of. He knows how to add the most value to your business and is a responsive and approachable lawyer who articulates things clearly in ways that non-legal professionals can easily understand.” Sequeira undertakes extensive work in the biotech and medical device sectors, which are happy hunting grounds for a wider set of lawyers which includes Daniel Becker
and Michael Shuster
. A doctor of medicine, Becker does superlative work for biotech and pharmaceutical companies at every stage of the patent lifecycle; Shuster, who co-chairs the life sciences industry group, is known as a start-up sage. Also recommended for prosecution are John McNelis
, a former managing partner and patent practice chair and touchpoint for computer software and hardware and automotive companies. As is LG Display patent counsel Jae Won Song
, a multi-talented operator who can be found at the cutting edge of technology, including matters concerning blockchain and the Internet of Things. With Jake Handy
exercising command and control, the firm continues to make light work of the most complex IP and technology-driven transactions. Handy, who focuses on acquisitions and licensing deals in the life sciences, “possesses top legal skills but, above all, is a really good people person who can get into the headspace occupied by his clients. He is a great negotiator, too, as he can articulate and defend his position in a way that is inoffensive”. Key cogs in his group include Stephen Gillespie
, a top-drawer technology and M&A lawyer who smoothly runs the biggest acquisitions for Cisco Systems; Lawrence Granatelli
, a go-to for the most challenging licensing deals and someone who can write and monetise patents at the highest level; Stefano Quintini
, “one of the top emerging technology and IP transactional lawyers” and someone with “a superb skill set and deep knowledge” in digital health and, adjacent to that, in privacy; Ralph Pais
, an M&A support pro and service-delivery innovator who oversees transactions for serial-acquirer Facebook; and David Hayes
, a copyright guru who also loves the nitty gritty of patent work. It has been a tumultuous year in the post-grant area in the United States, but staying abreast of all decisions as they come out, and paying close attention to associated trends, Fenwick & West has been excellent in both trusted adviser and counsel roles for clients. The side’s PTAB practice is led by Stuart Meyer
, a creative lawyer adept at sewing up holistic legal, technological and business solutions. When it comes to litigation in district courts and other forums, the team knows how to hurt non-practising entities if they come after you. “A consummate professional, David Hadden
understands how to win against patent trolls.” Whatever the nature or identities of the parties though, “he is a fantastic litigator”, with a “clear, direct communication style that supports effective decision making”. “He combines a deep substantive understanding of a wide range of technologies with a strong command of the law, writes and speaks very effectively and plans well for trial. When he gives advice, it is understandable, easy to digest and actionable.” Chairing the patent litigation group, which encompasses more than 50 litigators, Michael Sacksteder
is another authoritative advocate who completes the set.
Fish & Richardson PC
“By far the best” and “an IP powerhouse”, Fish is an organisation that marquee technology companies turn to when there are big problems to solve and worldwide IP campaigns to run – it has the resources, bench strength and experience to cover the horizon. Among a tremendous number of other things the firm does at the highest level, it furnishes patrons with percipient advice on China – a market which every man and his dog is looking at right now. Michael Headley
has battled through several ground wars there, so companies turn to him when they want to rattle sabres. Headley serves as managing principal of the Silicon Valley office and is on the frontlines of some of Fish’s biggest cases; he recently showed what he can do winning a $146 million award for his client Power Integrations, whose patents were found to have been infringed by Fairchild Semiconductor. Because Fish puts in so many courtroom appearances, it can analyse disputes through a trial lens and focus on building stories rather than just bureaucratically checking lists. You can always count on “fantastic trial lawyer” Juanita Brooks
for a performance of great éclat
: “She is supremely organised, extremely tenacious and can break a witness down on cross like no other. She builds an amazing rapport with jurors – they immediately like her and are drawn to her.” She and life sciences marvel Jonathan Singer
successfully wiped out a $200 million jury verdict against their client Gilead Sciences after proving Merck & Co forfeited its right to assert its hepatitis C drug patents against Gilead due to unclean hands; this was in 2016, but further developments in the dispute came in 2017 when Merck was ordered to pay $14 million in attorneys’ fees. The litigators have an army of prosecutors and technical experts at their back, which is as instrumental in their success as are their advocacy skills. Having practised as a litigator, Hans Troesch
is well placed to provide support, but that is only one of his talents; he is also a trusted international strategic counsellor to innovators principally in the field of information technology.
Gibson Dunn & Crutcher LLP
A-list international player Gibson Dunn & Crutcher has what it takes to clinch victory in the toughest patent battles between competitors over peak territory in the technology and life sciences industries. Some of its heaviest hitters are stationed on the West Coast, including William Rooklidge
, a “top-drawer, spectacular lawyer who inspires confidence”. “He has a fabulous analytic brain and is incredibly smart and articulate, but he doesn’t talk down to people – he pitches and times his advice just right.” Co-chairing the 125-lawyer strong national IP group is Wayne Barsky
, who litigates must-win cases on either side of the docket and virtually without limits in terms of the technology at issue. When he and Josh Krevitt
team up – as they did to defeat Jawbone at the International Trade Commission (ITC) on behalf of Fitbit – followers are treated to a fireworks display. Krevitt never beats around the bush and pursues client-defined wins relentlessly. During the decade or so in which he has been with the firm, he has taken its patent litigation practice into the stratosphere. It is a virtual inevitability that, on the transactional side, Carrie LeRoy
will do the same thing. She recently joined from White & Case, giving Gibson Dunn a top-tier IP and technology deal maker.
Goodwin Procter LLP
Having considerably amped up its California patent litigation practice in recent years, through astute lateral hiring and by establishing a presence in Silicon Valley, Goodwin Procter is now most definitely in the conversation for lead counsel roles on headline patent disputes. Under the spotlight of the press, Brett Schuman
, Shane Brun
and Neel Chatterjee
have been representing Otto Trucking and Anthony Levandowski, the star engineer at the centre of the voraciously covered dispute between Waymo and Uber over autonomous vehicle technology. The arrival of Schuman and Brun in 2014 was the turning point for the firm in California. Schuman has been on a rocket ride lately and, in addition to his work for Levandowski, has also garnered attention for his representation, alongside DC’s Jennifer Albert and Willy Jay, of Unwired Planet against Google in the Federal Circuit challenging the PTAB’s invalidation of a patent in a covered business method review; the Goodwin team successfully argued that the PTAB has no authority to review a patent claim just because it could be used in ways incidental to a financial transaction, earning the first appellate decision cutting back on eligibility for covered business method review. Brun has also been in the thick of things of late and putting on a great show for his clients, who call him “one of the best problem solvers in the patent litigation arena”. “Shane is smart, pragmatic, tactical and always concerned about costs, outcomes and strategy. His demeanour always opens doors to negotiations even in the most difficult of fights, while his brilliance and deep command of the law enable him to outperform opponents. Having him on your team is 100% additive.” Premier trial lawyer Chatterjee has settled in well following his 2017 move from Orrick. He has lots of stuff on at the moment – all of it high profile – and has been representing Facebook in its dispute with Power Ventures over internet scraping, pushing boundaries in the area of unauthorised internet access in the process. Another of the firm’s main IP draws in California is its proficiency engineering and executing life sciences transactions. Responsible for this practice is Karen Spindler
, who turns heads with her assured handling of the most technically complex and commercially nuanced deals.
Greenberg Traurig LLP
With patent litigation filings down, firms have to understand technology, appreciate their clients’ business objectives and be proactive, efficient and highly cost-effective – Greenberg Traurig is all these things and has stayed competitive as a result. A flourishing Hatch-Waxman Act litigation practice, run by Scott Bornstein out of New York, is an important driving force for the set, but folks out in California, such as Jeff Joyner
, are certainly pulling their weight too. An experienced litigator and deal broker, Joyner has had a ton of cases on his desk this past year; he has a particular faculty for winning quick dismissals, saving companies such as Sony Computer Entertainment, PepsiCo and Frito-Lay money and enabling them to focus on business. Given his versatility as a trial lawyer, Nicholas Brown
is also constantly called on.
Haynes and Boone LLP
Outside of its Richardson, Texas office, the largest concentrations of Haynes and Boone’s eminent patent professionals are in Orange County and Palo Alto. In recognition of the prestigious client base they serve, and of the gold-standard patent protection advice they provide, the firm makes its debut in the California chapter of the IAM Patent 1000
this year. Executive committee and board of directors member Tom Chen
is a lodestar for large clients such as Qualcomm and PayPal, for whom he does ongoing prosecution and portfolio management and development work. For these, he supervises hand-picked teams of attorneys and agents and exercises a hawk’s eye for quality; as a result, a consistently high-standard product is sent their way. He is also great at charting the most commercially advantageous courses for start-ups and getting them maximum bang from every buck they invest in their technology.
Hickman Palermo Becker Bingham LLP
Hickman Palermo has “amazing technical expertise with respect to software” and in computer-related technology more broadly. Embedded within the Silicon Valley DNA code, the San Jose set is “fully up to speed on the latest techniques in prosecution”, and “does an excellent job training its staff to keep them at the cutting edge”. When it comes to IP strategy in the IT domain, “Brian Hickman
is a thought leader who generously shares his expertise by speaking on patent law and publishing articles”. He leads the firm together with Christopher Palermo
, a patent aesthete with a fine-grained understanding of the risk tolerance of his clients.
Irell & Manella LLP
Irell & Manella commands immense respect as a top-flight patent litigation shop. As testament to the quality of its forces, its managing partner, Andrei Iancu, was recently sworn director of the US Patent and Trademark Office (USPTO). His loss is significant but, then again, “the firm has a lot of extremely skilful and experienced lawyers and has never been dependent on just one or two names”. Litigation group chair Morgan Chu
, who has set many litigation benchmarks in his time, life sciences aficionado David Gindler
and IP renaissance man Gary Frischling
are all repositories of trust. The Irell list of talent goes on: executive committee member Benjamin Hattenbach
brings measured intensity to big-ticket high-tech and life sciences suits; Ellisen Shelton Turner
is “an outstanding person and a top lawyer who is just wonderful with clients”; and Jason Sheasby
is “a great young partner who more than deserves all the recognition he gets”. You cannot be a leading patent litigation practice now without being in good shape on the post-grant front and, with former chief administrative judge of the PTAB Michael Fleming
on board, the set is fortunate to have the inside track on the ingredients that go into USPTO litigation success.
An international full-service firm and a master of all trades in patent practice, Jones Day enjoys a great deal of cachet among cutting-edge global innovators. In litigation, “it can handle the largest competitor disputes very effectively” and is “benefiting from consolidation towards those at the top end of the legal services market for such cases”. However, it has always been a frontrunner for challenging life sciences spats and has a constellation of stars in its biotech and pharmaceutical litigation group across the nation – and throughout its transactions and prosecution divisions, for that matter. Out in California, the litigator to keep on speed dial is Anthony Insogna
, a seasoned trial lawyer who possesses an intricate understanding of the commercial foundations of the drug industry and, therefore, the business interests of his clients. He recently successfully defended AbbVie and its therapeutic antibody Humira – the top-selling drug in the world – in five inter partes
reviews brought by Coherus Biosciences. For companies looking for a consummate deal maker to sew up commercial contracts or to get the best out of settlement negotiations, John Wehrli
and Thomas Briggs
are the go-to guys. Having been in the game for over three decades, Wehrli plans and executes transformational deals with precision; his clients head into tense negotiations with swagger when he is by their side. Co-leader of the licensing and technology transactions group, Briggs brokers global deals on the daily. Meanwhile organic chemistry PhD and former senior research scientist Dale Rieger
is there to manage a patent throughout its lifecycle; he also provides critical support in litigations and due diligence exercises. Celgene tasks him, alongside a large Jones Day team, with guidance on its global patent strategy for its key approved and clinical-stage drug products. For high-tech cases there are also several seasoned advocates on the Jones Day deck, including “charismatic first-chair trial lawyer” Greg Lanier
and Krista Schwartz
. Admired as an “extremely well-organised lawyer who is on top of the finest details” and “a litigator who knows how to be effective without being bombastic”, Schwartz makes a well-deserved debut in the IAM Patent 1000
this year. She recently obtained a rare Federal Circuit reversal of a PTAB decision for Synopsys.
Kasowitz Benson Torres LLP
Kasowitz Benson Torres has a young and aggressive group of patent litigators that has been generating phenomenal results lately. Fearless and creative, they often resolve cases quickly, leaving clients impressed with the collaborative way in which the relationship-oriented team works with them to achieve business goals. Without a bloated administrative infrastructure, the firm can set up lean teams and offer competitive and flexible pricing. Managing partner of the Silicon Valley office Jonathan Waldrop
acts for a host of blue-chip technology entities, including Google, on whose behalf he recently secured a rare writ of mandamus
paving the way for the transfer out of the Eastern District of Texas of its dispute with Eolas Technologies over a patent covering methods enabling internet users to interact with online content; this is the third case in which Kasowitz has served as lead trial counsel for Google against Eolas. With him on this matter was “up-and-coming star” Darcy Jones
, who debuts in the IAM Patent 1000
this year thanks to excellent work and references. “Darcy is smart, conscientious and responsive. She has deep technical and legal knowledge and is a highly effective negotiator who never fails to impress.”
Keker, Van Nest & Peters LLP
“Keker, Van Nest & Peters is an incredibly efficient trial machine. It has amazing lawyers at every level who have gone the distance multiple times – they know exactly what they are doing at trial, put in a superlative effort and net fantastic results.” “They also work very effectively in a team and invite everyone into the process to put together a complete case.” The talismen and undoubtedly two of the top advocates in the country – in any legal field – John Keker
and Robert Van Nest
inspire a solid crew of pros. Matthias Kamber
litigates with panache across the IP spectrum, but has a particular faculty for complex patent cases; building credibility from the moment a suit is filed, he develops clear trial themes and compelling narratives. A trusted confidante of many C-suites, Christa Anderson
blends antitrust, consumer, commercial and IP litigation expertise; as is the case for Asim Bhansali
who knows what tone to strike in any forum. A lawyer’s choice – he has defended law firms from accusations of malpractice – David Silbert
also enjoys a glittering reputation among in-house counsel for his polished courtroom performances and astute strategising behind the scenes.
Kilpatrick Townsend & Stockton LLP
With its robust portfolio management and litigation practices, Kilpatrick Townsend can provide some of the best 360-degree patent support to clients. The set is resource-rich, to say the least, with a national group that includes more than 200 USPTO-registered pros, and 50 PhD holders. Managing its San Diego office, William Shaffer
is a key contact out in California, especially for internet, software and semiconductor companies. As well as managing portfolios and solving problems for his clients, he offers vital assistance to many of the firm’s litigators. Steven Moore
is one of the best of those and an ace at coordinating international enforcement and defence efforts. He has seen plenty of courtroom action and has a number of eye-catching jury verdicts to his name.
“Tenacious and sophisticated” is the verdict on patent litigation powerhouse Kirkland & Ellis. “It has an amazing breadth of talent and can tackle the biggest cases head on. It undoubtedly remains a top competitor.” One of the best double acts in the organisation, Adam Alper
and Michael De Vries
have been tearing it up, achieving multiple victories for Cisco Systems against Arista Networks in the ITC and fighting against a non-practising entity on behalf of Intel. “Alper is doing a really nice job building the firm’s California practice – he has good business development skills. Clients love to deal with him, because he’s easy to get along with, and great in the courtroom.” Luke Dauchot
has first-chaired over 20 trials and acquits himself with distinction in district courts and the Federal Circuit. It is not uncommon for him to be asked to take over cases that are going south – he turns them around with sharp tactical thinking, diligence, speed and focused aggression.
Law firms used to be collectives of interchangeable people, but now verticalisation, particularly in the IP space, is required if an organisation wants to be truly exceptional; crucially, “Knobbe not only does fantastic work but can always find a natural fit for whatever technology you are trying to patent”. “It really is the big player on the block in California and is hard to compete with.” “An extraordinary firm, it shines for its technical prowess and legal acumen, all the while being very service-minded.” The set is “formidable in the medical device industry” and runs the largest specialised team in the country with approximately 65 professionals. The fulcrum around which the side turns is Gerard von Hoffmann
, who advises early-stage companies at a deeply strategic and commercial level. The firm is also a force to be reckoned with in the life sciences, where Salima Merani
, Mark Benedict
, Kimberly Miller
, Joseph Reisman
and Joseph Mallon
all do different, but wonderful things. Merani is “a really fine drafter with rock-solid prosecution skills” who can also keep up a sprinter’s pace in the transactional and due diligence area without breaking a sweat; in April 2017 she was working around the clock to seal seven simultaneous diligence deals, but she got it all done and lived up to her own ridiculously high standards. IP asset manager Benedict has a biology PhD and lab experience, enabling him to talk shop with inventors at pharmaceutical and biotech companies. Doctor of chemistry Miller steers the firm’s international department with a deft hand and is a whizz at safeguarding innovations in foreign lands; she does not do too badly at home though, and has, for example, been capitalising on various accelerated USPTO programmes to obtain key protections for private drug discovery company Kalyra. Another chemistry PhD, Reisman leverages his trial experience to prosecute patents that can withstand the rigours of litigation and is extremely astute in counselling his pharmaceutical clients and narrowing their risk profile. Polymer science PhD Mallon, who spent seven years as a research scientist in the aerospace and chemical industries, took the lead obtaining the NASH patent portfolio for Nitto Denko, which they licensed to Bristol-Myers Squibb for a reported $100 million, although this could reach $800 million by the time options are exercised and milestones met. Michael Fuller
takes charge of the biotech section and does pretty much everything except go to court; in doing deals with big pharmaceutical companies, he never loses his passion for the underlying technology, even in the closing stages of year-long negotiations, and is exceptionally creative in overcoming roadblocks without handing away his clients’ advantages. Knobbe has “an amazing prosecution programme all around” and operates right at the bleeding edge of the high-tech world. This is the domain of several standouts, including John Carson
, John King
, Adeel Akhtar
and Ronald Schoenbaum
. Like their life sciences counterparts, they have complementary practices, but unique skills and attributes. Senior Silicon Valley partner Carson, for example, has a deep knowledge of IP protection and management in European and Asian markets, and gives his time and insight generously to technology associations and entrepreneurship clinics. King, who chairs the prosecution committee, has a strategy for protecting any commercial niche whether on behalf of a start-up or an established company with an unwieldy portfolio. San Francisco managing partner Akhtar puts on informative seminars for technology companies; he is always looking to add value beyond the immediate concerns of a particular client or particular file. An IT and medical electronics sage, Schoenbaum comes in for particularly loud applause: “Ron is one of the very best patent experts in the software space – his technical background, deep knowledge of patent procedures and case law and his unique claim drafting strategies set him apart. He works well with inventors in getting them to call out the various embodiments that an application could cover. The portfolios he builds can defy the toughest testing in the federal courts.” In a market in which there is much lateral movement – an effect of a downturn in patent litigation filings – Knobbe offers consistency; not only does this give it tremendous institutional knowledge of clients, but also enables it to assemble the same teams for repeat litigation, creating efficiencies. The firm’s technical depth, which the above is just a snapshot of, is also, inevitably, another major advantage and particularly so for post-grant work. High-technologist Brent Babcock
, who brings strong leadership to the PTAB practice, understands everything that can happen after issuance, thanks to years of interference experience and intense engagement in inter partes
reviews. Eli Loots
has a special gift for developing tight post-grant strategies in the biotech area. The depth of the trial bench at Knobbe is more impressive than people give the firm credit for: Irvine-based advocates Jon Gurka
and John Sganga
can litigate any IP case and emerge victorious; Irfan Lateef
is one of the most experienced trial lawyers in the ITC; and Karen Vogel Weil
is an authority on patent damages. However, the most nationally recognised name is Joseph Re
, who is not only a top trial lawyer, but also a leading appellate advocate.
Latham & Watkins LLP
“Latham & Watkins has done a great job cherry picking the right people from competitor firms and has really grown its IP team in recent years. Full of smart, talented lawyers, it is definitely a major player in high-end patent litigation and gets picked on war of the world-type cases routinely.” “Douglas Lumish
was the marquee acquisition for the group. He’s a practical guy with an easy-going, matter-of-fact style which gives him immense credibility with judges and juries.” He has what it takes to turn around losing situations, which he recently showed in leading a successful defence of Arista Networks in ITC litigation against Cisco Systems. By way of background, Arista, with another firm, had lost an ITC case brought by Cisco back in 2014 that prevented the import of its network switches into the United States; it modified these following the case, but Cisco claimed it did not go far enough, kicking off the second dispute. Lumish and company did their thing and received a decision that found no infringement of Cisco patent claims by Arista. There are several others capable of accomplishing similar trial feats here; Ron Shulman
has a towering reputation and is a fellow of the American College of Trial Lawyers; Julie Holloway
, who played a key role on the Arista work with Lumish, is responsible for many textbook-worthy cross-examinations; Jeffrey Homrig
has enjoyed notable successes against Intellectual Ventures on behalf of several companies; and supplying in-house and engineering experience, Richard Frenkel
applies his broad commercial and technical perspective to litigate challenging cases without any hiccups. Latham is also “really committed to its technology transactions practice and has wisely invested in growing it”. In Anthony Klein
it has a “brilliant leader” and “consummate professional” who “knows how to guide clients through complex transactions”. “He stays calm, is a supremely effective litigator and someone who people really enjoy being with.”
Lowenstein Sandler LLP
Lowenstein Sandler treats large technology companies and cool start-ups to a sterling patent protection service and, as a firm, makes its first appearance in the IAM Patent 1000
California chapter this year. Its staff retention rate is high, so it does not have to hire and train new people all the time, making it both efficient and cost effective; a thorough second-attorney review process, meanwhile, enables it to maintain exceptionally high-quality standards. Marina Portnova
, who chairs the software and electronics practice, gets some of the best feedback of any patent counsellor in California: “Marina is responsive, reliable and great at following your internal procedures and minimising administrative hassle. She has excellent communication skills, keeps you informed of what’s coming down the pipe and has good judgement regarding what to take care of herself, and what to come back to you on. She also bills at a reasonable rate. She picks up on complex technology fast, knows all the intricacies of the law, produces perfect work on time and provides reasoned, honest opinions.” Kevin Grange
, who works on Google and Intel matters with Portnova, is another name to note. He runs the firm’s patent prosecution centre in Utah but spends time in Palo Alto maintaining his strong ties to the Silicon Valley technology scene.
Mayer Brown LLP
Mayer Brown’s wonderfully collaborative, multidisciplinary and technically adept patent team is a must for technology companies that want wraparound IP solutions that work for them globally. The firm’s West Coast patent operation is relatively young, but it is growing fast under the guidance of Palo Alto IP leader and hiring partner Michael Molano
. In his own practice, Molano is a dexterous technology-focused litigator and “top-notch licensing negotiator” – predominantly for US and European-based entities – who is known for his detail-oriented approach and great sense of humour. “He consistently supplies sound IP advice laced with good commercial sense. Fast on his feet and someone who thinks outside the box, he interweaves legal and business considerations well and has a strong understanding of technology.” One of the folks he brought on board was David Wang
, who joined in 2016 by way of Winston & Strawn and Orrick before that. A fellow electrical engineer who advocates in court and inks deals, Wang is cut from the same cloth as Molano, but serves a largely Asian customer base that includes Japanese semiconductor company Rohm Co and Taiwanese computer company AsusTek. Last year was, evidently, a great year for him as he won awards for his licensing prowess and his service. Added firepower in Palo Alto comes in the form of Edward Johnson
, who is at his best in multifaceted lawsuits in which different branches of law – intellectual property and antitrust, for example – intersect.
McDermott Will & Emery
McDermott Will & Emery is doing interesting and sophisticated things around data analytics, which is fuelling the growth in demand for its counselling and prosecution services. For example, it has a proprietary system that identifies the areas in and tasks on which its own attorneys are most efficient, enabling it to create and customise the best teams for each client; large companies which are consistently developing new products and services love the increased productivity this promotes. The genius behind it all is Orange County’s Mark Itri
, who serves as prosecution counsel for Apple and Google among plenty of other household names. Itri is a gifted outside-the-box thinker who is always looking to improve the service he gives. His approach has carried over to the litigation side of the practice; trial lawyer Daniel Foster
, for example, analyses data to identify the most strategically effective forums and jurisdictions for his clients to enforce their intellectual property. He then judiciously leverages the firm’s global footprint and broad platform to act. Increased traction in a number of key industry sectors also characterises the year McDermott Will & Emery had in 2017. Top-tier biotech and pharmaceutical companies are attracted to the firm because of the strength of its cross-office life sciences group and experience taking difficult cases through trial. An anchor of the team on the West Coast is William Gaede
, who guides juries by simplifying (but not dumbing down) technical issues and telling stories that help them reach decisions. “Bill is scientifically savvy and can track complex sets of facts on multiple issues on the biggest cases. He develops sound winning theories based on astute observation of the law and expert handling of the facts. Easy to get along with, he interacts well with witnesses and opposing counsel, and makes matters proceed smoothly.” Among his recent results, he obtained an injunction for Amgen after a major trial victory over Sanofi regarding new cholesterol lowering drugs. Things have been going well in the medical device theatre too, thanks to the diligence of mechanical engineer Nathan Smith
, a portfolio manager who sees the competitive landscape lying before his clients with crystal clarity. An asset to both the life sciences and medical device groups, Judy Mohr
crafts and implements bespoke strategies for pharmaceutical companies, taking all relevant commercial and regulatory concerns into consideration. Litigator and prosecutor Brent Hawkins, who maintains desks in Silicon Valley and Chicago, crosses between the life sciences and high-tech spheres without losing his compass.
Morgan Lewis & Bockius LLP
Morgan Lewis & Bockius has a lot of irons in the fire – in fact, its ability to tackle any patent task is one of its chief selling points. Something special to spotlight is its post-grant practice, which is firing on all cylinders under the leadership of Dion Bregman
who, post-America Invents Act, is now up to approximately 120 PTAB filings. A tireless worker with a passion for technology, Bregman wears a remarkable number of other hats within the firm; he serves as technology leader within the IP group, is in charge of a cross-departmental technology initiative and oversees prosecution for several technology titans. “Dion is what baseball coaches call a five-tool player. He is a tech-savvy guy who can dissect a patent quickly; he has seen more litigation than your average patent litigator and can articulate himself in court like a trial lawyer, even if he isn’t one by nature; he’s terrific at licensing and prosecution, too.” Michael Lyons
contributes much to the set’s PTAB success, though court litigation is his main calling. He is “a fabulous trial lawyer with a great presence in court” and has “a great track record with a number of big wins”. On the procurement and portfolio management side, the firm garners widespread commendation for its expertise on the issue of patent eligibility. One of the market’s top software gurus is Gary Williams
, who has an international reputation as a “leading patent professional”. Capitalising on various accelerated procedures in the United States and internationally, he has cracked the code in terms of getting rapid patent protection. Another distinguishing feature of the firm – particularly among Silicon Valley outfits – is its global resource pool which, of late, has been expanding dramatically in China. Promoting the Morgan Lewis brand across Asia, as well as domestically, through his first-rate deal work, Rahul Kapoor
stands out as one of the best patent transactions lawyers anywhere in the world. His recent activities have taken him into some emerging markets; he is representing European internet company Yandex in a deal with Uber to combine ride-sharing businesses in Russia, Kazakhstan, Azerbaijan, Armenia, Belarus and Georgia, for example. The multi-jurisdictional footprint continues to be a boon to Jeffrey Mann
, who co-leads a global life sciences interdisciplinary group. He is nothing short of brilliant on the design and acquisition of international patent portfolios, and he is a whizz when it comes to the commercial exploitation of intangible assets. He also contributes much to the set’s post-grant success and has recently been working with Bregman on a number of inter partes
reviews for Stanford University.
Morrison & Foerster LLP
With its strong and substantial patent prosecution, litigation and transactional practices, Morrison & Foerster can support the full business development of technology companies and provide them with legal certainty whatever situation they are faced with, in a way that very few can. Critical to the success of this, the firm puts forward a collaborative effort; Mofo lawyers freely mingle across departments, sharing legal expertise and tips on best practice to build up impregnable protection matrices for their clients. In this regard, the prosecution and litigation units work in particularly close concert. Patent practice chief Michael Ward
– a world leader in the field of plant and agriculture intellectual property – does much to encourage and facilitate this; and it certainly works well for life sciences aficionado and “wonderful, smart, business-oriented and strategic attorney” Catherine Polizzi
, given the wide remit that biotech and pharmaceutical companies are keen to give her. The muscular litigation unit got a boost recently with the arrival of Stefani Shanberg
and a “synergistic team of lawyers” who switched from Wilson Sonsini Goodrich & Rosati in May 2017. “Stefani is a strong leader, but she performs well in a group and is open to ideas from the lawyers around her. She has a tremendous business sense and doesn’t just look at cases from a legal point of view.” With Shanberg and Michael Jacobs
on deck – and factoring in computer programmer, mathematician and post-grant captain Matthew Kreeger
and litigation co-chair Richard Hung
– Mofo can still be considered a redoubtable force in patent litigation. Jacobs is “a real technical expert, and he knows how to communicate the tech clearly”; he is also famed to be a superb trial lawyer with a billion dollar-plus single jury verdict on his résumé. The firm is also formidable in the contractual domain and has a dedicated patent and technology transactions group distinct from its patent and corporate divisions. The elder statesman is William Schwartz
, an unbelievably good mentor and resource to clients and colleagues. He really kick-started the whole IP practice here and is not just a deal broker but a percipient all-around counsellor. Rufus Pichler
is a discerning choice for cross-border transactions thanks to his international background – he trained as a lawyer in Germany – and his faculty for getting different offices pulling in the same direction. He recently assisted BlackBerry in connection with a landmark strategic alliance and licensing deal with the largest media, content and technology business in Indonesia, Emtek. Tessa Schwartz
is another name familiar to most – she currently serves as managing partner, but still maintains an active licensing, IP commercialisation and technology procurement and transfer practice.
Quality is the central component of Nicholson De Vos Webster & Elliott’s pitch – every filing is taken to reflect on the responsible partner’s reputation, supplying the motivation for senior folks to perform all the right reviews. Only a light touch is needed in this regard given the high standard of training provided to associates. Staying current on all developments in the law is another important underpinning of quality that the team never takes its eye off. With the young firm now stable and existing patrons happy, growing and diversifying the client base have been the main mission of the past year; traditionally computer hardware-focused, the team has made a strong push in the software area and gained immediate traction. Devising international prosecution strategies is something that founding partner Daniel M De Vos
has lately focused on. A “technically steeped lawyer who is extremely responsive to client needs”, De Vos is a touchpoint for large companies and start-ups looking for the best advice on how to get and then use IP assets. His partner David Nicholson
builds portfolios that catch the eye of potential acquirers.
O’Melveny & Myers LLP
Many blue-chip technology companies have tied their flag to the mast of O’Melveny & Myers, thanks to its confidence-inspiring patent litigation track record and whetted advocacy skills. The latter were fully on display just recently when the firm scored back-to-back appellate victories for Mentor Graphics against electronic design automation arch rival Synopsys. In leading the team responsible, Mark Miller
set a number of precedents; when, along the way, Synopsys sought to invalidate Mentor’s patents via the PTAB, he saved all but three of Mentor’s claims in one of the first inter partes
review decisions to uphold the validity of any claim; later, when the Federal Circuit upheld Mentor’s patent claims, it addressed, for the first time, the USPTO’s practice of selective claim review in inter partes
reviews. Meanwhile, David Almeling
emerged with a smile on his face from a lengthy, highly charged multi-forum battle between his client, Google, and Micrografx; it ended in a consolidated appeal hearing at the Federal Circuit in which he convinced the court to affirm the PTAB’s invalidation of all asserted claims of the three patents Google was alleged to have infringed, in spite of the fact that the PTAB had erred in its claim construction. Ryan Yagura
has been working wonders for Samsung but has also been facilitating the growth of the firm’s Silicon Valley practice, and building out the DC office and specifically its ITC practice, all in the name of helping the firm’s patrons stay ahead of the game. Additional firepower is supplied by Mark Samuels
, a past chair of the IP and technology group and a litigator who is well accustomed to pushing boundaries.
Paul Hastings LLP
With its local patent litigators having settled into a groove now, Paul Hastings makes its debut appearance in the IAM Patent 1000
California listings this year. Global IP co-chair Yar Chaikovsky
has used Palo Alto as a base to spearhead plenty of high-profile contentious actions. A mesmerising trial lawyer who is unflappable in the heat of the moment, he has got a lot on his plate right now; as part of a broad strategic patent protection plan for his client Fitbit, he has been leading inter partes
reviews of key patents asserted by Jawbone in parallel ITC litigation, while also handling a Federal Circuit appeal for Yahoo! and Twitter arising out of a large multi-district patent litigation in which he obtained a victory for a 60-plus member defence group. In terms of results, he concluded a long-running tussle between his client Trend Micro and Intellectual Ventures, when the latter was denied its request for en banc
review of the Federal Circuit’s affirmance of the invalidity of two Intellectual Ventures patents under Section 101. The firm has a new face in the publication this year in Chris Kennerly
, who chairs the Palo Alto litigation section. He runs cases from beginning to end with military precision, but is not inflexible – as a first-chair trial lawyer, he knows how to adapt his approach where necessary. He has been working with both Chaikovsky and DC-based PTAB mastermind Naveen Modi on a raft of important matters.
Perkins Coie LLP
Perkins Coie has one of the top post-grant practices, certainly in California, but also nationwide; with fully fledged prosecution and litigation capabilities, it is a natural fit for PTAB work, which requires technical dexterity and advocacy skill in equal measure. Physicist Bing Ai
is the number one specialist on the roster, and the named lead or back-up counsel in more than 80 post-issuance proceedings. Hailed for his portfolio management wizardry, he is a versatile asset for the firm and his clients. Rated alongside Ai on the prosecution table is chemistry PhD and inventor Viola Kung
, who is a cornerstone of the organisation’s life sciences practice. Leading this is Michael Wise
, who has channelled his interference expertise into a vibrant inter partes
review practice; the long-time IP counsellor is, however, comfortable in any contentious setting, and has litigated many heavy-duty cases in the pharmaceutical as well as high-tech areas. The ITC and district courts are other proving grounds for the versatile firm, which maintains one of the largest patent litigation practices in the country, measured by number of cases and headcount. John Schnurer
keeps up appearances at the ITC – he co-chairs the Section 337 investigations practice – and acts for a number of Taiwanese companies there and elsewhere. He was on board when Perkins Coie opened in San Diego in 2010; since then the office has grown tremendously, and now includes some 35 lawyers and technical specialists, the majority of them in intellectual property – resources which he does a great job marshalling for his Asian and other clients. Perkins Coie also dispatches transactional instructions with an assured hand, and has a compelling magnet in Dana Hayter
, a former licensing vice president and associate general counsel at Intel. Semiconductor, software and wireless companies view him as much more than a private practice lawyer – they consider him to be a vital business partner.
Quinn Emanuel Urquhart & Sullivan LLP
“Exceptionally strong and a litigation powerhouse”, Quinn Emanuel is home to many “out-of-this-world high-stakes litigators”. The firm is now widely regarded as one of the few true global IP disputes players out there. Take a look at what it has been doing for Varian Medical Systems: in the ITC, its team secured from the administrative law judge a final initial determination that Elekta infringed three Varian patents and a recommendation that the commission issue a limited exclusion and cease and desist order covering Elekta’s infringing products while, in parallel, it asserted two German counterparts in the Mannheim Court, leading to a favourable settlement. In charge on this one were Sean Pak
and Victoria Maroulis
, two trial lawyers who garner A+ report cards from clients. “They are completely professional and creative, and the strategies they craft quickly give you the upper hand. They also work seamlessly and collaboratively with folks inside and outside their own organisation.” The firm’s dominance at home has not changed though, and it continues to secure lead roles on bet-the-farm fights between competitors. Cases do not get much more high-profile than Waymo v Uber
, in which Charles Verhoeven
has been representing Waymo. One of the biggest names in the game, Verhoeven “has been a top-tier trial lawyer his entire career” – something which can also be said for founding partner and almighty commercial advocate John Quinn
. With over 30 years’ experience, Frederick Lorig
is just as seasoned as a trial lawyer. He co-chairs the IP litigation practice with Claude Stern
who is another familiar face in the courtroom. The modus operandi
of all the Quinn Emanuel lawyers is to plan for trial from the moment a case is filed; it is a mark of confidence that they do not defer decisions or seek to maximise their optionality like those who are less experienced at the sharp end.
Ropes & Gray LLP
Tough as nails in big-ticket patent litigation and steeped in technology transactions, Ropes & Gray has everything required by global tech and life sciences companies. As a result of the divestiture of the firm’s prosecution practice, it is even more focused on litigious combat and deal making, giving it a new lean-and-mean feel that resonates with those looking to steal a march on their competitors. On the West Coast, its two most experienced advocates are Andrew Thomases
and James Batchelder
, who as a dynamic duo have been representing Godo Kaisha IP Bridge, a Japanese government-backed IP management company, in a six-patent case in the Eastern District of Texas against Broadcom over semiconductor and processor technology innovations. A settlement is being negotiated in this but, as a result of their strong motion practice along the way, they are in a good position. Batchelder has also been expanding the firm’s relationship with long-term patron TiVo and is currently at the forefront of a raft of cases for the company. As respondents enthuse, Thomases “takes his work and client relationships personally, and is a rock for his followers whose complete needs he supports consistently”; Batchelder is “the most cerebral lawyer – you don’t see him coming, but then suddenly he is three steps ahead of you”. On the corporate side, James DeGraw
is a privacy and data security guru with broad and deep technology transactions expertise to match.
Schwegman Lundberg & Woessner PA
In-house counsel increasingly have to justify why they are pursuing patents and explicitly communicate this to management, but having Schwegman Lundberg & Woessner as a representative makes this an easy task because the value of its strategic thinking at portfolio and sub-portfolio levels is so obvious. The team prosecutes patents with business objectives firmly in mind and with a refined understanding of what competitors are up to. Efficient in the nuts and bolts of prosecution, it is also rolling out innovative automation ideas to enhance its cost-effectiveness. In other news, the firm has established itself in Europe with the launch of its first international office in London; US companies are increasingly casting their eyes abroad, feeling that, in some respects, the US patent system is weakening and this move has given them the edge. “Andre Marais
does an amazing job managing the Silicon Valley office. He knows what makes for great client service, and he takes care of his associates too.” An authority on software and the electrical and mechanical arts, he takes personal pride in his portfolio management work and never gives less than 100%. The same can be said for Garth Vivier
, who has a wealth of international prosecution expertise.
Sheppard Mullin Richter & Hampton LLP
Sheppard Mullin Richter & Hampton gets hired for its experience handling sophisticated, mission-critical patent infringement suits – its excellent track record is a central part of its pitch. Its tenacity and aggressive style also go down well – the team is, for example, persistent in seeking the discovery that will lead to a successful resolution and when occasion demands, goes in hard after attorneys’ fees. Another characteristic of the set is exceptional thoroughness in analysing case law, which gives it an edge in devising winning strategies. “Stephen Korniczky
has many desirable attributes, including strong attention to detail, great communication skills and habits, an outstanding knowledge of patent law and litigation tactics and a proven ability to find viable defences which get missed by others.” Most recently, he handled a high-profile three-week trial in a breach of contract and declaratory judgment action TCL Communication Technology Holdings filed against Ericsson seeking a fair, reasonable and non-discriminatory (FRAND) licence; by way of backstory, Korniczky had already secured a worldwide anti-suit injunction against Ericsson and had 17 inter partes
review petitions instituted by the USPTO which led to the invalidation of five implementation patents Ericsson had asserted. That is a lot of winning. Another noted trial lawyer is Seong Kim
, who is a lodestar for many Korean companies. Just as the litigation team sees around corners, so does James Soong
, who knows how likely any given effort at the patent office is to meet with success. In a prior life, Soong engaged extensively in litigation practice and, as a result, sees the potential ties between his firm’s contentious and non-contentious practices; he leverages these to protect clients such as Facebook and Oracle to great effect.
Sidley Austin LLP
Sidley Austin is a redoubtable national patent litigation player with the resources to take on the most challenging lawsuits, and the talented lead trial lawyers necessary to secure victory. Two of its best, Michael Bettinger
and Vernon Winters
, are stationed in San Francisco, giving the Chicago-headquartered firm a high profile out west. Bettinger, who leads the California IP litigation practice, is a tried-and-tested litigator who has argued in the region of 25 cases to verdict in courts throughout the country. When faced with a challenge, many industry leaders look to Winters as the North Star; he has an encyclopaedia of attack plans up his sleeve and is fleet footed in the courtroom. Sidley is equally well-equipped to execute on major transactions, and in Glenn Nash
has a corporate partner who can elevate negotiations and ink big-ticket deals. He co-leads the global technology and IP transactions group and is an abundant source of insight on, among other matters, the Internet, artificial intelligence and financial services.
When companies are looking to do deals that will take them to the next level, they seek out Sullivan & Cromwell, a prestigious firm habituated to remodelling entire industries. Emblematic of quality and transactional expertise, Nader A Mousavi
is one of the best deal brokers in the world. “An amazing lawyer and trusted legal and business partner, he has a unique ability to think outside the box and meet company goals. There’s nobody better when you take into account substantive knowledge, composed demeanour and negotiation ability.” Another client adds: “He provides sound and practical advice around risk and excels at manoeuvring through the most difficult IP issues. He doesn’t get lost in the intricacies of the technology or of IP law, and is incredible at finding commercial solutions to difficult challenges.” Private practice peers also think the world of him: “He loves being involved in enormous deals and is a brilliant negotiator who understands what is and what isn’t important – his prioritisation skills are outstanding.” He has been incredibly busy lately; one particular highlight is the work he has done advising Waymo in connection with its separation from Google parent Alphabet Inc, turning it into an independent company under the Alphabet umbrella. Having acted for Verily Life Sciences during its formation back in 2015 as one of the first Alphabet companies, he also recently acted for it in respect of its separation and subsequent sale of a minority interest to Temasek. He also advised Teva Pharmaceutical Industries in its $40.5 billion acquisition of Allergan’s generics business – a ridiculously complex carve-out. In addition to all this, he has been representing Bayer in its pending acquisition of Monsanto – a $66 billion all-cash transaction.
Tensegrity Law Group LLP
Tensegrity Law Group is a litigation boutique geared up to represent plaintiffs in patent suits. It seeks fees commensurate to its success and, eschewing the billable hour model, tailors fee arrangements to each case and client. However, its chief selling point is the trial expertise of founding partners Matthew Powers
and Paul Ehrlich
. For a long time, Powers was one of the top defence litigators in patent practice; he knows all the big law defence strategies, enabling him to get creative in working around them to put his clients in the ascendancy.
Van Pelt, Yi & James LLP
Van Pelt, Yi & James is a patent strategy guide for many Silicon Valley innovators; much more than just a prosecution shop, it knows how to get the best out of patent assets once obtained, and give clients maximum bang for their R&D buck. The beating heart of the firm is Lee Van Pelt
, who has accumulated infinite wisdom on the options open to emerging technology companies and investors in them.
“Weil’s lawyers are superbly capable and provide the highest calibre of legal representation in high-stakes patent infringement actions. Their writing is beyond compare too. You can rely on them to perform extremely well and in your best commercial interests and they are a great pleasure to work with.” Standing ready to assist when the stakes are high is gold-rated Edward Reines
, who co-chairs the life sciences practice. For a flavour of his work, check out his recent representation of Illumina against Qiagen in the Norther District of California in which he secured a preliminary injunction barring Qiagen from selling its GeneReader NGS DNA sequencer; he put on a masterclass to get a powerful and uncommon remedy. His partner in Silicon Valley, Jared Bobrow
, co-chairs the patent litigation practice and specialises in high-tech disputes. “One of the best in terms of providing strategic guidance and analysis, he is also supremely prepared for all manner of hearings, and highly adept at addressing the arguments and questions raised by opposing counsel or the court.” He has had a number of successes at the Federal Circuit of late and, for example, secured an affirmance of a Delaware court ruling that patent claims asserted by Novo Transforma Technologies were invalid on Alice
grounds. More recently, in June 2017, he got complete wins in four out of four inter partes
review proceedings he filed for Micron Technology in its dispute with Innovative Memory Systems over flash technology patents. Weil is also a transactional heavyweight, being “incredibly strong in the practice at a group level” and drawing on the talents of individual heroes. One of those is “wonderful attorney” Karen Ballack
, who “not only has deep legal, technical and commercial expertise, but also exceptional people skills”. She was there for Yahoo! as it cemented the most important transactions in its history – its reverse spin-off of its operating business, auction sale of the same and eventual $4.48 billion sale to Verizon Communications.
White & Case LLP
The patent litigation market may be evolving as a result of Supreme Court decision making, but technology industry standard bearers still look to White & Case to prepare cases as if they are going to trial; the firm does this exceptionally well and often nets early wins as a result. Jeannine Yoo Sano
is a master in this regard, but is chiefly known for being “great at interacting with judges” and doing “a phenomenal job in the courtroom”. Also, “she isn’t someone who needs the mic the entire time – she gets the right people on her team to do the right parts of a trial and makes smart, non-egocentric decisions that get you the best result”. She puts care and attention into everything, from court filings to email correspondence, and stays very actively involved in all her matters. It is the White & Case way – Bijal Vakil
does the same thing. As the Silicon Valley office’s executive partner, Vakil safeguards the IP rights and business interests of patrons such as Walmart, American Express and GlobalFoundries and has been doing so in many forums, including the ITC and the PTAB.
Wilmer Cutler Pickering Hale and Dorr LLP
“Extremely sharp technically and very easy to work with, WilmerHale’s lawyers are top-drawer. Zealous in representing their clients, they nonetheless litigate with a lot of integrity.” The perception in some quarters is that a lot rests on the shoulders of Boston’s Bill Lee; he is certainly one of the side’s big-hitters, but “the firm has a strong West Coast presence” and a “brilliant strategist” in Mark Selwyn
. The IP litigation co-chair has an international reputation as an excellent trial lawyer and is a confidant to much of the Silicon Valley elite. Jason Kipnis
is another name for the address book, particularly for brands looking for an IP all-rounder who can manage a portfolio, enforce rights and monetise them.
Wilson Sonsini Goodrich & Rosati
Wilson Sonsini Goodrich & Rosati has “the strongest corporate practice in Silicon Valley” and has “locked down the IPO side of things”. “Incredibly good at catering to start-ups”, but also large companies, it has a deep bench of crackerjack technology transactions experts ready to negotiate and get signatures on contracts. Two of the best are software expert Michael Murphy
and biotechnology connoisseur Kenneth Clark
. “On the prosecution front, the firm is strategically very savvy, and has excellent drafting skills.” The embodiment of both attributes, James Heslin
is a thought and practice leader in the medical device theatre. Clients don’t have to look far for an experienced litigator – Michael Levin
in Palo Alto and Edward Poplawski
in Los Angeles fit the bill. Levin knows a great deal about standard-essential patents and is a discerning choice in FRAND licensing disputes. Poplawski heads the patent litigation practice and is a nationally esteemed trial lawyer with a large following of technology major leaguers.
Augmenting both its Silicon Valley and Los Angeles teams, Winston & Strawn has been on a significant expansion drive in California, making it even more of a national patent litigation powerhouse than it was before. Central to this storyline is Kathi Vidal
, who came over from Fish & Richardson in April 2017. She is a top trial lawyer who has what it takes to win in the face of seemingly insurmountable obstacles. A demonstration of this came when she and Texas lawyer Thomas Melsheimer, who also recently joined from Fish, won SAP America’s fight against Investpic by invalidating the latter’s patents as they claimed a patent-ineligible abstract concept; notably, IBM and SAS had attempted to invalidate the same patent on different grounds, but had been unsuccessful. When she came over to Winston, Vidal found that the set had strong leadership as well as some of the best lawyers in the world; indeed, one of the firm’s main attractions is its exceptional roster of first-chair litigators, members of which include David Bloch
, Michael Tomasulo
and David Enzminger
. Bloch is “a natural IP polymath, but has always been a formidable patent litigator”. Tomasulo has handled all kinds of patent infringement suits in all manner of forums and as a result is never fazed, no matter what comes up. He and Enzminger, who has kept Winston in the West Coast conversation for the past seven years, have lately been defending several major video game developers.
Womble Bond Dickinson (US) LLP
Womble Bond Dickinson added the Blakely Sokoloff Taylor & Zafman team of 24 IP lawyers and patent agents to its roster in January 2018; given Blakely’s “fantastic client base” and “smart people who have long benefited from an excellent, well-structured training programme”, it certainly looks like a smart move. One of the perks of this move was getting James Scheller
, “an iconic patent lawyer who pushes at boundaries, and a really nice and well-respected guy all round”. Scheller works primarily with electronic, computer and internet technologies and is much more of a strategic sounding board for his clients than just a prosecutor. Prior to the merger, the firm was taking steps to build its Silicon Valley office, and recruited Daniel Ovanezian
, a former engineer with superb computer software and hardware credentials and over 20 years of experience.