United States: Illinois

Firms: litigation

Firms: prosecution

Firms: transactions

Amin Talati Upadhye LLP

The market is a little on the tighter side for a lot of patent litigation outfits, but it is boom time for pharmaceutical patent litigation and Food and Drug Administration (FDA) strategy boutique Amin Talati Upadhye. As a compact organisation, the firm is unencumbered by the many layers of bureaucracy that bigger firms put on, enabling it to turn work around more quickly, creatively and flexibly; it also does not track billable hours as a performance metric for its attorneys and therefore rewards efficiency as opposed to inefficiency. A “brilliant resource and outside-the-box thinker”, Shashank Upadhye leads the way. Applying Lean Six Sigma principles in his project management of complex cases, he works hard to minimise his clients’ legal spend while providing high-quality representation; look, for example, at the way he fields one-off questions – it is not something he charges for, but he gives the right answer almost instantaneously thanks to his encyclopaedic knowledge of patent, pharmaceutical and FDA law. As a former chief IP counsel at three top pharmaceutical companies, he has unbeatable industry experience and is sensitive to the commercial needs of his clients; in addition, he often has good contacts on the other side of his cases, which helps him facilitate quick resolutions. By his side is Joseph Cwik, an excellent trial lawyer who is just as happy if he does not go to court; he is not looking to build his ego off the back of his clients’ litigations. He makes smart strategic decisions, focuses on arguments that will drive the best outcomes and is great at getting the right person on the team to do the right task.

Baker & Hostetler LLP

BakerHostetler’s Chicago patent practice is getting bigger and stronger as Leif Sigmond, who arrived in Summer 2017, increasingly harnesses the wider firm’s rich IP resources, including its countrywide pool of 170 specialised lawyers and sophisticated docketing and research infrastructure. A litigator but not a hired gun, Sigmond is in it for the satisfaction of finding good business resolutions for his clients – an approach that has allowed him to cultivate many long-term and meaningful relationships. Comfortable wherever a case takes him, he has recently been acting for Trading Technologies International at the PTAB and the Federal Circuit. John Letchinger is another valuable contact and serves as trial lawyer in chief for a major Fortune 500 retail client that BakerHostetler successfully tendered for in 2015.

Banner Witcoff 

A leader in the prosecution of design and utility patents with vibrant post-grant and litigation offerings, illustrious Chicago IP boutique Banner Witcoff is a dexterous and diligent all-rounder in the patent space. Many of its lawyers demonstrate versatility in their individual practices too, Joseph J Berghammer being a prime example; he is far-sighted as a prosecutor and counsellor because he is so successful as a litigator. Sources describe him as being a “creative patent attorney who runs projects efficiently and effectively. He builds a detailed knowledge of his clients’ business and provides excellent advice on how to strategically enhance their innovation. He’s a great choice if you want to develop and enforce a valuable patent portfolio”. His varied expertise puts him in pole position when it comes to PTAB work; most recently, he prevented the institution of an inter partes review against four of RTC Industries’ patents. Fellow Chicagoan Christopher J Renk is a well-rounded IP litigator who has also met with recent post-grant success acting for Nike against adidas. Continuing this theme, trial lawyer Timothy C Meece is part of a team that has filed no less than 45 inter partes reviews for Comcast against Rovi Guides.

Bartlit Beck Herman Palenchar & Scott

Fabled trial firm Bartlit Beck earns commendation for its cool, calm and collected handling of complex and commercially consequential life sciences cases. Fighting on the frontlines are Adam Mortara and Scott McBride, who “play off each other’s strengths to great effect. Adam has incredible intellectual processing power, while Scott is fantastic on his feet and relates well with witnesses, juries and judges”. Also focusing on pharmaceutical and biotech cases is Rebecca Horwitz, who was recently elevated to the partnership; sources refer to her as “the future of the profession”. Chris Lind is another of the ensemble’s eminent trial lawyers and a resonant presenter of any challenging commercial or IP case.

Brinks Gilson & Lione

Top national IP boutique Brinks is a repository of trust for leading innovators when infringement issues loom large. From a foundation of exceptional trial preparation, its litigation team focuses on securing the best possible business outcomes and gets clients to where they need to be efficiently and cost-effectively. Brinks has many seasoned litigators on deck, but three of the most senior members of the crew are Gary Ropski, Dominic Zanfardino and Ralph Gabric. Ropski’s litigation playbook is a deep one thanks to the more than 40 years of experience he draws on. “Whip smart and thorough” is the verdict on Zanfardino, a lawyer many clients consider to be a vital commercial ally. As an outstanding case and trial strategist, Gabric enjoys immense credibility with decision makers because he cuts to the heart of matters in a direct way. He also has a “friendly, collegial style and connects well with all sorts of people”, as one respondent emphasises: “He’s someone you want to listen to.” Of late, Gabric has been representing ZTE in major litigations alongside James Sobieraj, a former president of the firm whose advocacy skills have been whetted over nearly four decades. Brinks has met with much success at the International Trade Commission (ITC) – for ZTE and many others – thanks in large measure to the sterling leadership supplied by Laura Beth Miller, a specialist in the forum. She is the Brinks litigation group co-chair and relishes getting to grips with vanguard technologies and creating stories around them for the courtroom. Laura Lydigsen represents the best of the next generation for the firm. The former Federal Circuit clerk masters the finest details of her cases and provides an excellent client service – she makes her in-house contacts look good. The firm sets to prosecution in a commercially minded way too: “A lot of prosecutors view their job as getting patents issued, but how claims look vis-à-vis the strategic needs of a company is important too; Joseph Hetz and Andrew Stover take that to heart and see the full business picture.”

DLA Piper

Two of DLA Piper’s top patent trial lawyers – Matthew Satchwell and Paul Steadman – are based in Chicago and use the city as a jumping-off point for representing leading computer, communications and automotive companies. Satchwell is a ball of energy who thrives in the cut and thrust of multi-patent, multi-party, multi-forum cases; his contained aggression works well in jury trials and ITC investigations, while his technical fluency gives him the edge in inter partes reviews. He co-chairs the Chicago IP practice. Steadman gets right down to business in the courtroom and is a confident leader of mission-focused trial teams.

Global IP Law Group LLC 

When it comes to realising commercial value from intellectual property, Global IP Law Group is one of the best in the business. The decade since it was established has been a story of sustained brilliance in selling portfolios and licensing patents – assignments that Ragnar Olson excels at. He has an innate ability to understand the value proposition of any portfolio, which he leverages to make his clients money; he adjusts well to the market, stays up on the law, works hard and gets results. Monetising intellectual property through litigation is also one of the outfit’s fortes, particularly with David Berten supervising matters. As a former Kirkland & Ellis and Bartlit Beck lawyer, he has an excellent litigation pedigree and is lauded as “one of the best minds in intellectual property”. Graham Gerst spent nearly a decade litigating at Kirkland & Ellis and knows all about effective IP enforcement. At Global IP Law Group he serves as an arch-patent strategist.

Green Griffith & Borg-Breen LLP

Unusually for a litigation-focused boutique, pharmaceutical supremo Green Griffith & Borg-Breen functions like an in-house advisory team; its lawyers connect with clients’ R&D folks as they formulate new products so as to become embedded in their innovation processes and business – an approach that pays off hugely at trial. “The value of their exceptional preparation is that they know every detail of their cases – this enables them to be creative and remain cool under fire.” Recalling one particular experience with the firm, one source comments: “They developed a novel defence to an infringement allegation on an issue that had been litigated before and their argument prevailed after an accelerated discovery period and trial – bear in mind that this was against a major international firm that had handled a number of the prior cases involving the patent in question.” Forming a tight-knit and well-organised team of seasoned Hatch-Waxman Act litigators, Robert Green, Caryn Borg-Breen and Christopher Griffith love pushing the envelope in this way and never adopt a cookie-cutter approach. The firm had a significant year in 2018 in terms of expansion; it opened a second office in Madison, Wisconsin and hired Jeffrey Ward and Wendy Ward to lead it. The two ex-Merchant & Gould partners have been busy with a major trade secret case for QuVa Pharma.

Greenberg Traurig LLP

“Staying aligned to industry trends is essential when it comes to setting IP strategy and managing portfolios; Greenberg Traurig truly understands its clients’ industries and business models and is a valuable partner for any organisation that embraces an innovative culture.” Embodying the firm’s commercial ethos, Chicago-based Gary Jarosik and Keith Jarosik are two of the firm’s finest prosecutors and counsellors. “They have an excellent understanding of emerging technologies and market shifts which they use as a foundation to minimise your IP risk and keep you secure and protected. They are top patent attorneys who perform at the highest level.” Together, the duo hold it down for WW Grainger, Universal Electronics, Caesars Entertainment and the University of Notre Dame. With its effectively borderless national and global litigation group, Greenberg Traurig is also a discerning choice for infringement scenarios wherever they manifest. A litigator who has set several benchmarks in his time, Richard Harris co-chairs the group. Herbert Finn litigates extensively for LG Electronics and has been kept busy at the PTAB of late.

Jenner & Block LLP

A redoubtable trial firm with a tremendous patent practice, Jenner & Block LLP is a leader in the ultra-competitive life sciences field. As an example of this, check out Steven Trybus’s PTAB victory for the Broad Institute, the Massachusetts Institute of Technology and the president and fellows of Harvard College in a headline-grabbing case regarding ownership of the patents for ground-breaking gene editing technology CRISPR. In this case, Trybus displayed his “outstanding analytical expertise, exceptional brief writing ability and oral presentation skills”. Bradford Lyerla is another pharmaceutical heavyweight, who has been representing Coherus BioSciences in patent litigation relating to its planned biosimilar to Amgen’s $4 billion-per-year Neulasta drug product; when Amgen filed suit, Lyerla moved to dismiss the case and was successful on the basis that Amgen had surrendered claim scope during prosecution and was estopped from arguing that Coherus infringed the claims. “Smart, articulate, quick on his feet and efficient, Brad is an extremely sophisticated litigator who inspires confidence. He has a clear vision of what should happen at trial and then executes well – a lot of lawyers by comparison fail at step one, namely having a plan.” He co-chairs the patent litigation and counselling practice alongside Reginald Hill, who moves up into silver in this year’s IAM Patent 1000. “Reggie has a deep understanding of his clients’ products and business and shows excellent judgement in deciding and focusing on the most effective strategies – he doesn’t raise as many arguments as possible to support a point like a lot of litigators do. He is also conscious of the need to control costs. An absolute pleasure to work with, he shows genuine respect to all the members of the team and maintains a quiet but excellent sense of humour.” Together with managing partner Terrence Truax, Hill recently secured a dismissal with prejudice of all claims made by Server Technology against his client Schneider Electric regarding power strips used to regulate power provided to data centre computer servers, thereby putting to bed a fractious and long-running dispute between the two companies. Like LeBron James on the basketball court, Lyerla, Hill and Truax elevate the teammates around them. One individual coming on strong right now is Sara Horton, a “phenomenal trial lawyer and one of the best cross-examiners you’ll ever see”. Collaborating with Lyerla, she has recently been acting for Hospira in several matters meeting with success at the Federal Circuit along the way.

Jones Day

Jones Day’s combination of technical and trial proficiency has proven to be a winning one so far as post-grant matters are concerned; the leading litigators across its offices are consistently successful at the PTAB. For example, Chicago lawyer David Witcoff has been doing great things there for Canon and Nikon against Papst Licensing; Papst asserted two patents directed to host computer-peripheral device communications technology but in eight inter partes reviews, every challenged claim – all 116 of them – was found to be unpatentable. “Witcoff is a first-rate lawyer with an amazing analytical mind – he never misses anything. A confident, sincere and genuine guy, he doesn’t show bravado in the courtroom; he’s tough for sure, but never unreasonable.” Jones Day is also home to some top-notch Federal Circuit and Supreme Court lawyers – see appellate star Sasha Mayergoyz and John Marlott. Marlott made news in 2018 with his Supreme Court win for the SAS Institute which determined that the PTAB must issue a final written decision on all claims challenged and cannot partially institute an inter partes review. William Devitt is the personification of a hard-hitting trial lawyer but he is also deft, which he demonstrates in the court and during licensing negotiations.

Katten Muchin Rosenman LLP

Katten has made some smart plays in the recruitment market of late, picking up Deepro Mukerjee in New York and polymer science PhD and post-grant ace Jitty Malik in Charlotte, both former leaders of Alston & Bird’s pharmaceutical litigation practice. However, before their arrival, Katten was already outstanding in the life sciences thanks to the talents of Brian Sodikoff and Stephen Benson. Sodikoff, who has already teamed up to great effect with Mukerjee, provides a fine blend of patent, FDA regulatory and competition law expertise to his engagements. One client for whom he is conducting ongoing litigation enthuses: “Brian is the best practitioner I’ve ever met. Unlike others – and for previous suits we’ve hired several lawyers – he makes the client and its business his first priority at all times. He’s an excellent strategist too.” Benson has done a lot of everything – litigation management, oral advocacy in court, brief writing for appeals – and always comes through with flying colours. He and Sodikoff represent Sun Pharmaceutical Company and won a non-infringement decision for the company against Dexcel in a trail in the summer of 2018.

Kirkland & Ellis LLP 

“Kirkland is a leading litigation firm locally in Chicago as well as nationally. It has an exceptional experience quotient and produces work of an outstanding quality. It can be very aggressive, but this works extremely well in the tough, high-stakes cases it takes on.” The firm has moved well with the times and, for example, “knows all the nuanced rules of PTAB proceedings”. Stationed in Chicago are several major-leaguers, including “top-calibre trial lawyer” James Hurst, one of the nation’s foremost pharmaceutical litigators, and Kenneth R Adamo, a thought leader who knows where patent law has been and where it is heading – and a superhuman trial and appellate lawyer to boot. Bryan Hales is also easy to recommend; mounting impregnable defences for pharmaceutical companies, he has gone the distance and won on numerous occasions. He particularly stands out for his extensive arbitration experience. Russell E Levine continues to distinguish himself in the courtroom, his mastery of licensing disputes being complete. The firm’s transactional lawyers, including Seth Traxler and Jeffery Norman, are a match for its litigators in terms of sophistication and strategic creativity. Traxler co-leads the global technology and IP transactions practice and is an authority when it comes to data and privacy matters. Norman is a leader of the software and computer technology cognoscenti and regularly publishes and speaks on cutting-edge topics, such as artificial intelligence.

Latham & Watkins LLP

“A huge competitive strength for Latham is the depth of its trial bench – the firm has built out an amazing group of patent litigators.” In Chicago, all eyes are on Kenneth Schuler, a shrewd sharpshooter in an “extremely impressive pharmaceutical practice”. He and fellow Hatch-Waxman Act expert Marc Zubick, who debuts in the IAM Patent 1000 this year, “demonstrate some of the best analysis and judgement in the business and have a trial and appellate record that speaks for itself”. Bringing the heat in medical device, semiconductor, consumer products and automotive cases is global IP co-chair David Callahan. His cases invariably involve large numbers of patents, but he maintains tight control throughout all litigation phases and never loses momentum.

Leydig, Voit & Mayer, Ltd

Smart long-range strategic thinking is the hallmark of Leydig’s patent practice. As a result of its ability to manage a portfolio, conduct detailed freedom-to-operate analyses, prosecute and defend lawsuits and monetise rights, it has cultivated close and lasting relationships with patrons who integrate the firm into their business planning and objectives. Collegiality is another distinguishing feature of the set; here, everyone pulls in the same direction and people get assigned to the tasks for which they are best suited. Inspirational as a leader, John Kilyk ensures that the firm not only maintains but continually enhances its reputation for excellence in results and service. Kilyk is a highly versatile life sciences aficionado – he prosecutes patent applications for long-term client the National Institutes of Health and for Samsung (the latter with respect to biotech innovations) and handles pharmaceutical litigations along with many inter partes reviews. “Talk through a problem with John and you’ll come away with your eyes opened. He has a profound knowledge of patent law and strategy and gives rock-solid advice.” He regularly links up with Bruce Gagala to create a go-to biosimilar litigation unit. High-tech companies are just as well served by the auspicious firm. John Conklin is the lead relationship partner for prolific filer Huawei; originally the Shenzhen telecoms company came calling for prosecution but has been increasing its litigation requests recently. John Augustyn is rigorously commercial as a litigator because of the things he has seen as a prosecutor, counsellor and deal-broker – he is a veritable patent polymath. Charles Mottier is the firm’s IP value creation guru – he lives and breathes licensing.

Marshall, Gerstein & Borun LLP 

The IAM Patent 1000 attests to the comprehensiveness of Marshall Gerstein’s patent practice and recommends multiple individuals for prosecution, litigation and transactions. Cutting across all of these disciplines is the ensemble’s market-leading life sciences practice. “Marshall Gerstein has done it all in the industry and is one of the few firms with deep experience encompassing the entire product lifecycle – it knows how to build strong portfolios and position clients so they can successfully sell their product.” Chairing the biotech and life sciences practice is Heather Kissling, a prosecutor and strategist who has cracked the code of IP value creation. “She dispenses down-to-earth advice that makes business sense and doesn’t just theoretically opine about things.” Additional names to note from the counselling crew include chemical sciences chair Michael Muczynski, a prescient prosecutor with a background in litigation; Katherine Neville, an immunology PhD whose recent highlights include acting for Monopar Therapeutics with respect to its acquisition of a clinical stage asset from Gem Pharmaceuticals; and managing partner Jeffrey Sharp, a 30-year veteran of myriad biotech transactions and prosecution projects. Life sciences deal work is a major forte for the firm – a number of its prosecutors, like Neville and Sharp, are expert negotiators – but the special ops unit is formed by transactions chair Pamela Cox and special counsel Julie Watson. Virtually no other lawyers in the country know as much about university licensing and tech transfer as the pair – they are steeped in it, having both served in senior roles at Indiana University’s Advanced Research and Technology Institute (during which time they were clients of the firm). Meanwhile, in the courtroom John Labbé, Mark Izraelewicz and Kevin Flowers have been performing at an elite level representing Amgen against Hospira in the fourth patent infringement suit filed under the Biologics Price Competition and Innovation Act; Amgen asserted infringement of patents relating to the manufacture of Hospira’s proposed biosimilar version of its Epogen product and they obtained a $70 million verdict for their client; the case involved a rare interlocutory appeal to the Federal Circuit. There is similar depth to the mechanical and high-tech practice at Marshall. Jeremy Kriegel, the prosecution chair, has proven himself to be a medical devices master; Michael Furmanek offers “high-quality, well-researched, articulate, competitively priced counsel” to mechanical, electrical and software innovators; and Randall Rueth reigns supreme over electrical and computer technologies. Robert Gerstein covers a lot of ground for his automotive, energy, internet and medical device clients but is especially noted for his contractual expertise. “Benjamin Horton has a vibrant high-tech litigation practice and handles his cases in a tactically smart and efficient fashion.”

Mayer Brown

Mayer Brown’s well-rounded offering in the life sciences is embodied by Chicago partner Vera Nackovic; she plays a strong global hand in portfolio development and delivers the goods in litigation and transactional contexts. Her work this past year has been heavy on the IP due diligence side with a focus on next-generation immunotherapies. An agile problem solver who runs her team extremely well, she makes light work of quick timeline deals with thousands of patents to analyse; Erick Palmer deserves a shout-out here as a rising star of the group. She also handles licensing disputes in an arbitration setting, in the course of which she frequently crosses paths with James Ferguson, one of the top arbitration experts in the IAM Patent 1000. An American College of Trial Lawyers fellow, he also handles his business in the courtroom. Doctor of pharmacy Joseph Mahoney co-chairs the life sciences industry group and litigates with aplomb but does a lot of strategic counselling for pharmaceutical companies behind the scenes too.

McAndrews, Held & Malloy, Ltd 

In patent litigation, McAndrews, Held & Malloy competes with all the big dogs – Kirkland & Ellis, Sidley Austin and WilmerHale – and has no problem going toe to toe with them. In fact, it has exemplary wins it can shout about. For example, Sharon Hwang recently represented Stryker against Zimmer and had an award of enhanced damages and attorneys’ fees reaffirmed, with judgment entered for over $254 million. Hwang is one of the busiest members of the group and can regularly be found in district courts, the Federal Circuit and the PTAB. She often joins up with Robert Surrette, a litigator who prepares with exceptional thoroughness and who has a knack for breaking down complex legal and technical points for juries. The set’s most senior trial lawyer Edward Mas II is also firing on all cylinders. Better than just about any US lawyer, he knows what it takes to prevail in massive patent cases with proceedings occurring in parallel across multiple jurisdictions; his international arbitration expertise also distinguishes him. The PTAB has become a happy hunting ground for the technically adept firm; Herbert D Hart III and Thomas Wimbiscus are making hay for their clients in inter partes reviews. Hart’s experience in USPTO contested proceedings goes back years before the America Invents Act passed; many look to him for insight regarding the nuances of PTAB trial practice. Wimbiscus is one of the most active practitioners on the patent owner side according to the latest statistics. Design patents is another area in which the firm deploys special weapons and tactics; thought leadership on the subject is supplied in abundance by Christopher Carani, one of only eight people from across the country to make the IAM Patent 1000 US national design patents table. Troy Groetken anchors the utility patent prosecution practice and does a bang-up job developing life sciences and chemical patent portfolios worldwide.

McDonnell Boehnen Hulbert & Berghoff LLP 

Commercially minded McDonnell Boehnen is a major enabler of innovative companies that want to build up profitable portfolios cost-effectively. In-house counsel take great comfort not only from the ensemble’s quality-first philosophy but also its reliable pricing – when the firm gives clients a number for their budget, that number sticks. It also has the capacity to turn around a significant volume of work with the minimum amount of fuss. Total rock stars on the life sciences stage Donald Zuhn and Kevin Noonan dispense priceless pearls of wisdom to pharmaceutical and biotech companies. True industry insiders, they see the whole playing field through a strategic prism. This year they are joined in the guide by chemistry PhD Michael Greenfield, a diligent counsellor whose opinions are like gold dust to large international pharmaceutical companies and small drug development entities alike. “He proactively identifies pitfalls and proposes creative ways to avoid them.” In his electrical practice, Marcus Thymian is precognitive about how the patents he prosecutes will be treated by a court, having litigated extensively himself. Considering its litigation practice, McDonnell Boehnen has a number of senior trial lawyers on deck with decades of experience; they focus on the end game from day one of a case, concentrating their intellectual energy on building resonant trial themes while their well-trained and proactive junior attorneys perform flawlessly on the discovery aspect. “Paul Berghoff is an amazing trial lawyer with a wonderful down-to-earth presentation style. He connects well with juries. He truly partners with in-house counsel in developing strategies and provides a top-quality work product while keeping an eye on economics and budget constraints.” Pharmaceutical cases are his focus, although he is equipped and ready to try anything. He and Daniel Boehnen are cut from the same cloth, which is why they founded the firm together. Also hitting his stride is Grantland Drutchas. Not only is he chair of the PTAB, licensing, and litigation and appeals groups, he also serves as managing partner – he is a great person to know for a company looking to get the best out of the firm. Contributing across the practice, Bradley Hulbert stands tall as one of the set’s most percipient all-around IP minds.

Morgan Lewis & Bockius LLP

Morgan Lewis has turned on the afterburners recently and is leaving a lot of other firms behind; massive expansion through the addition of partners from McDermott Will & Emery tells part of the story, but established Morgan Lewis lawyers like Chicagoans Michael Abernathy and Jason White have also been ramping up their own practices. A pharmaceutical doyen, Abernathy added to his résumé of trial wins with a satisfying victory for Praxair in an 11-patent infringement case filed by Mallinckrodt Hospital Products IP and others in the District of Delaware, the asserted patents relating to inhaled nitric oxide; at the end of a hard fight, five of the patents were found invalid and the rest non-infringed. White was also in on this one, although high-tech battlegrounds are where he is absolutely in his element. Some of the things he is doing, particularly in the PTAB, are developing the law on Section 101. Back to recruitment, one of the new arrivals in the first group of seven partners to make it across in the summer of 2018 was popular pharmaceutical wizard Jeffrey Gargano, a commercially minded lawyer with ample trial experience. He and Abernathy are expected to do well together – neither have sharp elbows or big egos and are team players.

Nixon Peabody LLP

A lot of large business law firms are in intellectual property for the sake of lucrative litigation and do not want to invest in the infrastructure that a successful prosecution practice requires; Nixon Peabody bucks this trend and runs substantial practices on both sides of the contentious/non-contentious divide and as a result, it is perfectly suited to companies with multifaceted patent needs. Meeting the challenge of doing more for less by efficiently focusing her energy on activities that are commercially impactful, Janet Garetto is an in-house counsel favourite for prosecution and counselling. She overlays her knowledge of the law with a strategic approach that is considerate of trends and developments in the medical device and life sciences industries. Daniel Burnham still does a lot of prosecution although his practice has been litigation-focused this past year. He draws on a profound pool of expertise in arbitration too.

Perkins Coie LLP 

With specialists in numerous patent disciplines and technical domains, Perkins Coie’s Chicago office is microcosmic of the firm’s wider IP practice and, just as things are going well nationally – Perkins Coie remains a destination of choice for top innovators – the firm is also going great guns locally. On the litigation side, IAM Patent 1000 newcomer and rising star Adam Marchuk has impressed when acting for True Health Diagnostics against the Cleveland Clinic; his client was accused of infringing patents directed towards cardiovascular risk assessment technology but he had the case dismissed on Section 101 grounds; he then secured a Federal Circuit affirmance of the decision before finally persuading the Supreme Court to deny Cleveland Clinic’s petition for certiorari. He worked well with partners in Phoenix and Seattle on this case, which goes to show the integrated nature of the Perkins Coie platform. Alongside Marchuk on the litigation table is James Coughlan, who continues to thrive at the ITC. Upholding the firm’s reputation for excellence in prosecution and transactions respectively are David Fournier and Marcelo Halpern. Fournier’s extensive pharmaceutical industry research background gives him an instant connection with inventors. He knows just what to do at every point of the pharmaceutical product lifecycle. Technology transactions and privacy group co-chair Halpern is a noted blockchain authority.

Polsinelli PC

When people think of Polsinelli in Chicago, Gary Hood and his superior generic pharmaceutical litigation practice come to mind. Putting together small core trial teams of three to four people who know everything about a case in a way which sharpens the focus on the ultimate strategic objective – and keeps costs down – he has innovated a unique way of litigating big disputes. “Gary is a former naval officer and his military bearing instils confidence, trust and respect for him in the people he works with and against.” Working down the hall from Hood is David Clough, a life sciences luminary and top litigation and alternative dispute resolution strategist.

Quinn Emanuel Urquhart & Sullivan LLP

Quinn Emanuel has attained legend status when it comes to patent litigation and deploys a fierce national patent trial team to the frontlines of the biggest technology and life sciences battles. Even on a deep bench including many famous names, David Nelson in Chicago stands out. The IP litigation co-chair is admired for his combination of technical fluency and refined advocacy skills, which he has made count in many major ITC, Eastern Texas, Delaware and Federal Circuit representations.

Rakoczy Molino Mazzochi Siwik LLP

“You’d be wise not to overlook Rakoczy Molino Mazzochi Siwik – it’s a well-run outfit that punches above its weight in numbers and a powerhouse in Chicago when it comes to pharmaceutical litigation and FDA regulatory law.” “William Rakoczy is one of the deans of the Hatch-Waxman bar. He has great presence in court and is an excellent advocate who is admired by judges. He’s a hard worker and treats everyone with respect. His whole team knows how to put together a great case and how best to present it when the lights go on.” Joining him in the guide this year is Deanne Mazzochi, a “great trial lawyer with tons of Federal Circuit experience”. In terms of developments, commentators note that the firm is “really making its mark in the area of biologics”.

Schiff Hardin LLP

Dynamic pharmaceutical litigation outfit Schiff Hardin has a trial mentality – its lawyers do not mindlessly go through the initial litigation steps but think ahead to determine the most compelling underlying trial themes and establish what they are going to need to prove to carry the day. This is the modus operandi of Imron Aly, a “tenacious lawyer who lives and breathes his cases and does everything he can to win”. Sailesh Patel is another individual who puts clients on his back and gets them across white water. He is great at trial and brings excellent business judgement to the settlement negotiation table too. The dynamic duo are operating at the cutting edge right now and representing Alkem Laboratories against Janssen Pharmaceuticals at the Federal Circuit with the aim of securing for the generic industry the first appellate decision to show that polymorph patents – which brand companies have been obtaining with increasing frequency – can be invalid.

Sidley Austin LLP

“Sidley Austin is a top-tier patent litigation firm in Chicago” and has stars of the trial bar aplenty. First to mind is American College of Trial Lawyers fellow David Pritikin, who has a “towering national reputation” as a technology and life sciences litigator. The same applies for Richard Cederoth, a technically trained lawyer with as good a knowledge of substantive patent law as anyone. “Thomas Rein can step in on a complex matter and get up to speed rapidly.” The executive committee member serves as global IP litigation leader. Commenting on a situation in which Sidley took over an appeal from another firm, one source confides that they saw a “sharp uptick in the quality of the brief writing”. The firm’s Supreme Court and appellate practice is one of the best in the country no doubt, which is thanks to DC-based Carter Phillips and Chicago lawyer Constantine Trela.

Steptoe & Johnson LLP

Intellectual property is a central pillar of Steptoe & Johnson’s full-service commercial practice, and the breadth and depth of its patent litigation offering show just how seriously it takes the discipline. An elite ITC player and vigorous district court and PTAB litigator, it has all the bases covered for its diverse roster of multinational corporations, start-ups and universities. Chicago is the base of operations for several of its marquee trial lawyers, including the excellent Jay Nuttall. As one respondent expounds: “Jay makes you feel like you’re his only client because, no matter how busy he is, he’s always available and instantly knowledgeable regarding all the intricacies of your case. He understands the company culture of the clients he works with, which is facilitated by his outstanding communication skills. He is well connected inside his large national firm and is great at bringing in other specialists to help you as needed. On top of it all, he charges a good hourly rate.” Recently Nuttall has been litigating for global automotive supplier American Axle & Manufacturing as plaintiff in Delaware against a competitor together with John Abramic, a creative lawyer who has no problem getting to grips with any invention. For a specialist in the life sciences, look to Thomas Filarski; he does not turn on the litigation machine and let it run but takes a strategic view of each case to drive smart business outcomes. An exciting addition to the IAM Patent 1000 this year, partly because he is a former Navy SEAL but also because of his exemplary track record at the PTAB, is Kelly Eberspecher.

Taft Stettinius & Hollister LLP

A pathfinder for generic pharmaceutical clients looking to get their products to market, Taft operates a compelling Hatch-Waxman Act litigation practice and is in fine fettle right now. Leader of the team Stephen Auten is rightly receiving a lot of attention; his recent results have been excellent and he has also been blogging on Abbreviated New Drug Application litigation to a wide audience including a number of industry leaders. “Stephen started his career at a law firm before moving in-house and becoming head of the IP department at Sandoz. He understands how clients think and what they need, and does a particularly fantastic job helping in-house counsel explain and present difficult legal issues to senior management. He’s an expert in IP law first and foremost, but can provide sophisticated licensing, regulatory and antitrust advice too. Finally, he is also extremely personable and dedicated.” He and Richard Ruzich form a go-to team for Apotex among others. Like Auten, Ruzich “thinks on a level with his clients” and has “outstanding communication skills”.

Winston & Strawn LLP 

Winston tries – and wins – more patent cases than just about any other firm in the country, which brings great comfort to in-house teams when the very companies they work for are on the line. As one interviewee puts it: “Nobody is going to get fired for bringing in Winston.” In terms of growth and change, things settled down in 2018 as famous new recruits like Melsheimer (Texas) and Vidal (California) settled in following their 2017 move to the firm from Fish. It has pretty much been business as usual, then, for the lawyers in Chicago. George Lombardi and Maureen Rurka showed off the firm’s PTAB and Federal Circuit prowess with a recent win for Amneal Pharmaceuticals, Apotex, Panacea Biotec, Sun Pharmaceuticals and Teva in which all 53 claims in two patents of Eli Lilly’s anti-platelet drug Effient were deemed unpatentable as obvious. This was one of the first big PTAB wins in the pharmaceutical space. An “amazing lawyer”, Lombardi has star power and is among the nation’s best courtroom advocates in the life sciences, or any other field for that matter – he is at that Dan Webb level. Rurka does a lot of pharmaceutical litigation and is building a fantastic reputation as someone who wins her cases. “Aggressive and smart,” Michael Nutter is also “called on by drug companies for their highest-profile cases”. Together with Lombardi and other big names, such as DC’s Chuck Klein, he recently secured a Federal Circuit affirmance of a trial victory for Teva and Hikma invalidating four patents directed to Acorda Therapeutics’ largest product Amprya. On the high-tech side, the names to note are Jonathan Retsky and Michael Brody. Not just a great litigator but a top strategist, Retsky is a former corporate vice president and director of patent operations at Motorola. Brody, who recently stepped down as chair of the IP practice, has tried a remarkable 50 cases to verdict right across the country. He works effectively with other law firms, which is a vital skill in massive cases, and is known for his innovative thinking. Kurt Mathas is someone who can try any case and straddles the life sciences and technology practices. His notable work highlights include a Federal Circuit affirmance of a trial victory for Verizon over Two-Way Media; an important addendum here is that Two-Way Media had won a substantial jury verdict against one of Verizon’s competitors on the same patents, which goes to show that you get better results with Winston playing point.

Other recommended experts

Meredith Martin Addy of Tabet DiVito & Rothstein is a top Federal Circuit lawyer. “Just the sheer amount of appeals she has been involved in is deeply impressive.” Dentons got a hard-hitting trial lawyer in September 2018 when it brought across Timothy Carroll from Perkins Coie. He has a gift for taking over and turning around cases that other firms are struggling with. “A practical lawyer who gets right to the heart of any matter, David Donoghue really understands the most technical aspects of patent law. He is also great at figuring out how to win cases without spending a shed-load of his clients’ money.” He provides strong leadership to Holland & Knight’s national IP group. Flener IP & Business Law was established by Zareefa Burki Flener, an astute patent and trademark portfolio manager with a global view on IP strategy and a deft transactional touch. Groupon litigation go-to Jeanne Gills is one of the stalwarts of Foley & Lardner’s IP group. A versatile practitioner, she conducts district court cases and PTAB proceedings with distinction and oversees IP due diligence efforts with a gimlet eye. Deeply knowledgeable on the topic of software, Ira Kalina is a technology transaction maestro at Drinker Biddle & Reath. Having moved on from Ropes & Gray, Richard McCaulley recently established new boutique McCaulley Dowell. His technical expertise in biomedical engineering, two decades of experience leading trials and exceptional commercial awareness look to stand him in good stead as he builds the firm’s pharmaceutical and medical device practice. Keeping McDermott Will & Emery relevant in Chicago are Charles McMahon and Ahsan Shaikh. As a litigator, McMahon has been tearing it up in recent years, handling multiple trials and ITC investigations. Shaikh is on the portfolio side and is known for his strategic chops and software authority. Li-Hsien Rin-Laures practises at the cutting edge of the life sciences from her own eponymously titled firm, her work on behalf of Professor Emmanuelle Charpentier and CRISPR Therapeutics being a case in point. Her practice is very diverse; she undertakes extensive due diligence projects, issues opinions to Fortune 500s, handles inventorship arbitrations and helps start-ups identify where to look for intellectual property, all of which makes her a truly perspicacious counsellor. David G Rosenbaum’s firm Rosenbaum IP has mastered the art of portfolio management, which is clear from the success of its clients in the acquisitions and licensing market. Rosenbaum is at his best in the medical device and materials science areas. William C Spence of SpencePC is a time-served IP and commercial trial lawyer. He understands how litigation plays into patent monetisation strategy. Former Global IP Law Group man Steven Steger recently set up Steger IP. In a market where patent quality matters more than ever, clients looking to make money from intellectual property should seek out Steger for setting strategy and managing prosecution counsel. He has a fine-grained sense of what makes a patent valuable and how to extract value. Robert Unikel gives Paul Hastings a presence in Chicago. He has been acting for Google in two Federal Circuit appeals arising out of district court and PTAB litigation against ContentGuard Holdings.

Individuals: litigation

  • Kenneth R Adamo - Kirkland & Ellis LLP 
  • Richard Cederoth - Sidley Austin LLP
  • James F Hurst - Kirkland & Ellis LLP
  • Russell E Levine - Kirkland & Ellis LLP 
  • George C Lombardi - Winston & Strawn LLP
  • Bradford P Lyerla - Jenner & Block LLP
  • David Nelson - Quinn Emanuel Urquhart & Sullivan LLP
  • David T Pritikin - Sidley Austin LLP
  • William A Rakoczy - Rakoczy Molino Mazzochi Siwik LLP
  • Kenneth Schuler - Latham & Watkins LLP
  • Michael J Abernathy - Morgan Lewis & Bockius LLP
  • John L Abramic - Steptoe & Johnson LLP
  • Meredith Martin Addy - Tabet DiVito & Rothstein LLC
  • Imron T Aly - Schiff Hardin LLP
  • Stephen Auten - Taft Stettinius & Hollister LLP
  • Paul H Berghoff - McDonnell Boehnen Hulbert & Berghoff LLP
  • Michael L Brody - Winston & Strawn LLP
  • David K Callahan - Latham & Watkins LLP
  • Christopher V Carani - McAndrews, Held & Malloy, Ltd
  • Timothy J Carroll - Dentons
  • David Donoghue - Holland & Knight LLP
  • James R Ferguson - Mayer Brown
  • Thomas J Filarski - Steptoe & Johnson LLP
  • Kevin M Flowers - Marshall, Gerstein & Borun LLP
  • Ralph Gabric - Brinks Gilson & Lione
  • Bruce M Gagala - Leydig, Voit & Mayer, Ltd
  • Jeffrey R Gargano - Morgan Lewis & Bockius LLP
  • Robert F Green - Green Griffith & Borg-Breen LLP
  • Bryan S Hales - Kirkland & Ellis LLP
  • H Michael Hartmann - Leydig, Voit & Mayer, Ltd
  • Reginald J Hill - Jenner & Block LLP
  • Gary E Hood - Polsinelli PC
  • John Labbé - Marshall, Gerstein & Borun LLP
  • Chris Lind - Bartlit Beck Herman Palenchar & Scott
  • Joseph A Mahoney - Mayer Brown
  • John Marlott - Jones Day
  • Edward A Mas II - McAndrews, Held & Malloy, Ltd
  • Sasha Mayergoyz - Jones Day
  • Richard T McCaulley Jr - McCaulley Dowell LLP
  • Timothy C Meece - Banner Witcoff 
  • Laura Beth Miller - Brinks Gilson & Lione
  • Adam K Mortara - Bartlit Beck Herman Palenchar & Scott
  • Jay Nuttall - Steptoe & Johnson LLP
  • Michael K Nutter - Winston & Strawn LLP
  • Thomas D Rein - Sidley Austin LLP
  • Christopher J Renk - Banner Witcoff 
  • Jonathan E Retsky - Winston & Strawn LLP
  • Gary M Ropski - Brinks Gilson & Lione
  • Richard T Ruzich - Taft Stettinius & Hollister LLP
  • Matthew Satchwell - DLA Piper
  • James R Sobieraj - Brinks Gilson & Lione
  • Paul R Steadman - DLA Piper
  • Constantine L Trela Jr - Sidley Austin LLP
  • Terrence J Truax - Jenner & Block LLP
  • Steven Trybus - Jenner & Block LLP
  • Shashank Upadhye - Amin Talati Upadhye LLP
  • David Witcoff - Jones Day
  • Dominic P Zanfardino - Brinks Gilson & Lione
  • John M Augustyn - Leydig, Voit & Mayer, Ltd
  • Stephen P Benson - Katten Muchin Rosenman LLP
  • Joseph J Berghammer - Banner Witcoff 
  • Caryn C Borg-Breen - Green Griffith & Borg-Breen LLP
  • Daniel J Burnham - Nixon Peabody LLP
  • John Conklin - Leydig, Voit & Mayer, Ltd
  • James B Coughlan - Perkins Coie LLP
  • Joseph E Cwik - Amin Talati Upadhye LLP
  • William E Devitt - Jones Day
  • Grantland Drutchas - McDonnell Boehnen Hulbert & Berghoff LLP
  • Kelly Eberspecher - Steptoe & Johnson LLP
  • Herbert H Finn - Greenberg Traurig LLP
  • Jeanne M Gills - Foley & Lardner LLP
  • Christopher Griffith - Green Griffith & Borg-Breen LLP
  • Richard Harris - Greenberg Traurig LLP
  • Benjamin T Horton - Marshall, Gerstein & Borun LLP
  • Sarah Horton - Jenner & Block LLP
  • Sharon Hwang - McAndrews, Held & Malloy, Ltd
  • Mark H Izraelewicz - Marshall, Gerstein & Borun LLP
  • John Kilyk Jr - Leydig, Voit & Mayer, Ltd
  • John S Letchinger - Baker & Hostetler LLP
  • Laura A Lydigsen - Brinks Gilson & Lione
  • Adam Marchuk - Perkins Coie LLP
  • Kurt A. Mathas - Winston & Strawn LLP
  • Deanne M Mazzochi - Rakoczy Molino Mazzochi Siwik LLP
  • Scott McBride - Bartlit Beck Herman Palenchar & Scott
  • Charles M McMahon - McDermott Will & Emery
  • Vera Nackovic - Mayer Brown
  • Sailesh K Patel - Schiff Hardin LLP
  • Maureen Rurka - Winston & Strawn LLP
  • Leif R Sigmond Jr - Baker & Hostetler LLP
  • Brian Sodikoff - Katten Muchin Rosenman LLP
  • William C Spence - SpencePC 
  • Robert A Surrette - McAndrews, Held & Malloy, Ltd
  • Robert W Unikel - Paul Hastings LLP
  • Jason C White - Morgan Lewis & Bockius LLP
  • Thomas Wimbiscus - McAndrews, Held & Malloy, Ltd 
  • Marc Zubick - Latham & Watkins LLP

Individuals: prosecution

  • Joseph J Berghammer - Banner Witcoff 
  • Daniel J Burnham - Nixon Peabody LLP
  • Christopher V Carani - McAndrews, Held & Malloy, Ltd
  • John Conklin - Leydig, Voit & Mayer, Ltd
  • Zareefa Burki Flener - Flener IP & Business Law
  • David B Fournier - Perkins Coie LLP
  • Michael P Furmanek - Marshall, Gerstein & Borun LLP
  • Janet M Garetto - Nixon Peabody LLP
  • Michael S Greenfield - McDonnell Boehnen Hulbert & Berghoff LLP
  • Troy Groetken - McAndrews, Held & Malloy, Ltd 
  • Herbert D Hart III - McAndrews, Held & Malloy, Ltd 
  • Joseph F Hetz - Brinks Gilson & Lione
  • Bradley J Hulbert - McDonnell Boehnen Hulbert & Berghoff LLP
  • Gary R Jarosik - Greenberg Traurig LLP
  • Keith R Jarosik - Greenberg Traurig LLP
  • John Kilyk Jr - Leydig, Voit & Mayer, Ltd
  • Heather Kissling - Marshall, Gerstein & Borun LLP
  • Jeremy Kriegel - Marshall, Gerstein & Borun LLP
  • Charles H Mottier - Leydig, Voit & Mayer, Ltd
  • Michael Muczynski - Marshall, Gerstein & Borun LLP
  • Katherine L Neville - Marshall, Gerstein & Borun LLP
  • Kevin E Noonan - McDonnell Boehnen Hulbert & Berghoff LLP
  • Wil Rao - McAndrews, Held & Malloy, Ltd
  • Li-Hsien Rin-Laures - RinLauresLLC
  • David G Rosenbaum - Rosenbaum IP 
  • Randall G Rueth - Marshall, Gerstein & Borun LLP
  • Ahsan A Shaikh - McDermott Will & Emery
  • Jeffrey S Sharp - Marshall, Gerstein & Borun LLP
  • Andrew D Stover - Brinks Gilson & Lione
  • Marcus Thymian - McDonnell Boehnen Hulbert & Berghoff LLP
  • Donald Zuhn - McDonnell Boehnen Hulbert & Berghoff LLP

Individuals: transactions

  • David Berten - Global IP Law Group LLC
  • Pamela L Cox - Marshall, Gerstein & Borun LLP
  • C Graham Gerst - Global IP Law Group LLC
  • Russell E Levine - Kirkland & Ellis LLP 
  • Ragnar Olson - Global IP Law Group LLC
  • Steven Steger - Steger IP LLC 
  • Thomas J Filarski - Steptoe & Johnson LLP
  • Robert M Gerstein - Marshall, Gerstein & Borun LLP
  • Troy Groetken - McAndrews, Held & Malloy, Ltd 
  • Marcelo Halpern - Perkins Coie LLP
  • H Michael Hartmann - Leydig, Voit & Mayer, Ltd
  • Bradley J Hulbert - McDonnell Boehnen Hulbert & Berghoff LLP
  • Ira Kalina - Drinker Biddle & Reath LLP
  • Charles H Mottier - Leydig, Voit & Mayer, Ltd
  • Vera Nackovic - Mayer Brown
  • Jeffery S Norman - Kirkland & Ellis LLP
  • Jonathan E Retsky - Winston & Strawn LLP
  • Seth Traxler - Kirkland & Ellis LLP
  • Julie M Watson - Marshall, Gerstein & Borun LLP

Luminaries

  • Daniel A Boehnen - McDonnell Boehnen Hulbert & Berghoff LLP
  • David Clough - Polsinelli PC
  • Dan K Webb - Winston & Strawn LLP