United States: Illinois

Firms: litigation

  • Jenner & Block LLP
  • Kirkland & Ellis LLP 
  • Sidley Austin LLP
  • Winston & Strawn LLP 
  • Bartlit Beck Herman Palenchar & Scott
  • Brinks Gilson & Lione
  • DLA Piper
  • Green Griffith & Borg-Breen LLP
  • Latham & Watkins LLP
  • Leydig, Voit & Mayer, Ltd
  • Mayer Brown
  • McAndrews, Held & Malloy, Ltd 
  • Morgan Lewis & Bockius LLP
  • Perkins Coie LLP
  • Quinn Emanuel Urquhart & Sullivan LLP
  • Rakoczy Molino Mazzochi Siwik LLP
  • Steptoe & Johnson LLP
  • BakerHostetler
  • Banner Witcoff
  • Greenberg Traurig LLP
  • Haynes and Boone LLP
  • Marshall Gerstein & Borun LLP
  • McDonnell Boehnen Hulbert & Berghoff LLP 
  • Polsinelli PC
  • Schiff Hardin LLP
  • Taft Stettinius & Hollister LLP

Firms: prosecution

Firms: transactions

BakerHostetler

BakerHostetler’s trans-IP service is exemplary: many of the group’s 170 practitioners have engineering or in-house experience, making it easy for them to sync up with companies on multiple levels. From DC to California, specialists stand sentinel for their clients; acquitting themselves with distinction in Chicago are Leif Sigmond and John Letchinger, both of whom attract enthusiastic praise. On Sigmond, one source comments: “He is an amazing patent litigator – speaking as a lawyer and business owner, I have never seen better. His preparation is extremely thorough, so as a witness, you feel relaxed and able to perform at your best.” Another seasoned trial attorney, “John understands you may have business and budgeting needs that might not be best served by a traditional litigation strategy, and he’s great at thinking outside the box and presenting options. He’s a savvy lawyer who listens carefully and presents information and strategies in a straightforward, digestible manner.”

Banner Witcoff

Hard to beat for substantive IP expertise, storied boutique Banner Witcoff has all the prosecution, strategy and litigation skills you could want. Operating out of the firm’s Chicago headquarters is a crack team of litigators built around stellar trial lawyers Timothy Meece, Christopher Renk and Michael Harris. Whether in district courts, the International Trade Commission (ITC) or the PTAB, Meece knows just what tone to strike. A major contributor to Banner’s hugely successful and dynamic post-grant practice, he is playing a key role on a large team representing Comcast in inter partes reviews against 37 patents and over 1,000 claims asserted against it by Rovi. Renk litigates across the IP spectrum with aplomb, handling complex patent matters with élan. He recently earned a summary judgment of no patent infringement for Nike against Akeva; and has also secured several successful PTAB rulings for Nike, including in inter partes reviews brought by Adidas. Harris is “a sharp dude and a really practical problem solver”. “Michael is excellent at reading people and situations, and making the right decisions.” He links up with Renk for Nike and with Meece to defend Lexmark International; there is lots of evidence of great teamwork like this at Banner. Zooming in on the prosecution and counselling side brings Binal Patel into view: a member of the board of directors, he stands out for his incredible versatility. He undertakes utility patent prosecution for Comcast, as well as post-grant proceedings, and is the main relationship partner for Bank of America Corp, on whose behalf he recently secured several notable patents protecting the future of banking technology. Like Patel, Joseph Berghammer is a well-rounded strategist; he takes the lead protecting the innovations of insurance provider Allstate.

Bartlit Beck Herman Palenchar & Scott

Bartlit Beck “handles significant trials with exceptional proficiency and success” across many legal practice areas. For big-ticket patent suits, there are several superb advocates to choose from, including Steven Derringer and John Hughes, both of whom garner spontaneous positive mentions from eminent peers: “Steve really listens to clients and understands what they want to achieve; he then dives deep into his cases and puts forth a tremendous effort to bring about the desired outcomes.” “If a case looks like it may be going to trial, John is an excellent choice, especially if it’s a high-exposure matter.” In 2019 the pair went out to bat for Meso Scale Diagnostics in a Delaware patent infringement action against Roche Diagnostics, winning a $137 million verdict following a six-day trial. They debut in the IAM Patent 1000 this year, joining fellow resolute advocates Chris Lind, Scott McBride and Adam Mortara, who all make repeat appearances.

Brinks Gilson & Lione

Brinks saw significant changes in 2019, including the departure of a life sciences team and the retirement of Gary Ropski, who achieved many special things over the course of a remarkable 43 years with the firm. What remains certain moving into 2020 and beyond, however, is that Brinks remains an elite IP player in which total trust can be placed by companies looking to procure, enforce and monetise patents. The heart and soul of the prosecution practice in Chicago are Andrew Stover and Joseph Hetz, who have mastered the mechanical and electrical arts respectively. Stover sees around corners and shines at long-term patent family construction; while Hetz has a talent for putting IP rights to work commercially – the patents he secures are often lucratively licensed. One of the top first-chair litigators on deck, Dominic Zanfardino earns praise from peers: “Dom brings a calming presence to litigation – he’s excellent at keeping everyone grounded and not letting things escalate. At the same time, he advocates very strongly for his clients.” Like Zanfardino, James Sobieraj has an “even-keeled demeanour”, owing partly to his “vast experience in patent litigation and profound knowledge”. For those heading into battle, Laura Lydigsen and Mark Remus settle nerves with tight game plans and pristine records; they are currently representing Amneal Pharmaceuticals in two multi-defendant Hatch-Waxman cases. The abundant appellate expertise they bring to the practice gives their trial wins an air of finality.

DLA Piper

“DLA Piper’s patent litigation team in Chicago is excellent. Paul Steadman and Matthew Satchwell are the show there, and both are highly intelligent and thoughtful trial attorneys with exceptional knowledge of the automotive industry.” They manoeuvre deftly in any forum, but are particularly well suited to the fast pace of ITC proceedings; their diligence, dynamism and directness get clients the powerful remedies they need to protect and expand their patch.

Global IP Law Group LLC 

Global IP Law Group’s polished patent professionals have cracked the code of IP value creation. Collectively, they understand the business of patents from all angles – prosecution, enforcement and transactions – and know what levers to pull to realise outstanding returns on the investments that companies put into the protection of their intangible assets. When this is done through licensing and other transactional arrangements, Ragnar Olson takes the lead; the former Ocean Tomo director is highly prized for his strategic insight. Where remuneration stems from litigation efforts, David Berten is in the driving seat – although he has also presided over some of the largest patent deals in history. Graham Gerst is similarly versatile: he knows how the litigation game is played and the rules of licensing. His CV is a great read too, with highlights including a stint at gold-rated litigation powerhouse Kirkland & Ellis and time as senior counsel to the deputy attorney general at the Department of Justice.

Green Griffith & Borg-Breen LLP

Majority female-owned partnership Green Griffith & Borg-Breen is not trial-blinkered as a litigation boutique; it partners closely and early with clients on business strategy, giving it intimate familiarity with products and commercial objectives when disputes do flare. Those who serve in lead counsel roles do not just show up in the courtroom, but help to put battle plans together from day one, which helps them tell better stories at trial – and ones with not a single hole in them. In its focused domain of the life sciences, the set performs assuredly, thanks to deep scientific and industry expertise. On the work front, a team including Caryn Borg-Breen and Christopher Griffith has been fighting the corner of Clarus Therapeutics against Lipocine – the companies have been competing for years to be the first to receive Food and Drug Administration (FDA) approval for an oral testosterone undecanoate product, and vying at the USPTO to get patents covering each other’s products. In 2019 the FDA approved Clarus’s new drug application for JATENZO – the first such product to be approved in more than 60 years – kick-starting district court litigation now also being handled by the firm. Emer Simic and Robert Green, meanwhile, successfully defended Horizon Therapeutics’ Orange Book-listed patent for its $1.1 billion RAVICTI product at the Federal Circuit.

Greenberg Traurig LLP

By maintaining long-term relationships, Greenberg Traurig has cultivated a highly efficient approach to patent prosecution: professionals such as Gary Jarosik and Keith Jarosik know their clients’ innovations inside out, as well as their rivals’ products and the existing prior art, making their targeting much more strategic as a result. Backing this up, one patron observes: “Gary and Keith really understand what we are looking to achieve and develop robust portfolios that help us stake out a strong competitive position. They understand the patent landscape and the latest technologies, and ensure our patent assets are diverse and business relevant. Their partnership is the reason our engagement has been continuing for several decades now.” The two brothers link up to represent Chevron in the industrial equipment and power tools area; and advise the University of Notre Dame on prosecution, strategy and technology transfer. Greenberg Traurig is also an outstanding 360-degree patent firm, with accomplished advocates such as Chicagoans Richard Harris (the global patent litigation co-chair) and Herbert Finn reflecting its dynamic approach to litigation. Part of what makes Harris and Finn so sophisticated as lead counsel is their exposure to other aspects of patent practice, including prosecution and transactions; they see cases from a multitude of angles, along with many paths towards their resolution.

Haynes and Boone LLP

In Summer 2019 Haynes and Boone made a smart play to strengthen its Chicago IP presence, hiring Ralph Gabric and Laura Beth Miller from Brinks. They bring an enhanced contentious skillset to the firm and add to what is already one of the country’s best post-grant practices. Partnering well together, they have been acting for RJ Reynolds Vapor in two multi-patent suits – one against Fontem Ventures, involving multiple parallel inter partes reviews, and the other against Fuma International.

Jenner & Block LLP

Mighty litigation outfit Jenner & Block has experienced some notable turnover in its patent practice lately: Bradford Lyerla recently moved on to Tabet DiVito & Rothstein and Steven Trybus to Locke Lord. However, clients with patent litigation needs are still in safe hands, with the likes of Terrence Truax, Reginald Hill and Sara Horton to call on; although each at different stages of their careers, these lawyers are equally well equipped to tackle high-exposure cases and are unflappable in court. Truax is prized for his leadership qualities, which are readily on display both in his management and mentoring role within the firm, and in his wider involvement in the Chicago business and civic community. He co-chairs the patent litigation and counselling practice with Hill, whose grasp of substantive patent law and litigation-on-the-merits style do him great credit. Hill’s 2019 got off to a flying start with a Federal Circuit affirmance of a grant of summary judgment of invalidity on behalf of Schneider Electric, which was sued by Power Analytics Corporation for violations of patent and other laws. Adept in multiple technical domains, Horton is at her best on pharmaceutical matters, which have made up a significant proportion of her caseload in recent years. She has achieved many great things for Hospira.

Kirkland & Ellis LLP 

Patent litigation and transactions heavyweight Kirkland & Ellis handles matters of the utmost importance for the companies involved. Its experience trying patent cases to verdict and winning them is virtually unmatched, which inspires confidence when entire businesses are on the line. As trial ready as they come, James Hurst pulls off career-defining mega-wins seemingly every year. The American College of Trial Lawyers (ACTL) fellow reigns supreme in the pharmaceutical space. He and Amanda Hollis recently secured a unanimous jury verdict for Abbott Laboratories against Rembrandt Diagnostics, combining creative approaches at trial – including live science experiments – with a strong fact-led approach. Hollis litigates across the technical spectrum, but has a flair for complex life sciences matters. Bryan Hales also continues to be an engine of the pharmaceutical group. One of the longest-serving anchors of the firm’s top litigation practice is Russell E Levine; over the course of his nearly 34-year tenure, he has masterminded many of the set’s greatest high-tech successes. “Russell builds strong teams and mentors the associates on them very effectively. He’s a deeply strategic thinker with exceptional commercial awareness – for in-house counsel, the value he brings is easy to show to the business. He is also very amenable to creative alternative fee arrangements.” Levine also flexes deep licensing and transactional expertise and contributes much on the deal side, alongside Seth Traxler, Jeffrey Norman and Neil Hirshman – all of them crack negotiators of the sorts of international transactions that underpin seismic shifts in industry.

Latham & Watkins LLP

Not to be trifled with, Latham’s patent litigation battlegroup can head full-tilt into the fiercest firefights and emerge victorious. “At the senior level, it has stand-out lawyers such as Kenneth Schuler and Marc Zubick. Both are real patent heads who understand the nuance in the law and know where traps for the unwary lie. They’re tough advocates, but not crazy aggressive – careful and thorough, they know when to push and when to dial it back.” The pair are linchpins of a special forces-style pharmaceutical practice. When high-tech disputes conflagrate, David Callahan’s presence on a trial team is a game changer. He is currently acting for LG Chem in a major ITC trade secret case together with DC’s Bert Reiser. Latham garners positive mentions for the responsibility it gives to impressive younger lawyers: folks like Schuler, Zubick and Callahan do not hog the limelight, but focus on developing talent, knowing this will ultimately help clients long term.

Leydig, Voit & Mayer, Ltd

One of the most striking things about Leydig Voit & Mayer is its versatility in patent practice: all its senior lawyers boast encyclopaedic knowledges of the fundamentals of patent law and, over the course of lengthy careers, have cultivated uncommonly broad skill sets. Any matter that any technology company brings here will be taken care of by people with an unswerving commitment to quality and business-guided outcomes. Protean professionals who distinguish themselves in this way include Charles Mottier, Michael Hartmann, John Conklin, Bruce Gagala and John Augustyn – all long-time denizens of the IAM Patent 1000 rankings. Mottier, who was elected as a Leydig shareholder in 1986, shows uncommon dedication to clients; he is trusted as a portfolio manager, opinion giver and deal negotiator. German-born Hartmann has unbeatable international experience and architects smart global strategies. Conklin leverages his trial lawyer, in-house counsel, electrical engineering and USPTO examiner experience to tackle multifaceted problems. Gagala is the go-to for life sciences litigation and post-grant proceedings – though he covers many technical fields and prosecutes to boot. Likewise, while chiefly acting as a lead trial lawyer in commercially consequential litigations, Augustyn also prosecutes, which serves him well in post-grant settings. The unequivocal PTAB master, though, is John Kilyk, a talismanic strategist and the ensemble’s best-known practitioner.

Marshall Gerstein & Borun LLP

“Marshall Gerstein is a class apart in terms of its breadth and depth of patent experience, and can bring to bear all the prosecution, litigation and transactions expertise any client could want.” Looking at the boutique through a life sciences lens, this well roundedness comes into sharp focus, with multiple members of its industry group recommended on each of the practice area-specific ranking tables. Heather Kissling, Katherine Neville, Michael Muczynski and Jeffrey Sharp maintain the highest standards of prosecution, portfolio management and counselling in the pharmaceutical and biotech fields. Many who create life-changing therapies choose to partner with prosecution chair Kissling: “She takes a very strategic view and understands the role that each patent plays in a portfolio and how it – and the whole – contribute to the advancement of clients’ overall goals”. Immunology PhD Neville safeguards the rights and business interests of non-profits, start-ups and big pharma worldwide. Muczynski prosecutes with a litigator’s eye to guarantee long-term protection through thick and thin. Managing partner Sharp knows the sector well, having worked at its cutting edge as a prosecutor and deal lawyer for three decades. Forming a litigation triumvirate ready for any challenge are John Labbé, Kevin Flowers and Mark Izraelewicz. Labbé and Flowers recently linked up to give Onyx Therapeutics a killer one-two punch in a District of Delaware Hatch-Waxman case against Cipla and several other defendants, with Labbé putting on a cross-examination clinic. All three joined forces for Amgen against Hospira in the first biosimilar case under the Biologics Price Competition and Innovation Act to be tried to a jury and result in a damages verdict; the District of Delaware judge awarded $80 million to Amgen. The superstar dealmakers for the pharmaceutical and biotech industries, meanwhile, are Pamela Cox and Julie Watson. Cox is absolute dynamite, as folks are only too happy to confirm: “Pam is a total thought leader on the subject of IP licensing and her experience shines through in every word she speaks. She provides a wonderful service, too.” Watson works magic for start-ups and universities, and partners dynamically with Cox on complex matters requiring carefully considered, intricate strategies. There is no shortage of resources either for companies from other sectors, including high-tec and medical devices: here again, there are protectors, collaborators and fighters on board. Randall Rueth is an ace up the sleeve for software, e-commerce, insurance and financial services companies looking to procure and manage patents; Jeremy Kriegel provides a satisfyingly complete and commercial service to medical device clients; and Michael Furmanek demonstrates impressive mastery of the mechanical and electrical arts. Robert Gerstein and Benjamin Horton respectively carry robust transactions and litigation practices on their shoulders. “Incredibly smart, reasonable, level headed, efficient, well spoken, a great writer, realistic and practical, Bob exhibits virtually all of the qualities you’d associate with a top lawyer. He doesn’t hesitate to pitch in whenever you need him and he’s very fair on billing issues.” “A highly intelligent guy, Ben gives well-thought-out advice and is an excellent relationship partner who only looks out for his clients.”

Mayer Brown

In the life sciences, Mayer Brown is a dead cert for patent litigation, transactions and portfolio management instructions. Active across all these areas – and doing a brilliant strategic job – is Chicago’s Vera Nackovic; she makes light work of global patent prosecution and the protection of cornerstone pharmaceutical products, has a commercial sensibility that lends well to licensing and collaborations, and displays a knack for facilitating the resolution of Hatch-Waxman litigations. Another touchpoint for drug companies is James Ferguson, an ACTL fellow with finely whetted advocacy skills, which he has applied dozens of times to winning effect in district courts and at the Federal Circuit. Ferguson is also a leader in the field of international arbitration.

McAndrews, Held & Malloy, Ltd 

Across all patent fronts, but particularly litigation and post-grant proceedings, McAndrews is firing on all cylinders. Appreciative of the team’s “deep substantive knowledge, attention to detail, thoroughness, strategic acuity and efficiency”, life sciences and technology companies instruct it on the tasks that have the greatest business impact. When victory in a dispute is a commercial imperative, for example, they dial up Edward Mas, David Headrick, Sharon Hwang, Robert Surrette or Wil Rao. Mas, the most prominent trial lawyer of the group, has handled seminal cases throughout his career, protecting billion-dollar pharmaceutical products and scoring large damages awards for medical device companies; in the past 12 months, a large trade secret litigation and major arbitration have kept him sharp. Headrick, meanwhile, has been carrying out sterling inter partes review work of late for a global surgical device entity. According to sources: “There’s nobody better to have by your side in strategic negotiations, critical conflict resolution or bet-the-company litigation than Dave.” On medical, electronics and telecommunications-focused suits, Hwang crafts persuasive oral arguments thanks to rigorous preparation and a hands-on attitude; she immerses herself in the details of cases and takes positions she believes in – both of which enhance her courtroom credibility. Not just a litigator, Surrette is a true counsellor: relationships to him are more than transactional and clients regard him as a member of their core team. He brings staunch leadership to the firm, serving as its president. Cut from the same cloth, Rao maintains many long-term connections with those he represents, not least as a result of his ability to productively and commercially address any patent issue. All of these lawyers engage in the ensemble’s flourishing post-grant practice – though Herbert Hart and Thomas Wimbiscus are the star quarterbacks here. Hart cannot be beaten for experience and procedural knowledge, having handled USPTO contested proceedings for many years – not just the past seven, like many. Wimbiscus shows up near the top of the league table for number of patent owner representations; he gets the call because he gets the results. Likewise Peter McAndrews, a new entrant in the IAM Patent 1000 who is endorsed as a “calm and confident advocate who manages a case well and brings an excellent team”. “Pete has an absolute command of subject matter and is respected by decision makers.” With McAndrews, there’s plenty else to report on: for example, Christopher Carani takes charge of a phenomenal designs practice; and Troy Groetken performs flawlessly in strategic IP development, problem solving and licensing in the life sciences.

McDonnell Boehnen Hulbert & Berghoff LLP 

All 70-plus attorneys at McDonnell Boehnen Hulbert & Berghoff hold science or engineering qualifications, and nearly half of them have PhDs or other advanced degrees; the Chicago boutique is thus well equipped to take on virtually any technology in any sector. Its prosecution practice has been going gangbusters in the past 12 to 18 months, making waves in the artificial and machine learning areas in particular, thanks to new IAM Patent 1000 inclusion Michael Borella. The software marvel previously managed large teams of engineers on major projects and is the named inventor on more than 70 US patent applications, as well as a lecturer and prolific author. His representation is a real value-add – for one client, for whom Borella recently devised and executed a patent harvesting strategy which brought forth inventions that led to the drafting of over 200 patent applications. For early-stage companies, he locks in airtight protection for foundational patents, creating a platform for rapid advancement. Doing work of a similar nature, leaders of the electrical practice group Bradley Hulbert and Marcus Thymian are much more vital business partners than just external representatives; both have ample contentious experience, which informs their long-range approach to patenting and strategy. A cutting-edge pharmaceutical and biotech practice rests in the hands of life sciences celebrities Kevin Noonan and Donald Zuhn, who are prized for their thought leadership and insight into where patent law is heading in the sector; their advice is great for today and even better for tomorrow. Over on the litigation side, the picture is one of consistency, with Paul Berghoff overseeing a steady flow of Hatch-Waxman cases. Berghoff’s style is down to earth and he keeps his presentations simple and straightforward, which makes him highly effective. The firm’s prosecution and litigation skillsets come together well in post-grant settings, especially when Grantland Drutchas is conducting the orchestra. Demonstrating impressive versatility, he serves as chair of the PTAB, licensing and litigation and appeals practices.

Morgan Lewis & Bockius LLP

Companies making serious strategic investments in intellectual property for defensive or offensive purposes turn to Morgan Lewis as their preferred patent partner – its litigation record and bench depth are particularly morale-boosting when the stakes are high. Across and within offices, the group is highly collaborative; as two (or three or four) heads are better than one, this paves the way for high success rates. When Chicago lawyers Michael Abernathy, Sanjay Murthy and Jason White come together, for example, great things happen. They recently obtained a complete appellate victory for Praxair in a 10-patent abbreviated new drug application case filed by Mallinckrodt Hospital Products, INO Therapeutics and Ikaria, for which they won Litigators of the Week honours. At trial, Abernathy is a compelling storyteller, but never strays from the substance of his case. He is not afraid to give clients hard advice, which has earned him longstanding relationships of trust. Like Abernathy, Murthy has extensive ITC experience; he also showcases exemplary post-grant know-how. White’s skilled pilotage of the group is worthy of note, in addition to the trial skill he deploys so decisively in the most multilayered suits. Jeffrey Gargano brings to the group deep knowledge of regulatory, patent and antitrust law as applied to the pharmaceutical sector. A Hatch-Waxman specialist with a long – and growing – record defending Tolmar, among others, he has a faculty for exploiting the deficiencies in his opponents’ cases in ways they cannot recover from.

Nixon Peabody LLP

Nixon Peabody’s Chicago patent group continues to thrive; without suffering departures, it has been building out at the associate level, while astutely tapping into the wider contentious resources of the firm to handle high-rolling suits. At the vanguard is Daniel Burnham who, alongside extensive arbitration activities, has been busy on cases for TDK Corporation and Exegy, Inc, a leading provider of technology for high-speed processing of financial information. He is excellent at digging deep and unearthing information that might otherwise stay buried to form solid positions, which he then communicates clearly to arbitration panels, judges and juries. As a registered patent attorney and seasoned counsellor, he can also cover a lot of ground outside of a disputes context: “Dan is a rarity in the patent world, given his combination of prosecution and litigation expertise. Beyond just legal skill, Dan has a genuine personality and sense of humour, and is truly customer focused. He’s great from a cost perspective and is open and receptive to alternative fee arrangements.” Another good utility infielder is Janet Garetto; she relishes a diverse range of patent and trademark instructions and is brilliant at using different IP tools to shape clients’ entire portfolios in line with business needs. She works across multiple industries, but has sharpened her focus on food and beverages lately; attuned to trends and developments, she provides percipient counsel.

Perkins Coie LLP

With over 100 USPTO-registered patent attorneys and agents on hand, Perkins Coie is richly resourced to provide prosecution and strategic counselling across all major industries. In Chicago, David Fournier is a star of its life sciences offering and a coal-and-ice partner to emerging biotech companies, clinical-stage pharmaceutical companies and others. His acuity of vision when it comes to the patent landscape allows him to make the portfolio moves that vault clients over the competition. He makes judicious use of the firm’s sophisticated in-house patent analysis team, which is also a vital conduit of insight for transactional aces such as Marcelo Halpern, a dealmaker par excellence in the blockchain space. Perkins Coie is perhaps best known for its contentious prowess; across all forums, it litigates over 100 patent cases per year, prevailing in every conceivable way. It has been on a hot streak in the ITC thanks to Section 337 specialists such as James Coughlan, a former lead staff attorney at the ITC’s Office of Unfair Import Investigations; and in district courts and the Federal Circuit, thanks to trial lawyers including Adam Marchuk. Marchuk was recently behind a major appellate win for True Health Diagnostics invalidating two Cleveland Clinic patents for claiming a natural law; the decision  highlighted that case law beats the USPTO when it comes to the final say on patent eligibility.

Polsinelli PC

One of the top movers and shakers in the patent arena, Polsinelli has been growing fast – its department now numbers 165 attorneys, agents, scientists and other professionals, whom it deploys on thousands of filings and myriad post-grant proceedings and litigations each year. One of its many fine practices is the pharmaceutical litigation offering run out of Chicago by Gary Hood. He adopts a much more targeted stance than the conventional no-stone-unturned approach: from the start of an engagement, he establishes the issues he is going to win on and then works them up with everything he has got – he never wastes money on things unless they will  affect the end game. “Highly client focused and efficient, Gary keeps his eyes on the prize. He has a calm, confident and reassuring demeanour.” Hood has a valued life sciences colleague in David Clough, who has supported companies large and small over decades. With a panoramic perspective on industry issues, he is gifted at contextualising legal theory in business reality.

Quinn Emanuel Urquhart & Sullivan LLP

Regularly hitting tech industry headlines, Quinn Emanuel is peerless when it comes to hardcore patent litigation. Its indelible success in the practice stems from the quality of its many trial lawyers. Chicago-based David Nelson co-chairs the muscular national IP litigation division and is an inspiring advocate with over 35 jury trials on his résumé, showcasing his sharp technical mind and great narrative gifts. He recently served as lead counsel for Qualcomm in a series of worldwide disputes against Apple; in one hotly contested case – a trial in the Southern District of California – the jury returned a verdict finding all five patents valid and infringed by Apple, with Apple held liable for a $1.41 royalty rate per iPhone.

Rakoczy Molino Mazzochi Siwik LLP

“When Rakoczy Molino takes up a life sciences litigation matter, you don’t have to worry about anything. It’s a world-class outfit that is methodical, dedicated and resourceful at all times.” “The way in which it integrates a deep technical and regulatory understanding of pharmaceutical products with expertise in patent law and great commercial awareness is outstanding; its holistic approach is essential to achieving business objectives.” Garnering special praise are William Rakoczy and Paul Molino, both of whom play key leadership roles on the team, which comprises 14 partners, four counsel, 16 associates and three technical advisers. “Bill and Paul are extremely thorough in their analysis and highly organised with respect to case management. Before starting any given project, they take the time to understand your needs as they relate to desired level of work product, overall goals and budgeting restrictions. They deal with opposing counsel in a firm but fair manner, and excel at everything from writing to oral advocacy and negotiation.” Both are also highlighted for their ability to reduce complex legal and scientific issues to their simplified form and present them effectively. Also recommended is Eric Hunt, a “diligent, detail-oriented and incredibly responsive attorney who affords high-quality, vigorous representation”. He recently linked up with Rakoczy to act for Mylan in biosimilar litigation against Amgen. Deanne Mazzochi “lives and breathes life sciences intellectual property” and is “marvellous” as both a litigator and far-sighted strategic counsellor. Brilliant on appeal, she recently secured a Federal Circuit Copaxone victory for Sandoz against Teva.

Schiff Hardin LLP

Never less than 100% trial ready, Schiff Hardin’s patent litigation team shines for its spirited representation of generic drug companies. It shares clients with other top life sciences ensembles, but delivers emphatic wins at a lower price point than its competitors. Making this high-end practice a force to be reckoned with are Imron Aly and Sailesh Patel, two first-chairs warmly praised by the market: “Imron possesses a unique blend of top-flight trial skill and deep scientific expertise, and establishes immense credibility and great rapport with fact finders through his effective presentation of complex issues. His attention to detail is second to none, as is his leadership in bet-the-company cases. Unlike many, he is more interested in building relationships than in billing time and uses his firm’s resources astutely while driving very successful outcomes.” “Sal is not just a consummate professional, but a good citizen whose tireless efforts fostering diversity and mentoring the younger generation are worthy of special note. As a lawyer, he has huge expertise in Hatch-Waxman litigation, and is well versed in life sciences industry issues and regulatory law more broadly.” Joining them in the IAM Patent 1000 for the first time this year is seasoned advocate Kevin Nelson who, together with Aly, is defending Fresenius Kabi and navigating a patent thicket to help it bring a generic version of branded leukaemia drug Imbruvica to the market. Alongside his representations, Nelson has been providing valuable strategic counsel on legal and regulatory matters arising out of biosimilars.

Sidley Austin LLP

Sidley Austin has a well-deserved reputation as a patent litigation match winner. As testament to this, it is often called in to take over from other trial counsel and turn bad situations around. For example, Chicago’s Constatine Trela and Thomas Rein were dialled up by CalAmp Corp, which was previously found to have wilfully infringed four patents in a trial conducted by another firm. Authoritative Supreme Court advocate Trela took the lead on the appeal of the decision, in which the Federal Circuit vacated the compensatory damages, enhanced damages and attorneys’ fees, and set aside the jury verdict of wilful infringement. Global head of the IP litigation practice Rein then handled a new trial on remand, ultimately reducing a $20 million-plus award – with ongoing royalties – to $4.6 million. Another inveterate winner in the Chicago headquarters is Richard Cederoth, a heavyweight with a dynamic court and ITC practice in the software, computer technology and semiconductor theatres.

Steptoe & Johnson LLP

Steptoe & Johnson takes the business criticality of intellectual property to heart and offers a comprehensive menu of service options encompassing all aspects of patent protection, enforcement and monetisation. Home to a line-up of high-calibre trial lawyers, the Chicago office is an engine of the firm’s national patent litigation practice – and one with a huge amount of horsepower and torque. IP group co-chair Jay Nuttall pulls away from the line rapidly to get the jump on opponents in commercially pivotal lawsuits. He and Chicago managing partner John Abramic form an elite pairing to give competitive bite to patrons such as American Axle & Manufacturing, which they are currently representing in the District of Delaware and at the PTAB. Kelly Eberspecher is another quick thinker who thrives under pressure. References highlight his leadership abilities: “Kelly utilises Steptoe’s deep and talented team of patent litigators across multiple offices to obtain the best results for clients. He does an excellent job identifying how best to deploy each attorney’s skillset to carry out the overall litigation strategy.” On the frontlines of notable pharmaceutical cases, Thomas Filarski strings victories together like a champion NBA team for patrons such as Sandoz.

Taft Stettinius & Hollister LLP

Demonstrating great composure in technically complex cases, Stephen Auten and Richard Ruzich form the core of a vibrant Hatch-Waxman and biosimilar litigation practice at Taft. They act for a who’s who of generic drug companies, putting in polished performances when they are needed most. Auten is esteemed for his industry and strategic knowledge, cultivated through his private practice and in-house experience – he served as head of intellectual property at Sandoz US – and his extensive extra-curricular writing activities. Dispensing perspicacious counsel across all phases of the patent lifecycle, Ruzich also brings much more to the table than those who merely litigate.

Winston & Strawn LLP 

No matter which way you look at it, Winston’s patent litigation practice is top of the line. More than 25 partners in its 100-attorney team have first-chaired significant patent trials, which reflects the strength and depth of its bench. By tackling cases from the start with appellate victory in mind, they are impeccably prepared for the courtroom and bring significant leverage to negotiations. Headliners in Chicago include George Lombardi and Michael Nutter, both of whom are enthusiastically endorsed by peers: “Those in need of star power had better call Lombardi, who does a tonne of high-end work. He’s excellent strategically and is a really grounded individual who has a nice touch with judges, juries and people in general.” “Mike quickly figures out complex legal and technical issues and then just gets after it – he’s very tenacious and sees things through for clients.” Lombardi recently achieved a trial victory for Teva Pharmaceuticals, which was accused of patent infringement by Swedish company Orexo; his ability to go deep into the science was crucial in this jury trial, in which 10 expert witnesses testified. They spearhead a superlative pharmaceutical litigation practice alongside patent, antitrust and regulatory ace Maureen Rurka and provident strategist and savvy trial lawyer Kurt Mathas. High-tech companies also have big names to rely on – Michael Brody, for example. The multi award-winning litigator has many striking big-money verdicts to his name in diverse fields from telecommunications to semiconductors and light-emitting diodes.

Other recommended experts

When it comes to patent trials, post-grant proceedings and alternative dispute resolution (ADR), there is no better strategic sounding board than Kenneth R Adamo. The former Kirkland & Ellis lawyer has decades of lead counsel experience and has just about seen and done it all in patent litigation practice. He now runs his own self-titled law office. Meredith Martin Addy’s stellar track record as a litigator and appellate advocate gives her an excellent platform from which to dispense strategic IP growth advice. This is her focus now at AddyHart, a boutique she founded in January 2019. Robert Barrett is a discerning choice for counselling and prosecution briefs. The captain of K&L Gates’s IP division maintains longstanding relationships with companies such as Nestlé and Baxter Healthcare, which speak to his quality and high standards of service. A master at high-volume prosecution, he also provides valuable counsel on myriad issues, including freedom to operate and enforcement matters. Timothy Carroll flies the Dentons flag high in Chicago. A trial lawyer known for his tenacity and punchy advocacy, he is a peak performer in tough cases in which a hard nose is no bad thing. Together with DC colleagues Mark Hogge and Song Jung, he is currently representing LG Chem against competitor SK Innovation in a crucial trade secret case. “David Donoghue thinks like an in-house lawyer and has an uncanny ability to know what his clients need without them having to ask for it – he makes life a lot easier. His handling of complex patent litigation matters, including those relating to SEPs, is exceptional; he’s practical and effective in his advocacy and has great judgement.” The well-established trial lawyer leads Holland & Knight’s national IP group. Active internationally, Flener IP founder Zareefa Burki Flener deftly manages large and diverse portfolios for innovators in the life sciences and mechanical areas alongside major IP due diligence and transactional instructions. Stationed in Foley & Lardner’s Chicago office, Jeanne Gills stands out for the breadth of her trial experience in intellectual property. When it comes to patent litigation, she takes confidence from her sparkling advocacy skills and is comfortable in any forum – district courts, the ITC and the PTAB. Faegre Drinker’s Ira Kalina can do pretty much everything that a technology company could ask of a lawyer. The nifty negotiator is at his best executing on technology and IP-driven deals. Bradford Lyerla recently took his talents to Tabet DiVito & Rothstein. The former Jenner patent practice chief is “top-drawer in patent litigation, no question”. Richard McCaulley recently joined Haley Guiliano, significantly enhancing the boutique’s contentious capabilities. He is a rousing trial leader and clever strategist with a phenomenal hit rate in the pharmaceutical and medical device areas. The top IP representatives of McDermott Will & Emery in Chicago are Charles McMahon and Ahsan Shaikh. McMahon litigates across the IP spectrum, but is best known for his patent prowess, which he demonstrates taking charge of trial and post-grant teams. Shaikh is making a strong push in virtual reality and other hot high-tech areas as a prosecutor and patent analytics thought leader. “Ahsan is exceptional at capturing inventions and drafting and prosecuting high-quality patent applications. He leverages data analytics to make smarter prosecution decisions. He is also doing much to promote gender diversity in the innovation space.” Organic chemistry PhD Gregory Morris provides strong leadership to Hongiman’s life sciences IP litigation practice. He has abundant experience serving pharmaceutical originators in Hatch-Waxman cases and PTAB proceedings. Taking the reins in high-profile CRISPR work, Li-Hsien (Lily) Rin-Laures practises at the cutting edge of the life sciences. “Lily’s abilities and service are truly exceptional, and she stands out from the crowd of patent attorneys at name-brand top law firms. She has a keen eye for strategic opportunities, a deep understanding of complex science and patent law, and superb communication skills.” She runs biopharmaceutical boutique RinLaures LLC. With an instinctive ability to pinpoint the commercial worth of any piece of intellectual property, David G Rosenbaum of Rosenbaum IP makes for a hugely value-added patent portfolio developer. His sensitivity to business issues stems from the dynamic licensing and transactions practice he runs alongside prosecution, and from his medical device, pharmaceutical and chemical industry knowledge. William Spence utilises an expansive IP toolkit to resolve thorny disputes; he is deeply insightful on patent, trade secret, trademark, copyright and unfair competition law, and an expert in litigation and all forms of ADR. He captains the side at SpencePC, an IP and complex litigation boutique. Steven Steger engages in much more sophisticated risk/benefit analyses than the vast majority of lawyers. Having previously been in-house, he understands not only the commercial side of intellectual property but also how the decision-making process works, enabling him to give trenchant business advice to go with rigorous legal support. Few in the country are better than the Steger IP founder at patent valuation, strategic counselling, portfolio and licensing programme management, and patent buying and selling. Steven Trybus is a recent addition to Locke Lord’s fine-tuned roster of patent experts – a well-balanced litigator with deep district court, PTAB and Federal Circuit experience. Paul Hastings’ Robert Unikel is a go-to for technology industry leaders – Google being a prime example. He handles many important cases for the internet titan and has all the resources he needs to net consistent success. He marshals teams well, leveraging his expertise to coordinate large defence groups with tight, proactive strategies. Shashank Upadhye and Joseph Cwik founded Upadhye Cwik in June 2019. Their offering is unique in its focus on IP, FDA and commercial law, and issues arising at their intersection in the pharmaceutical, medical device, food and beverage and cannabis industries.

Individuals: litigation

  • Kenneth R Adamo - Law Office of KRAdamo 
  • 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 - Tabet DiVito & Rothstein LLC
  • David Nelson - Quinn Emanuel Urquhart & Sullivan 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 - AddyHart PC
  • Imron T Aly - Schiff Hardin LLP
  • Stephen Auten - Taft Stettinius & Hollister LLP
  • Paul H Berghoff - McDonnell Boehnen Hulbert & Berghoff LLP
  • Caryn C Borg-Breen - Green Griffith & Borg-Breen LLP
  • Michael L Brody - Winston & Strawn LLP
  • David K Callahan - Latham & Watkins LLP
  • Christopher V Carani - McAndrews, Held & Malloy, Ltd
  • Timothy J Carroll - Dentons
  • Steven Derringer - Bartlit Beck Herman Palenchar & Scott
  • David Donoghue - Holland & Knight LLP
  • Kelly Eberspecher - Steptoe & Johnson LLP
  • James R Ferguson - Mayer Brown
  • Thomas J Filarski - Steptoe & Johnson LLP
  • Kevin M Flowers - Marshall Gerstein & Borun LLP
  • Ralph J Gabric - Haynes and Boone LLP
  • 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 Hughes - Bartlit Beck Herman Palenchar & Scott
  • John Labbé - Marshall Gerstein & Borun LLP
  • Chris Lind - Bartlit Beck Herman Palenchar & Scott
  • Edward A Mas II - McAndrews, Held & Malloy, Ltd
  • Richard T McCaulley Jr - Haley Guiliano LLP
  • Timothy C Meece - Banner Witcoff
  • Laura Beth Miller - Haynes and Boone LLP
  • Paul Molino - Rakoczy Molino Mazzochi Siwik LLP
  • 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
  • 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 - Locke Lord LLP
  • Robert W Unikel - Paul Hastings LLP
  • Shashank Upadhye - Upadhye Cwik
  • Jason C White - Morgan Lewis & Bockius LLP
  • Dominic P Zanfardino - Brinks Gilson & Lione
  • John M Augustyn - Leydig, Voit & Mayer, Ltd
  • Joseph J Berghammer - Banner Witcoff
  • Daniel J Burnham - Nixon Peabody LLP
  • John Conklin - Leydig, Voit & Mayer, Ltd
  • James B Coughlan - Perkins Coie LLP
  • Joseph E Cwik - Upadhye Cwik
  • Grantland Drutchas - McDonnell Boehnen Hulbert & Berghoff LLP
  • Herbert H Finn - Greenberg Traurig LLP
  • Jeanne M Gills - Foley & Lardner LLP
  • Christopher Griffith - Green Griffith & Borg-Breen LLP
  • Michael J Harris - Banner Witcoff
  • Richard Harris - Greenberg Traurig LLP
  • David Headrick - McAndrews, Held & Malloy, Ltd
  • Amanda Hollis - Kirkland & Ellis LLP
  • Benjamin T Horton - Marshall Gerstein & Borun LLP
  • Sarah Horton - Jenner & Block LLP
  • Eric Hunt - Rakoczy Molino Mazzochi Siwik LLP
  • Sharon Hwang - McAndrews, Held & Malloy, Ltd
  • Mark H Izraelewicz - Marshall Gerstein & Borun LLP
  • John Kilyk Jr - Leydig, Voit & Mayer, Ltd
  • John S Letchinger - BakerHostetler
  • 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
  • Peter J McAndrews - McAndrews, Held & Malloy, Ltd
  • J Scott McBride - Bartlit Beck Herman Palenchar & Scott
  • Charles M McMahon - McDermott Will & Emery
  • Sanjay K Murthy - Morgan Lewis & Bockius LLP
  • Vera Nackovic - Mayer Brown
  • Kevin M Nelson - Schiff Hardin LLP
  • Binal Patel - Banner Witcoff
  • Sailesh K Patel - Schiff Hardin LLP
  • Mark H Remus - Brinks Gilson & Lione
  • Maureen Rurka - Winston & Strawn LLP
  • Leif R Sigmond Jr - BakerHostetler
  • Emer Simic - Green Griffith & Borg-Breen LLP
  • William C Spence - SpencePC
  • Robert A Surrette - McAndrews, Held & Malloy, Ltd
  • Thomas J Wimbiscus - McAndrews, Held & Malloy, Ltd
  • Marc Zubick - Latham & Watkins LLP

Individuals: prosecution

  • Robert Barrett - K&L Gates
  • Joseph J Berghammer - Banner Witcoff
  • Michael Borella - McDonnell Boehnen Hulbert & Berghoff LLP
  • 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
  • Binal Patel - Banner Witcoff
  • Wil Rao - McAndrews, Held & Malloy, Ltd
  • Li-Hsien (Lily) 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
  • Neil S Hirshman - Kirkland & Ellis LLP
  • Bradley J Hulbert - McDonnell Boehnen Hulbert & Berghoff LLP
  • Ira Kalina - Faegre Drinker Biddle & Reath LLP
  • Charles H Mottier - Leydig, Voit & Mayer, Ltd
  • Vera Nackovic - Mayer Brown
  • Jeffery S Norman - Kirkland & Ellis 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