United States: Illinois
- Kirkland & Ellis LLP
- Sidley Austin LLP
- Winston & Strawn LLP
- Bartlit Beck Herman Palenchar & Scott
- Brinks Gilson & Lione
- DLA Piper LLP (US)
- Jenner & Block LLP
- Jones Day
- Latham & Watkins LLP
- Leydig Voit & Mayer Ltd
- Mayer Brown LLP
- McAndrews, Held & Malloy, Ltd
- McDermott Will & Emery
- Perkins Coie LLP
- Quinn Emanuel Urquhart & Sullivan LLP
- Steptoe & Johnson LLP
- Amin Talati Upadhye LLP
- Banner & Witcoff, Ltd
- Green Griffith & Borg-Breen LLP
- Greenberg Traurig LLP
- Katten Muchin Rosenman LLP
- Marshall, Gerstein & Borun LLP
- McDonnell Boehnen Hulbert & Berghoff LLP
- Morgan Lewis & Bockius LLP
- Polsinelli PC
- Rakoczy Molino Mazzochi Siwik LLP
- Ropes & Gray LLP
- Taft Stettinius & Hollister LLP
Amin Talati Upadhye LLP
With patent, regulatory and commercial expertise in abundance, Amin Talati Upadhye can cure any IP headache for companies operating in the food and beverages, cosmetics, nutraceutical and pharmaceutical sectors. An icon of the drug industry, Shashank Upadhye leads the way. “He is as knowledgeable as they come in the Abbreviated New Drug Application (ANDA) litigation space and, given the extent of his in-house experience, is incredibly business savvy.” One of his top trial attorneys is Joseph Cwik, whose innovative litigation tactics are often imitated but never matched.
Banner & Witcoff, Ltd
IP legend Banner & Witcoff has “dependable lawyers with excellent technical credentials and great practical experience” who coalesce into a consistently reliable and “solid team with a lot of continuity”. As well as being a high-performance prosecution machine, the firm has a lot of cachet in the post-grant space – it is one of the most active in the nation in front of the US Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) – and can be trusted to put in resonant performances in district court shootouts. A master of virtually all trades in the Chicago branch is Joseph Berghammer, who makes his debut in the IAM Patent 1000 this year. “Incredibly knowledgeable about substantive patent law, and a trusted business partner who acts in the best interests of his client always, Joe is dedicated to the pursuit of perfect patent protection. He’s brilliant, industrious, convincing and fierce but fair as a litigator, and a world-class attorney and leader of an exceptional team.” Focused on litigation, Timothy Meece also garners glowing notices. “He focuses on his cases with a laser-like intensity and truly masters the facts. He is very detail-oriented and really widely respected.” In 2017, he followed up a 2016 appellate win for Lexmark International in its dispute with Impression Products with another high-profile Federal Circuit victory, this time on behalf of WMS Gaming against Rembrandt Gaming Technologies. Another safe bet for a litigation win that aligns with broader business interests is Christopher Renk, who has been busy with Nike against adidas and Skechers in the PTAB.
Bartlit Beck Herman Palenchar & Scott
“If you need special litigation weapons and tactics, look to Bartlit Beck”, a boutique renowned as one of the top contentious powerhouses in the country. “Eclectic and nouveau”, it has mastered all the standard plays in patent litigation, but often chooses paths less followed and has a track record that attests to the fine calibration of its strategic instincts. Any one of Philip Beck, Chris Lind and Adam Mortara can carry the day in the most complex battles over technology and market positioning. Spotlighted for praise, “Mortara is a real hard charger and very smart. He is super aggressive, yet never reckless”.
Brinks Gilson & Lione
“Brinks Gilson & Lione does an outstanding job when it comes to acquiring patent rights and is phenomenal around patent strategy more broadly.” When thinking along these lines, commentators invariably have mechanical ace Andrew Stover and electrical expert Joseph Hetz in mind; taking precise temperature measurements of entire markets, they are both incredibly astute as portfolio builders and developers. Immense technical acuity is also showcased by a stacked roster of excellent litigators, nearly all of whom have degrees in science or engineering. The senior-level advocacy talent at Brinks is something special; Ralph Gabric, James Sobieraj, Laura Beth Miller, Gary Ropski and Dominic Zanfardino all have years in the game and résumés replete with eye-catching wins. Board of directors member Gabric has long provided inspiring leadership to his colleagues and clients and though suitable for any complex case, is best known for his extensive Hatch-Waxman Act litigation expertise. Having just completed a five-year term as president of the firm, veteran first chair Sobieraj is getting back into the cut and thrust of constant courtroom combat – and loving it. Like Sobieraj, Miller brings 110% to every engagement, whether in the International Trade Commission (ITC) – a forum about which she has specialist knowledge – or district courts around the country. A big-picture thinker, Ropski relishes the strategic aspect of his craft and, identifying innovative ways forward in tangled disputes, is able to see the fifth corner in the room. Much more a trusted adviser than just a hired gun, Zanfardino has, like several of those already mentioned, spent his entire career at Brinks; the collective is uncommonly stable, which enhances its ability to think in the long term on behalf of clients. Debuting in the listings this year is rising star Laura Lydigsen, who chairs the appellate group. The former Federal Circuit law clerk is “incredibly talented and always looking to add value”. One of the top IP boutiques in the nation, Brinks can now call itself an international player, having opened its office in Shenzhen, China in December 2017. It is the first western law firm to have an office in the burgeoning technology hub.
DLA Piper LLP (US)
DLA Piper’s Chicago patent litigation team does not just show up on the doorstep when companies get sued – it likes to get to grips with clients and understand their business at an intimate level. In line with this, the DLA Piper partners are hands on and routinely go the extra mile to visit those they represent – wherever they are in the world – which, for Paul Steadman and Matthew Satchwell, means lots of trips to Japan. Hailed by eminent peers as “strong advocates who produce excellent written and oral work”, these two dynamic and no-nonsense litigators are “devastatingly effective in the courtroom”. They are in especially hot demand for representation when fights kick off in the automotive space, but their wins are notched up across the high-tech domain. They score additional points for running things at the ITC and making judicious use of the firm’s rich chest of global resources whenever it is advantageous.
“Steven Steger and the whole team at Global IP Law Group are exceptionally knowledgeable about what drives patent value. They map out the best monetisation strategies and are a must for strategic projects in which the ultimate goal is to fulfil your potential in the marketplace. No matter how experienced you are in business, you always learn a great deal working with the firm.” Whether you want, for example, an overview of different commercialisation options or a thorough landscape analysis on potential areas of interest, Steger, Ragnar Olson, C Graham Gerst, David Berten and others execute flawlessly. Olson is a patent transactions past master and an erstwhile Ocean Tomo director and chemist. Gerst is looked up to as an all-around IP authority and fields requests from the press, Congress and the Federal Trade Commission, among others, to share his worldly wisdom. Berten takes charge of the set’s litigation endeavours, which are increasing in volume and scope; he has gained reinforcements recently, having added experienced litigator Alison Aubry Richards to the ranks.
Green Griffith & Borg-Breen LLP
“Green Griffith & Borg-Breen has incredible experience and expertise in all aspects of pharmaceutical patent litigation. The team punches well above its weight, leans in hard to win and has a success rate that speaks for itself. It is also mindful of costs and you won’t find a better-value option out there.” Operating with exceptional cohesiveness and efficiency as a unit are Robert Green, Christopher Griffith and Caryn Borg-Breen, three seasoned partners whose “performance in every case is exemplary”. “Each demonstrates the commitment required for top-notch trial work and they all thrive in high-pressure situations. They prepare thoroughly to put on a great case and are extremely effective tearing into the other side’s experts and dismantling their theories.” Their recent big-time wins include successfully upholding the validity of Horizon Pharma’s Orange Book-listed patent for its PENNSAID non-steroidal anti-inflammatory drug in a Hatch-Waxman litigation, because of which Teva cannot launch a generic version in the United States until 2027. Deserving of special mention as “a pioneer in the ANDA space”, Green also successfully defended Dexcel Pharma Technologies against alleged infringement of Takeda’s patent for lansoprazole delayed-release orally disintegrating tablets, paving the way for Dexcel to launch the first over-the-counter version of such a product in the United States.
Greenberg Traurig LLP
With an IP and technology practice comprising of nearly 200 attorneys, approximately half of whom are USPTO registered, Greenberg Traurig can be all things to all technology companies. In addition to its comprehensive service offering, which encompasses all aspects of patent prosecution, litigation and monetisation, extraordinary value for money is another USP; the entrepreneurially minded lawyers here are highly sensitive to the business needs and budgetary constraints of their clients. Microcosmic of the firm itself, the Chicago team has a little something for everyone. Those looking to procure commercially valuable patents and steal a march on their competitors can turn to software and business methods ace Gary Jarosik and electro-mechanical engineering buff Keith Jarosik with 100% confidence. They frequently collaborate in the service of companies including Universal Electronics, Dick’s Sporting Goods, Chevron and many others. On the other hand, if litigation storm clouds gather, companies can get peace of mind by calling Herbert Finn and global patent litigation co-chair Richard Harris. Finn litigates winningly across the IP spectrum, as does Harris, who has chalked up over four decades in the game. Frequent collaborators, they have recently been giving LG Electronics a strong one-two punch.
Jenner & Block LLP
Morale is high at formidable litigation alpha Jenner & Block, which has been tearing it up in the life sciences lately: 2017 started with a bang when Steven Trybus led the team to victory in the PTAB on behalf of the Broad Institute, the Massachusetts Institute of Technology and Harvard against UC Berkeley and the University of Vienna in a dispute over who owns the patent for the CRISPR genome-editing technology. As if this was not enough to secure his listing in the IAM Patent 1000, Trybus is an important figure in the Federal Circuit Bar Association and also gets excellent references: “Steve is very thorough, analytical and calculated in his work, and he’s a good team player who listens to others to help him get to the best result. He has his clients’ interests in mind at all times and is extremely responsive.” Later in the year, he and Bradford Lyerla then came up big for West Coast biosimilars company Coherus BioSciences, getting the PTAB to invalidate one of AbbVie’s key patents protecting Humira. A born-and-bred trial lawyer who enjoys the confidence of influential decision makers, Lyerla “continues to percolate in important cases”. Over in the high-tech and automotive fields, Lyerla’s patent litigation and counselling practice co-chair Reginald Hill continues to stick and move to secure knockout PTAB and courtroom results. Of late, he has come up trumps for Nissan North America by invalidating patent claims asserted by Diamond Coating Technologies in the PTAB, and turned somersaults for Schneider Electric in its hard-fought and complex patent, antitrust and false advertising battle with Power Analytics Corporation. Someone else who flourishes in these sort of multi-faceted interdisciplinary gun fights where life is on the line is Terrence Truax. Slightly away from the frontlines, although certainly no less sharp as a strategic sounding board, he currently serves as the venerable organisation’s managing partner.
“From an in-house perspective, Jones Day just gets it when it comes to complex patent litigation. Its lawyers understand business broadly and the commercial implications of their legal decisions and strategies, and they come to favourable resolutions in multi-pronged lawsuits that take you into district courts, the PTAB, the Federal Circuit and the Supreme Court.” The fulcrum around which the Chicago practice turns is David Witcoff who, over three decades working at the IP coal face, has set many litigation benchmarks. He marries a down-to-earth sensibility with a knife-like technical and legal mind – a combination which underpins his credibility and likeability in court. At the moment, he is acting for SharkNinja in a big-ticket competitor dispute with Dyson which implicates the Supreme Court’s 2016 Samsung Electronics v Apple decision concerning the scope of the term ‘article of manufacture’ in Section 289 of Title 35 of the US Code for damages purposes. Fellow trial lawyer John Marlott has also been in the limelight of late, acting for the SAS Institute in a Supreme Court challenge to the PTAB’s practice of issuing final written decisions with respect to some, but not all of the claims challenged by petitioners under the America Invents Act. William Devitt, meanwhile, is part of a large international team retained by Qualcomm as counsel in its global standard-essential patents battle with Apple. What is clear from these examples is that corporate America is happy putting Jones Day in the driving seat when seeking to change the law or safeguard business health. Critical to this is the firm’s heavyweight appellate practice which is run by DC’s Greg Castanias – who is handling the SAS matter alongside Marlott – but vitally assisted by others including Sasha Mayergoyz. He knows the lay of the land at the Federal Circuit as well as anyone in the city of Chicago and also makes the IAM Patent 1000 US national appellate listing alongside just 33 others nationwide.
Katten Muchin Rosenman LLP
Katten’s patent litigation team identifies its best offensive or defensive strategies from the outset and focuses fully on executing them; unlike firms that throw the kitchen sink at a case, it does not lose time on unimportant points and bleed credibility as a consequence. It takes experience and confidence to adopt such an approach, and supplying both in plenitude are Brian Sodikoff and Stephen Benson, two litigators who have every right to be bullish given the track record they are building in the life sciences domain. Sodikoff, who chairs the national patent litigation group, blends the right quantities of patent, regulatory and competition law expertise and sprinkles in a fine-milled understanding of the pharmaceutical sector’s commercial nuances, meaning he has practical solutions at the ready whatever a case throws up. Benson knows what tone to strike in his pleadings and how to make the content of them compelling for different audiences.
Kirkland & Ellis perpetually maintains a seat at the US patent litigation prefects table. Crucial to this, it has a world-class group of ITC lawyers, to which it has recently added Paul Brinkman a top-drawer pharmaceutical litigation team; an already solid but increasingly impressive post-grant capability; and a specialised and respected appellate group. Famously, it also has “exceptionally strong bandwidth” and many senior trial lawyers who can spearhead an offensive or build an impregnable defence. Many of these are stationed in Chicago, including gold-tier triumvirate Kenneth Adamo, James Hurst and Russell E Levine. Adamo’s name resonates with the business elite, not only because of its synonymy with trial and appellate excellence, but also its association with integrity, commercial expertise and encyclopaedic patent law knowledge. Worldwide management committee member Hurst – an American College of Trial Lawyers fellow – anchors the life sciences practice and is someone to whom many a top drug company maintains a hotline. Lifelong Kirkland & Ellis lawyer Levine, a patent litigation and dispute resolution all-rounder, routinely garners outstanding feedback from the market: “He focuses on what success looks like for your business – this is rare among outside counsel, but Russell has ingrained this approach into his team. Accordingly, he provides advice that is very strategic and practical. He takes an owner mentality to everything he does and tries to keep client costs to a minimum at all stages; he will also advise you against long, drawn-out legal proceedings if he sees a commercial argument for resolution another way. His technical expertise is spotless, too.” Another name to note is Gianni Cutri, an “unassuming, humble guy with great litigation sense and a gift for seeing around corners”, who “is deserving of much greater recognition”. He has represented many a high-tech industry leader – Intel and Cisco come to mind – and met with success in all manner of forums. Likewise Bryan Hales, a pharmaceutical and medical device maven with vast experience in both litigation and arbitration. Many of Kirkland’s litigators understand the intricacies of patent monetisation – both Levine and Hales maintain active licensing practices, for example – but there are tried-and-true transactional experts on deck too. Seth Traxler supplies strong leadership to the firm’s global technology and IP transactions division, key cogs within which are Jeffery S Norman and Gregg Kirchhoefer. Traxler’s tech-intensive M&A experience is virtually second to none – he is a master craftsman of complex, international deals of all stripes – while Norman is also a computer programmer and a fount of insight on software patent issues generally. Kirchhoefer knows the ins and outs of the IT sector as well as anyone.
Latham & Watkins LLP
The lawyers at Latham & Watkins “advocate zealously but put pettiness aside and take a reasonable approach to patent litigation”. As one of the nation’s heavyweights, and “a firm with strong brand appeal in Chicago”, it “consistently produces an absolutely outstanding work product”. Running a dynamic life sciences practice out of the local office is Kenneth Schuler, who “never fails to live up to his excellent reputation”. “He approaches things in a very nuanced way and comes up with subtle but highly effective arguments. He always puts together an impressive team too.” In a complex 13-patent case with parallel proceedings in the District of Delaware and the USPTO, he is representing patent owner Mallinckrodt against Praxair in connection with the latter’s generic version of Mallinckrodt’s INOmax product. With him on this case is another “upstanding guy”, David Callahan – “an excellent and experienced trial lawyer” who is also “brilliant at client management”.
Leydig Voit & Mayer Ltd
Cherished Chicago IP boutique Leydig Voit & Mayer is in fine fettle whichever way you look at it: litigation is up, despite market headwinds; likewise prosecution, with new clients coming on board regularly; and in the PTAB as in past years, the set continues to do great things. To top it off, the side’s patrons seem happy too: “The firm performs its role with the utmost integrity – its lawyers are very collaborative, and they take into consideration the broader implications of their legal advice. Inherently interested in technology and technically proficient, they are also commercially attuned and very responsive. For the quality of work they deliver, their fees are also reasonable.” Forming a tight-knit squad are president John Kilyk and shareholders Bruce Gagala, John Conklin, John Augustyn and Charles H Mottier, whose collective IAM Patent 1000 listings span the prosecution, litigation and transactions tables. Putting on a clinic across the board, Kilyk is a prosecution lodestar for prestigious and discerning client the National Institutes of Health, a lead counsel for Samsung Bioepis in biosimilar litigation and a top interference and all-around post-grant pro. He frequently collaborates with Gagala (as in the Samsung Bioepis matter), who is a litigation and dispute resolution ace with a wealth of trial and appellate experience. Similar in that respect, Conklin also procures patents with aplomb and renders an A-to-Z protection and enforcement service to many, including Huawei Technologies. Augustyn is equally versatile and can be counted on to see the big picture and serve up satisfying 360-degree legal and business solutions. A Leydig shareholder since 1986 and a board member, Mottier knows how to get the best out of the entire organisation for the benefit of his and his colleagues’ clients; the mechanical engineering aficionado is especially admired as a patent strategist. Last but not least, Michael Hartmann has a German background and as a result is as perspicacious as US lawyers come about legal proceedings in Germany and other European jurisdictions. He is in pole position to extinguish the flames of any international conflagration.
In the life sciences sector, many competitors benchmark themselves against Marshall Gerstein and, in so doing, inevitably find out that they have got some catching up to do. The illustrious Chicago boutique has the best-equipped toolkit for protecting, enforcing, defending and commercialising the most valuable patent rights of ultra-innovative pharmaceutical, biotech, healthcare and medical device companies. “Few firms, if any, have been on both sides in biosimilar litigation, but Marshall Gerstein has.” Its trial lawyer troika comprising Kevin Flowers, Mark Izraelewicz and John Labbe knows all the ingredients that go into a successful courtroom campaign – and the precise measurements of each. In terms of life sciences prosecution and strategic counselling talent, the set is, with Jeffrey Sharp, Heather Kissling, Michael Muczynski and Katherine Neville in the fold, exceptionally well resourced. As well as managing the firm, Sharp protects cutting-edge biotech inventions to the hilt. As is the case for Kissling, whose strategic input goes down a treat with inventors, in-house legal professionals and C-suite executives. Leveraging his litigation experience, pharmaceutical don Muczynski casts impermeable protection matrices. Microbiologist and immunologist Neville maintains, perhaps, the most diverse practice, and serves in the name of biotech and pharmaceutical companies large and small, as well as numerous non-profits and research institutions. Speaking of the latter, the star here is life sciences transactional doyenne Pamela Cox, a thought leader on university technology transfer, among other subjects. Nobody is more passionate about their work and clients than Cox, who stays the course in overwhelmingly complex, touch-and-go negotiations. For high-tech companies, there is plenty on offer at Marshall Gerstein too. IP litigation chair Benjamin Horton acquits himself with distinction in district courts and at the PTAB and proves himself a master of the electrical arts. He has a faculty for semiconductor cases. Prosecutors and portfolio development artisans Michael Furmanek and Jeremy Kriegel hail from mechanical engineering backgrounds. Chair of the industrial and mechanical technologies practice Furmanek has a particularly impressive résumé, awash with private practice, engineering and in-house experience. Cox’s transactional counterpart on this side of the practice is Robert Gerstein, who is famed for his incisive business mind.
Mayer Brown LLP
For pharmaceutical companies that want to protect patents, license technology in or out and enforce their rights when challenged – and do all these things globally – Mayer Brown’s holistic support is just the ticket. One of the main conduits is Chicago’s Vera Nackovic, a registered patent attorney with a broad prosecution and portfolio management, IP transactions and patent litigation skill set. She is a master at achieving the protection goals of her clients, at keeping their products alive and well – and exclusive – and enabling them to capitalise on their research investment and technology acquisition. Viewed through the prism of Nackovic, Mayer Brown is fantastic, but it is even more compelling when you consider its deep bench of life sciences lawyers, many of whom have PhDs and industry experience. Co-chairing the group is Joseph Mahoney, a doctor of pharmacy and patent strategy guru with rich litigation experience. Fellow Chicagoan James Ferguson also plays a key role and stands out as one of the most experienced pharmaceutical arbitration experts in the land.
Active on many different patent litigation fronts, McAndrews, Held & Malloy is in a healthy groove despite the vagaries of the US patent market; companies continue to flock here, given the team’s trial acumen, track record and flexibility. Celebrating this, the firm has two new faces in the IAM Patent 1000 listings this year in Thomas Wimbiscus and Sharon Hwang – the former standing out for his more than three decades of frontline litigation experience and limitless post-grant expertise, the latter for her recent representation of Stryker against Zimmer in a long-running battle that has been up to the Supreme Court, whose ruling reset the standard for enhanced damages. They join a redoubtable crew of advocates who have, for several consecutive years, more than earned their recognition; this includes Edward Mas II, Robert Surrette, Wil Rao and Christopher Carani. Mas II is always ready to lead the charge, whatever the technical subject matter of a case; he is a partner who likes to get down into the trenches with his team and really develop the trial themes, as opposed to someone who parachutes in just to sing the descant in the courtroom. President Surrette performs with precision throughout all litigation phases and has trial and appellate experience that inspires confidence. In conference rooms and courtrooms, Rao also hits the nail on the head. His multifariousness as an IP lawyer leads to well-rounded arguments and presentations at trial. “Carani really cut his teeth in the design world in enforcement. He’s doing more prosecution work now as well and making a really good design patents career. He is a really creative thinker.” Pound for pound, the firm has one of the busiest and best post-grant practices around. Much credit for this goes to Herbert Hart III who, as a result of his interference background, knows all the nuances of post-issuance practice going back many years.
McDermott Will & Emery
McDermott Will & Emery prides itself on the exhaustiveness of its domestic and international patent offering – it is deep in prosecution, litigation and transactions and committed across the board. Across the firm, lawyers in different areas talk to each other and readily share knowledge and insight, which makes them all very effective counsellors. Trusted advisers in Chicago include Margaret Duncan, a high-level strategist particularly around contentious matters, and Ahsan Shaikh, a young partner who is doing brilliantly as a portfolio developer and patent analyst. One area in which its Chicago contingent stands out is life sciences patent litigation, which Jeffrey Gargano takes the lead on. “A likeable guy, but certainly no pushover”, he is hailed as a “really strong litigator” by his peers. He is currently representing a top-10 generic pharmaceutical company in a knotty 10-count complaint which involves, among other things, allegations of trade secret misappropriation. McDermott’s trial lawyers are not confined to one industry or subject matter – they have eminently transferable advocacy skills as well as strong technical acumen in a general sense. Charles McMahon’s versatility manifests in his faculty for patent, trademark, copyright and unfair competition cases. He’s been hustling and bustling with DC-based Jay Reiziss in several cases recently, fighting the corner of ZTE in multiple forums, for example.
“Loaded with technical experts, McDonnell Boehnen Hulbert & Berghoff stands out among Chicago boutiques.” “From a prosecution standpoint, it is just phenomenal”, particularly in the biotech and pharmaceutical industries which are the focus of eminent PhDs Donald Zuhn and Kevin Noonan. Together, they edit the Patent Docs blog which disseminates invaluable information on developments in patent law; you will not find lawyers with a more contemporary knowledge of the market than these two. Of Noonan, who garnered particularly warm praise during the IAM Patent 1000 2018 research cycle, clients comment: “Kevin is one of the top IP attorneys in the United States with expansive technical knowledge and an overarching, deep intuitive understanding of patent law and the dynamic nature of change within it from legal, political, technological and commercial perspectives. Quick to grasp novel concepts and place them correctly in context, and willing to incorporate outside knowledge or people when needed, he has a high rate of success getting patents granted and then extending their value. He is also efficient and a pleasure to work with.” One source confides: “My sole goal is to ensure the longevity of my relationship with him.” Working a similar magic, but on high-tech fronts, is chair of the electrical section Marcus Thymian. Not your run-of-the-mill external counsel, he positions himself to provide the most commercially apt advice by partnering very closely with his clients. Addressing business needs is what founding partner and fellow electrical engineer Bradley Hulbert also does best. The litigation side of the practice, which is anchored by Paul Berghoff and Daniel Boehnen, is doing particularly well in the ANDA domain. Outside of the life sciences, a lot of patent litigation has moved over to the USPTO – a development which plays into the hands of this group, which is well suited to chalk-talk to a technically sophisticated audience.
Morgan Lewis & Bockius LLP
Companies that want to use their patents in ruthlessly competitive business environments take courage when Morgan Lewis & Bockius is looking out for their interests. The firm’s litigation unit is highly motivated and draws strength from a collaborative culture in which lawyers are not hung up on origination credit; a team effort is one of the keys to the group’s recent successes. Energetic leadership is another and supplying this from their Chicago base are frequent running mates Michael Abernathy and Jason White. A trial lawyer through and through, Abernathy masters the details of the law and the facts and his preparation is the opposite of superficial. His broad shoulders can support the weightiest of burdens, but he is keen on mentoring and giving experience to younger lawyers around him too – this is something many clients like to see. White conducts superb crosses but can also explain complicated technology lucidly to judges and juries – one of the hallmarks of a good trial lawyer.
Nixon Peabody LLP
Nixon Peabody has broad IP horizons and engages in patent and trademark activities at a high level; therefore, it is great at identifying diverse and creative ways in which clients can protect their intangible assets. Fitting nicely into this set-up is Chicago partner Janet Garetto, a proactive counsellor who identifies and executes business-focused solutions to the sort of problems that keep in-house legal professionals lying awake at night. In 2017, she undertook some substantial diligence projects while maintaining her strategic advisory and patent prosecution role for patrons, including a leading chemical multinational. Another comfort blanket for clients, whatever comes up, is Daniel Burnham, who maintains a three-fold counselling, prosecution and litigation practice. Particularly active in the latter this past year, the renaissance man deploys a panoramic perspective to chart courses to commercially apt dispute resolutions. His well-roundedness makes him well suited to PTAB work, of which lately he has done plenty for Edgewell Personal Care Brands.
Perkins Coie LLP
Attesting to the end-to-end scope of Perkins Coie’s patent practice in Chicago, the firm has individuals listed on each of the Illinois prosecution, transactions and litigation tables in this year’s IAM Patent 1000. Its local ambidexterity mirrors its national versatility. Making his first appearance in the directory this year is David Fournier, a life sciences connoisseur who develops portfolios for pharmaceutical companies with the commercial and industry knowledge of an insider; having previously worked in clinical research and as a patent agent at Pfizer, he has a granular understanding of how drug development functions as a business. He was the firm’s first prosecutor in Chicago when he joined in 2013; since then he has been building out the practice nicely, while drawing judiciously on resources in other offices. Another debut is made by Marcelo Halpern, who co-chairs the technology transactions and privacy practice. Peers profess “huge respect for his intellect and negotiation skills” and laud his “refined understanding of interpersonal dynamics and psychological motivation”. The past year has been an exciting one from a litigation perspective, particularly for Timothy Carroll, a trial lawyer to bring in when everything is going against you. He has a gift for creative thinking and employs something like method acting to really live his cases. Of counsel Michael Warnecke is another veteran advocate to dial up when only a win will do.
As part of its national expansion drive in intellectual property, Polsinelli is building quite the life sciences practice in Chicago. In May 2017 it added David Clough to the roster, an eminent microbiologist “who can do it all in patents”. “He has decades of experience and has handled some of the highest-profile biotech cases, the likes of which only a few practitioners can do.” With the firm since 2011, trial lawyer Gary E Hood maintains a laser focus on arguments that will move the needle in pharmaceutical litigation, his experience of which is unbeatable.
Quinn Emanuel Urquhart & Sullivan LLP
“A go-to for high-stakes litigation”, Quinn Emanuel is uniquely positioned to handle multi-front global patent wars, with its endless line-up of elite US trial lawyers and robust presence in Europe (particularly Germany) and Asia. “The best Quinn people are the best in the industry”, and David Nelson is certainly among them. “Amazing on his feet at trial”, he routinely gets selected for the biggest cases. As an example, Qualcomm has instructed him as lead counsel in multiple patent infringement actions against Apple.
Rakoczy Molino Mazzochi Siwik LLP
Specialist litigation and IP shop Rakoczy Molino Mazzochi Siwik presents to the market a highly sophisticated life sciences capability. It has all the technical, litigation, regulatory and commercial expertise a pharmaceutical company could ever want. The helmsman is William Rakoczy, “an excellent and extremely strategic trial lawyer who develops creative arguments that others overlook”. “He’s very strong on all the complex rules and procedures governing pharmaceutical litigation and is a top regulatory expert too.”
Ropes & Gray LLP
Although it spun off its rights management practice, Ropes & Gray remains committed to intellectual property and continues to flaunt noteworthy patent litigation and transactions expertise. Richard McCaulley plants the firm’s flag in Chicago where he maintains a full-blooded pharmaceutical and medical device litigation practice. Lawyers like to say they understand what makes their clients tick commercially – having founded a successful medical device company, McCaulley can really back up that assertion.
Sidley Austin LLP
Sidley Austin’s name resonates in the upper echelons of the technology industry; the firm puts together potent trial teams fronted by dynamic leaders and can be counted on to deliver the goods when it matters most. Celebrated nationally, David Pritikin is a star advocate who constantly writes headlines with big wins across the life sciences and high-tech spectrum. He is a fellow of the American College of Trial Lawyers, as is Chicago IP group chief Thomas Rein. Another top gun is Richard Cederoth, who litigates principally in the areas of software, computers and semiconductors. Commentators call him “a highly effective communicator who knows how to teach the complexity of patent law and scientific concepts to people without a background in either”. When matters go up on appeal, the firm can deploy an expert panel of Federal Circuit and Supreme Court specialists co-chaired by Constantine Trela, who is a veteran of more than 80 appeals.
Steptoe & Johnson LLP
Cross-fertilising the skill sets of separate departments and the expertise found in different offices, Steptoe & Johnson takes an effective interdisciplinary approach to solving complex IP problems; it avoids slipping into tunnel vision mode and shapes well-rounded strategies as a result. This is distinctly apparent in the patent litigation theatre, especially when James Nuttall is giving stage directions. A must for intricate telecoms and other technology suits, he nets rave reviews from the parties he represents. “Jay understands the commercial needs of his clients and the state of play in their industries and, as such, provides practical advice that is easy to implement.” “He manages case strategy in light of business objectives excellently and works thoroughly but efficiently. In oral arguments, he is also extremely persuasive.” Nuttall is also fleet of foot in the pharmaceutical domain, although this is predominantly the province of John Abramic. Handling numerous cases for Rhodes Pharmaceuticals and Purdue Pharma, he is on a roll at the moment. Someone else with a deft touch in Hatch-Waxman cases is the venerable Thomas Filarski. He supports pharmaceutical and other companies in many meaningful ways, given his dual litigation and transactional expertise. Above all, “he knows how to extract value out of patent rights”, and “understands the changing nature of the marketplace”. “He seems to be on the cutting edge at all times.”
Taft Stettinius & Hollister LLP
Taft earns its IAM Patent 1000 stripes thanks to a gilt-edged pharmaceutical and life sciences litigation practice. This is led by Stephen Auten, “one of the most knowledgeable ANDA litigation experts” who “has the right answer for any question”. The former head of intellectual property at Sandoz, he understands the drug industry from the inside out. At his right hand is Richard Ruzich, “another top lawyer” and multi-talented litigator and IP asset manager.
“Winston & Strawn has a super deep bench which it draws on very effectively for the most complex pieces of litigation.” The overall patent litigation market is down, which has undoubtedly affected some lesser firms, but there are plenty of quality cases out there, meaning Winston is firing on all cylinders. Regardless of the market though, you could not slow the likes of George Lombardi and Michael Nutter down if you tried. Lombardi “has the voice of God” but at the same time “lacks a big ego and has everyman appeal”. The American College of Trial Lawyers fellow leads a 500-strong litigation practice by example. Recently, he prevailed at the Federal Circuit on behalf of Teva against Helsinn Healthcare in a widely publicised case concerning possible changes to the private-sale rule as a result of the America Invents Act’s introduction. The life sciences industry is, famously, a bastion of strength for the firm, and it is a sector in which Nutter also shines. “He has amazing attention to detail, gets great results and builds lasting relationships.” Another partner with a lot of headroom is Maureen Rurka, who also litigates drug cases with panache. “She’s a bulldog on cross and is great at getting to and keeping the focus on the most important issues in a case.” Samuel Park has the fine print of the Hatch-Waxman Act and Biologics Price Competition and Innovation Act stored in his memory and fights over billion-dollar products without flinching. The masters of the universe on the high-tech side are IP department co-chair Michael Brody and Jonathan Retsky, whose herculean feats match those of their life sciences counterparts in magnitude. No list of top Winston lawyers would be complete without co-executive chairman Dan Webb, a veteran of over 100 jury trials – enough said.
Other recommended experts
Meredith Martin Addy is a top appellate lawyer who has taken the lead on more than 40 Federal Circuit appeals. Litigants who want to capitalise on this rare level of experience can find her at Tabet DiVito & Rothstein. Schiff Hardin’s Imron Aly represents a swathe of Indian pharmaceutical companies and as “a super-aggressive litigator who lives his cases”, he does a top job. David Donoghue stays extremely close to the law on Section 101 and understands developments in it at the most nuanced level – and he has toasted many successes defeating patents on 101 grounds at the Federal Circuit. Another thing he tracks is the decision-making tendencies of appellate judges. The Holland & Knight partner is also hailed for his retail sector expertise. Zareefa Burki Flener’s eponymous IP boutique delivers pin-sharp international patentability and freedom-to-operate analyses and displays a talent for expediting prosecution worldwide. Flener herself is all about quality and responsiveness, and she does not nickle-and-dime clients, but rather invests in their success. Jeanne Gills’s recent work for Groupon at the PTAB has turned heads; in a patent infringement case involving five business method patents relating to targeted advertising, she obtained institution of five related covered business method reviews at the PTAB on the way to securing a final written decision invalidating the patents. She vice-chairs Foley & Lardner’s redoubtable national IP group. Drinker Biddle’s Ira Kalina advances the business agendas of his technology clients – in the healthcare, media, gaming, financial services and traditional manufacturing areas – by making all the right transactional moves. From his base at BakerHostetler, John Letchinger has been fighting on multiple fronts for a Fortune 100 retail chain recently. He is a consummate trial attorney. Parting ways with Marshall, Gerstein & Borun, doctor of medicine Li-Hsien Rin-Laures recently established her own self-titled IP boutique. She has set the firm up in such a way as to enhance the outstanding personal service she has always been known for. She functions as a part of her clients’ management teams and focuses on the achievement of commercial goals. David Rosenbaum runs Rosenbaum IP, a boutique offering expert strategic guidance across the patent lifecycle. His main provinces are medical devices, life sciences and chemistry, and he demonstrates a flair for building valuable portfolios. Leif Sigmond recently swapped McDonnell Boehnen Hulbert & Berghoff for BakerHostetler. His new firm gets a versatile and commercially minded IP litigator and counsellor. Trial attorney William C Spence of Spence PC loves to advocate in court, but he does not fight for the sake of it. Having extensive patent commercialisation experience, he is cognisant that clients want to get value out of their patent rights – and he knows just how to extract it. A new recruit at Paul Hastings, Robert Unikel litigates with aplomb in all fields of intellectual property.
- 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
- David Nelson - Quinn Emanuel Urquhart & Sullivan LLP
- David T Pritikin - Sidley Austin LLP
- William A Rakoczy - Rakoczy Molino Mazzochi Siwik 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
- Philip S Beck - Bartlit Beck Herman Palenchar & Scott
- Michael L Brody - Winston & Strawn LLP
- David K Callahan - Latham & Watkins LLP
- Christopher V Carani - McAndrews, Held & Malloy, Ltd
- Timothy J Carroll - Perkins Coie LLP
- David Clough - Polsinelli PC
- James R Ferguson - Mayer Brown LLP
- 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 - McDermott Will & Emery
- Robert F Green - Green Griffith & Borg-Breen LLP
- Bryan S Hales - Kirkland & Ellis LLP
- H Michael Hartmann - Leydig Voit & Mayer Ltd
- Gary E Hood - Polsinelli PC
- Chris Lind - Bartlit Beck Herman Palenchar & Scott
- Bradford P Lyerla - Jenner & Block LLP
- Joseph A Mahoney - Mayer Brown LLP
- John Marlott - Jones Day
- Edward A Mas II - McAndrews, Held & Malloy, Ltd
- Sasha Mayergoyz - Jones Day
- Richard T McCaulley Jr - Ropes & Gray LLP
- Timothy C Meece - Banner & Witcoff, Ltd
- Laura Beth Miller - Brinks Gilson & Lione
- Adam K Mortara - Bartlit Beck Herman Palenchar & Scott
- James Nuttall - Steptoe & Johnson LLP
- Michael K Nutter - Winston & Strawn LLP
- Thomas D Rein - Sidley Austin LLP
- Christopher J Renk - Banner & Witcoff, Ltd
- Jonathan E Retsky - Winston & Strawn LLP
- Gary M Ropski - Brinks Gilson & Lione
- Matthew Satchwell - DLA Piper LLP (US)
- Kenneth Schuler - Latham & Watkins LLP
- James R Sobieraj - Brinks Gilson & Lione
- Paul R Steadman - DLA Piper LLP (US)
- 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
- John M Augustyn - Leydig Voit & Mayer Ltd
- Stephen Auten - Taft Stettinius & Hollister LLP
- Stephen P Benson - Katten Muchin Rosenman LLP
- Joseph J Berghammer - Banner & Witcoff, Ltd
- Paul H Berghoff - McDonnell Boehnen Hulbert & Berghoff LLP
- Caryn C Borg-Breen - Green Griffith & Borg-Breen LLP
- John Conklin - Leydig Voit & Mayer Ltd
- Gianni Cutri - Kirkland & Ellis LLP
- Joseph E Cwik - Amin Talati Upadhye LLP
- William E Devitt - Jones Day
- David Donoghue - Holland & Knight LLP
- Margaret M Duncan - McDermott Will & Emery
- Herbert H Finn - Greenberg Traurig LLP
- Jeanne M Gills - Foley & Lardner LLP
- Christopher Griffith - Green Griffith & Borg-Breen LLP
- Richard Harris - Greenberg Traurig LLP
- Reginald J Hill - Jenner & Block LLP
- Benjamin T Horton - Marshall, Gerstein & Borun LLP
- Sharon Hwang - McAndrews, Held & Malloy, Ltd
- Mark H Izraelewicz - Marshall, Gerstein & Borun LLP
- John Labbe - Marshall, Gerstein & Borun LLP
- John S Letchinger - BakerHostetler
- Laura A Lydigsen - Brinks Gilson & Lione
- Charles M McMahon - McDermott Will & Emery
- Vera Nackovic - Mayer Brown LLP
- Samuel S Park - Winston & Strawn LLP
- Wil Rao - McAndrews, Held & Malloy, Ltd
- Maureen Rurka - Winston & Strawn LLP
- Richard T Ruzich - Taft Stettinius & Hollister LLP
- Leif R Sigmond Jr - BakerHostetler
- Brian Sodikoff - Katten Muchin Rosenman LLP
- William C Spence - SpencePC
- Robert A Surrette - McAndrews, Held & Malloy, Ltd
- Robert W Unikel - Paul Hastings
- Michael O Warnecke - Perkins Coie LLP
- Jason C White - Morgan Lewis & Bockius LLP
- Thomas J Wimbiscus - McAndrews, Held & Malloy, Ltd
- Dominic P Zanfardino - Brinks Gilson & Lione
- Joseph J Berghammer - Banner & Witcoff, Ltd
- Daniel J Burnham - Nixon Peabody LLP
- Christopher V Carani - McAndrews, Held & Malloy, Ltd
- David Clough - Polsinelli PC
- 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
- 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
- Li-Hsien Rin-Laures - RinLaures LLC
- David G Rosenbaum - Rosenbaum IP
- 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
- 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 - Global IP Law Group LLC
- Thomas J Filarski - Steptoe & Johnson LLP
- Robert M Gerstein - Marshall, Gerstein & Borun LLP
- 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
- Gregg Kirchhoefer - Kirkland & Ellis LLP
- Charles H Mottier - Leydig Voit & Mayer Ltd
- Jeffery S Norman - Kirkland & Ellis LLP
- James R Sobieraj - Brinks Gilson & Lione
- Seth Traxler - Kirkland & Ellis LLP
- Daniel A Boehnen - McDonnell Boehnen Hulbert & Berghoff LLP
- Dan K Webb - Winston & Strawn LLP