United States: New Jersey

Firms

Chiesa Shahinian & Giantomasi PC

Chiesa Shahinian & Giantomasi’s five-attorney patent team enjoys the patronage of several top names in the telecommunications sector; for example, the group acts on behalf of AT&T, rendering advice on domestic and international prosecution matters and issuing razor-sharp infringement and invalidity opinions. Playing point on all patent mandates is IP group co-chair Jeffrey Weinick, a portfolio management and transactional maven with a long history of service in the industry. Supporting Weinick and serving as a vital strategic sounding board for clients is Donald Dinella, who has had an illustrious in-house career, including stints as chief IP counsel at Alcatel-Lucent and chief licensing officer at InterDigital before his arrival at Chiesa Shahinian in 2014. “Diligent, quick and efficient”, the team has been steadily building a robust prosecution practice outside the communications sphere too, representing the likes of Bloomberg and Siemens USA before the US Patent and Trademark Office (USPTO) and, via an extensive network of associates, before foreign registries. Clients confide that they “never have any billing issues” and appreciate the group’s ability to “consistently keep within pre-established budgeting guidelines”.

Dentons US LLP

In Summer 2017, Dentons substantially increased the capacity of its US patent practice by luring a sizeable team away from Morrison & Foerster in California. The additional resources will be a boon to the compact New Jersey crew, accustomed as it is to working seamlessly with colleagues across the firm’s domestic and international office network. The man to call locally is Joel Bock; he serves up perspicacious advice to discerning companies on the thorniest of issues, such as patent-eligible subject matter under Section 101 of Title 35 of the US Code. As the holder of an MBA and having run his own businesses, Bock has a distinctly commercial sensibility, which clients are keen to tap into in IP procurement, transactional and litigation settings. Of late, he has been advising Columbia University – a leader among academic institutions when it comes to the generation of revenue from patent assets – on international filings and building up a portfolio for Electrocore, a cutting-edge digital health company which is making waves in the medical device world. Bock has an instinctual feel for the inflexion points of patent examiners, which is a huge advantage given the winds of change currently blowing through US patent law.

Fox Rothschild LLP 

With the addition of a partner in Minneapolis and new associates across a number of offices, not to mention expansion into the Pacific Northwest via a merger with Riddell Williams, 2017 was a year of significant growth for Fox Rothschild’s IP department. The firm, which makes its debut in the New Jersey chapter of the IAM Patent 1000 for 2018, offers 360-degree patent protection, commercialisation and litigation services, and identifies and executes clever solutions that work beyond the purely legal realm. Princeton is home to biology PhD Gerard Norton, a former IP department chair and the current IP litigation group helmsman. Admired for his “deep expertise in patent law, pragmatism and business savvy”, Norton litigates across the IP spectrum and is also an inspiring strategic counsellor. At ease with the most complex biotechnology inventions, he leads a large team of attorneys guiding Rutgers University in this area.

Gibbons PC

The buoyancy of the US economy has fuelled an increase in corporate deal making and Gibbons, with its talent for consummating IP-rich transactions, finds itself in hot demand as a result. Keeping busy on myriad Hatch-Waxman cases for, among others, Merck Sharp & Dohme and Acorda Therapeutics – and handling complex actions brought under the Biologics Price Competition and Innovation Act for Hoffman-La Roche – the firm is in equally fine fettle on the litigation front. Commanding officer David De Lorenzi is the mastermind behind the success of a group that is hiring at a time when many competitors are standing pat or shedding weight. Clients hail De Lorenzi as a “common-sense litigator with superb control of the technical subject matter at issue in his cases”, while highlighting his “excellent business sense” as his chief USP. “Driving litigations in the most tactically clever ways, David consistently achieves brilliant results. He is extremely cost effective and, of the utmost importance, he listens to and respects the input given by in-house counsel – he brainstorms with his clients and takes feedback on board, all with a view to getting the best possible outcome.” “Of course, one person cannot do everything, and David does a nice job recruiting talent and building teams.” Two individuals cited in this regard are luminaries George Johnston and George Gould – “seasoned experts who, having not lived their entire professional lives within legal private practice, understand the perspective of the clients they now serve”. Johnston comes into his own advising on the most nuanced aspects of patent law and is an ace at interpreting ambiguous agreements, while Gould is an incredible visionary in the licensing field; both have previously served as chief patent counsel at Hoffman La-Roche.

Greenberg Traurig LLP

Unlike some other large, national full-service players with robust patent litigation practices, Greenberg Traurig lives a full and rewarding life in the patent prosecution and strategic counselling area. This can be attributed in part to the flexible and entrepreneurial culture that exists within the firm; Greenberg lawyers are free to cultivate expertise that enables them to best serve their clients and, crucially, to devise alternative billing arrangements appropriate to different streams of work. Barry Schindler has capitalised on this freedom and as a result, so have his clients. The global patent prosecution group co-chair has vast experience when it comes to protecting pharmaceutical and chemical inventions and building fulsome portfolios of immense worth, although of late he has been mainly engaged as due diligence counsel. In this capacity, his penetrating analysis of the risk post-grant actions pose to the survival of patent claims relevant to a deal has proven to be of incredible value. Schindler is also known for his vibrant practice in Israel – he represents more than 100 highly innovative Israeli companies, the majority of which are start-ups which appreciate his 24/7 availability. James DeCarlo has constructed a similarly diverse practice, which encompasses commercial agreement, litigation and prosecution work and caters to start-ups and industry leaders. By way of contrast, Michael Nicodema is a dyed-in-the-wool trial lawyer. Although his practice is largely IP-focused, he has tried a wide range of commercial cases – experience which has honed his powers of persuasion.

Lerner David Littenberg Krumholz & Mentlik LLP

“In terms of top-quality lawyering, Lerner David Littenberg Krumholz & Mentlik is a firm you simply have to doff your cap to.” The venerable IP boutique has long set the standard in New Jersey when it comes to patent litigation, procurement and commercial IP dealings and counts some of the most experienced IP lawyers in the country among its number – Joseph Littenberg and Sidney David being two prime examples. The depth of its litigation bench is a distinguishing feature for the firm locally and thrusts it onto the national stage too. William Mentlik is a good place to start; the managing partner is a resonant presenter in any courtroom in disputes over virtually any technology, as well as a hugely experienced appellate lawyer who knows how to carry the day at the Court of Appeals for the Federal Circuit. Speaking of which, brief-writer extraordinaire Roy Wepner has argued dozens of appeals over the course of his long and distinguished career. A recent highlight of his includes winning an appeal before the New York Supreme Court Appellate Division for New York University in a breach of contract action against Pfizer. Gregory Gewirtz is frequently at the vanguard of USPTO contested proceedings and makes his debut in the IAM Patent 1000 2018 on the back of highly favourable client references. “Greg is a problem solver and skilful negotiator who can resolve the most difficult litigations and adversarial licensing matters. Able to quickly digest large quantities of technical detail, he has the bandwidth to focus on strategies for winning and is very cost effective. He understands his clients’ goals and is extremely responsive and communicative.” Inter partes review successes for Sony and Buffalo Americas have been recently added to his CV. Reflecting their versatility – something which is characteristic of the majority of lawyers in the firm – Keith Gilman and Bruce Sales are both recommended in the litigation and transactions categories this year. Both excel at risk management and keeping clients out of trouble, while Sales also shines for his appreciation of patents and other IP rights as business assets.

Lowenstein Sandler LLP

Lowenstein Sandler is anything but a prosecution mill; recognising that better input leads to better output, it is not afraid to counsel clients against filing. Once satisfied that pursuing an application makes for good business, it knows how to be persuasive before the USPTO, as testified by its outstanding allowance rate – particularly in the software space. Mark Kesslen is something of a guru among technology companies for his expertise on software and business method patents, while his strategic advice concerning portfolio, transaction and litigation matters is like gold dust. There are also few lawyers in the country who do more work in the start-up community than IP chair Kesslen; by way of example, he is the co-founder of entrepreneur-mentoring programme FirstGrowthVC and angel investor team GrapeArborVC, which speaks to his passion for innovation. Under his watch, Lowenstein Sandler is a firm that sticks to what it is good at – namely funds, high tech and life sciences – and pitches for work within its bailiwick, giving clients confidence that they are in it for the long haul and will deliver advice that hits the target. A marksman in this regard is Robert Paradiso, who takes charge of the life sciences practice. Meeting and exceeding the expectations of world-beating chemical and pharmaceutical companies, the registered pharmacist relates to C-suite executives as easily as he does to inventors and has a gift for giving commercial impetus to large international portfolios. “Though a more transactionally-oriented firm, it is also doing a fine job in IP litigation” thanks to the diligence and dexterity of Stephen Buckingham. He digs deep into the scientific background of a case with delight, but never forgets that his audience in the courtroom may be out of their comfort zone and is able to simplify abstruse concepts and weave a narrative around them.

McCarter & English LLP 

There are few stronger firms in intellectual property than McCarter & English in the North-Eastern and Mid-Atlantic United States. The respected full-service outfit, which earns increased coverage in the IAM Patent 1000 this year, has a technically accomplished and substantial IP team which not only caters to the patent filing, post-grant, litigation and transactional needs of clients, but also satisfies their business and regulatory demands with aplomb. Newark-based John E Flaherty, one of the top litigators on the firm’s roster, excels at simplifying – but not dumbing down – complex technical concepts, which serves him particularly well in pharmaceutical disputes. Helping to cement the life sciences as a stronghold for the firm is Beverly W Lubit, whose breadth of practice impresses in its scope; the microbiology PhD handles transactional matters with rare distinction, advises on contentious issues arising under the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act with a deft touch and blends in regulatory expertise in a compelling way. Coming from a physics background, Steven E Halpern can get to grips with all manner of technologies and brings diversity to the practice. “Especially skilled at designing the best and often most creative solutions to address clients’ needs”, he is relied on for insightful freedom-to-operate, invalidity and infringement opinions and as a portfolio manager.

Individuals: litigation

  • Joel N Bock - Dentons US LLP
  • Stephen R Buckingham - Lowenstein Sandler LLP
  • David E De Lorenzi - Gibbons PC
  • James DeCarlo - Greenberg Traurig LLP
  • John E Flaherty - McCarter & English LLP 
  • Gregory S Gewirtz - Lerner David Littenberg Krumholz & Mentlik LLP
  • Keith Gilman - Lerner David Littenberg Krumholz & Mentlik LLP
  • William L Mentlik - Lerner David Littenberg Krumholz & Mentlik LLP
  • Michael A Nicodema - Greenberg Traurig LLP
  • Gerard P Norton - Fox Rothschild LLP
  • Bruce H Sales - Lerner David Littenberg Krumholz & Mentlik LLP
  • Roy H Wepner - Lerner David Littenberg Krumholz & Mentlik LLP

Individuals: prosecution

Individuals: transactions

  • Joel N Bock - Dentons US LLP
  • David E De Lorenzi - Gibbons PC
  • Keith Gilman - Lerner David Littenberg Krumholz & Mentlik LLP
  • Mark P Kesslen - Lowenstein Sandler LLP
  • Bruce H Sales - Lerner David Littenberg Krumholz & Mentlik LLP

Luminaries

  • Sidney David - Lerner David Littenberg Krumholz & Mentlik LLP
  • Donald P Dinella - Chiesa Shahinian & Giantomasi PC
  • George M Gould - Gibbons PC
  • George W Johnston - Gibbons PC
  • Joseph S Littenberg - Lerner David Littenberg Krumholz & Mentlik LLP