United States: New Jersey

Firms

Chiesa Shahinian & Giantomasi PC

Chiesa Shahinian & Giantomasi’s IP team enjoys close relations with several anchor clients, including AT&T, Nokia, Bloomberg and Topcon Positioning Systems; on behalf of these and other marquee technology companies, it continues to prosecute patents with exactitude and manage portfolios with commercial dexterity – all at a price that is fair and reasonable. It has been steady sailing for the group recently, though there are notable developments to report, too – not least a significant increase in the number of Japanese law firms calling on it for assistance with US patenting. Keeping his practised hand on the tiller is Jeffrey Weinick, a prosecution maestro whose in-house background grants him an insider’s perspective on the challenges and pressures that clients face.

Fox Rothschild LLP

An assured performer across the patent lifecycle, Fox Rothschild has built up an enviable stable of partners with the right skills in the right locations. In Princeton, New Jersey sits a cluster of highly strategic life sciences practitioners, at the centre of which is local managing partner Gerard Norton; he is flanked by Peter Butch III, Wansheng Jerry Liu and Jianming Jimmy Hao, all PhD practitioners with deep industrial and academic scientific experience on their résumés. Together, they are acting for Rutgers University in the prosecution of complex biotechnology innovations and related counselling. Norton and his colleagues understand the topography of the life sciences patent landscape and how best to optimise the commercial performance of clients’ patent rights. Another recommended practitioner steeped in prosecution and transactional know-how is Christopher Kinkade, although today he predominantly focuses on litigation. He recently stepped into the role of firmwide IP litigation chair and has since spurred the team on to dynamic levels of activity and notable courtroom successes.

Gibbons PC

Remarkably, nearly half of the Gibbons patent team have top-flight in-house experience. Luminaries George Johnston and George Gould stand out in this regard, the former having served as vice president and chief patent counsel and the latter as vice president of licensing and corporate development and chief patent counsel, both at Hoffmann-La Roche. This is a group, then, that intimately understands what clients need, and how and when they need it – and it delivers on all fronts. The firm’s IAM Patent 1000 gold-tier ranking attests to this, while recommendations for multiple practitioners on each of the prosecution, litigation and transactions tables speak to the ensemble’s ambidexterity and range. Zeroing in on the prosecution practice, it is impressive how effectively the group caters to both high-technology and life sciences concerns. With concentrations in areas such as communications and software, Robert Rudnick and Thomas Bean regularly link up to give patrons the benefit of their combined perspicacity. Both former Lucent Technologies and Avaya counsel, they play well off each other. Heading the pharmaceutical and biotechnology prosecution and portfolio management practice, meanwhile, is Samuel Megerditchian, another Hoffmann-La Roche alumnus and an “exceptionally responsive partner who you can rely on to provide the right help at a moment’s notice while keeping costs down”. Litigants should seek out David De Lorenzi, Christopher Strate and Charles Chevalier. Part of what makes IP chair De Lorenzi so effective as a trial lawyer is the depth of his insight into IP development and transactions, which helps him to ground his arguments in commercial reality. He and Strate have recently been litigating for Reynolds Group in the District of New Jersey; for GemShares in the Northern District of Illinois; and for Infineum in the District of Delaware. Chevalier is a pharmaceutical litigation ace and a go-to for Pfizer, among many others.

Greenberg Traurig LLP

The vitality of Greenberg Traurig’s national patent practice is mighty to behold. The firm has recruited astutely, especially on the West Coast and in the Midwest, where it opened a new office in Minneapolis. It has also significantly expanded its prosecution, portfolio management and counselling practice, thanks to new relationships in the fintech space – including, for example, with Capital One, which was on-boarded by New York-based Rose Cordero Prey (who debuts in the guide this year). Working with these, while also building momentum with other clients such as WL Gore as well as US universities and Israeli start-up incubators, is global patent prosecution group chair Barry Schindler. An immaculate international strategist, 30-year veteran Schindler gives advice that goes right to the heart of a matter’s underlying business drivers. Based in the New Jersey office and similarly doing wonders for big-name technology concerns such as Verizon Media is James DeCarlo, who maintains a 360-degree patent practice. “Jim is great at simplifying highly complex technical concepts while also being excellent from a business decision-making perspective. He is superlative in his dedication to clients, has an infectiously positive attitude and gets fantastic results.”

Lerner David Littenberg Krumholz & Mentlik LLP 

Unanimously praised as a high-quality, smoothly managed outfit of seasoned and specialised patent professionals, Lerner David has uplifted the New Jersey patent scene throughout its 50-year existence. There’s no technology it cannot handle and no patent task beyond its ken, making it a fine choice for wraparound support as well as discrete patent procurement, management, licensing and infringement-related mandates. Worthy of special mention is the contentious depth on show: with William Mentlik, Roy Wepner, Greg Gewirtz and Scott Samay in the fold, the firm has the requisite firepower for any challenging case whether it plays out in at trial, in the Patent Trial and Appeal Board or at the Federal Circuit. Keith Gilman and Bruce Sales are recommended for litigation, too, though they also make an appearance on the transactions table; this brings into focus the versatility of many of Lerner David’s professionals and their concomitant ability to address issues holistically. Michael Teschner is one of the top patent draftsmen in the line-up; the chemical, medical and life sciences technology expert also shines as an opinion giver and inter partes review lawyer.

Lowenstein Sandler LLP

Lowenstein Sandler has its finger on the pulse of developments in the high-technology and life sciences arenas and unerringly provides rigorously commercial advice, whether patents are being filed, deals struck or courtroom battles fought. In this regard, the set takes its cue from Mark Kesslen who exudes a passion for technological innovation and business on every engagement. The former JPMorgan Chase chief IP lawyer renders essential support to start-ups in the software, social media, blockchain and fintech spaces, furnishing them with perspicacious, forward-looking counsel. Robert Paradiso is his counterpart on the life sciences side and another counsellor par excellence who communicates with inventors and the C-suite with equal clarity. Artfully traversing different technical domains in his role as a contentious sharp-shooter is Stephen Buckingham.

McCarter & English, LLP 

With its large team of technical specialists and lawyers – which, at the latest count, numbered more than 100 – McCarter & English demonstrates proficiency across all aspects of patent practice. Viewed through the prism of its Newark office, the firm has a special gift for transmuting the raw materials of life sciences innovation into coherent, commercially powerful portfolios of patent rights. Beverly W Lubit displays a particular talent for this, which earns her enthusiastic commendations from the market: “Working side by side with inventors, Beverly can go as deep into the science as needed while retaining the ability to eloquently break it down for those without a technical background. Her combination of scientific, legal and strategic expertise makes her a phenomenal lawyer.” Should infringement headaches loom for life sciences entities, John E Flaherty has the cure. He is a veteran pharmaceutical litigator with a fine track record.

Other recommended experts

A top global firm with a sophisticated, well-formed US IP practice, Dentons is a preferred choice for technology companies of every stripe. In New Jersey, it has a one-man army in the form of Joel Bock, who has the rare distinction of being IAM Patent 1000 recommended for all types of patent practice. He is especially noted for his transactional prowess and sage counsel on intangible asset valuation and value creation. On the deal side, recent highlights include representing the New York Power Authority in negotiations on a major energy management platform agreement for all governmental energy use in the state of New York; while on the portfolio and strategy side, he has been working with Electrocore. Morgan Lewis & Bockius’s dedicated patent and technology transactions practice is one of the best in the country. Its reputation for excellence is upheld, among others, by Alan Leeds, who captains the life sciences transactions practice and co-leads the firm’s wider global life sciences industry effort. Kept busy on complex gene and cell therapy deals over the past year, he has thought through many unique patent issues and shown himself to be an adroit problem solver. Led by Philadelphia-based American College of Trial Lawyers fellow Martin Black, Dechert’s IP litigation division is storming the market right now. Making an immense contribution to the group’s success is Princeton’s Robert Rhoad, who – together with Black and other eminent colleagues – has done many great things for Endo Pharmaceuticals, notching up four major patent victories in the last three years.

Individuals: litigation

  • Joel N Bock - Dentons US LLP
  • Stephen R Buckingham - Lowenstein Sandler LLP
  • Charles Chevalier - Gibbons PC
  • 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
  • Gerard P Norton - Fox Rothschild LLP
  • Robert Rhoad - Dechert LLP
  • Bruce H Sales - Lerner David Littenberg Krumholz & Mentlik LLP
  • Scott R Samay - Lerner David Littenberg Krumholz & Mentlik LLP
  • Christopher Strate - Gibbons PC
  • Roy H Wepner - Lerner David Littenberg Krumholz & Mentlik LLP

Individuals: prosecution

  • Thomas Bean - Gibbons PC
  • Joel N Bock - Dentons US LLP
  • James DeCarlo - Greenberg Traurig LLP
  • Mark P Kesslen - Lowenstein Sandler LLP
  • Beverly W Lubit - McCarter & English, LLP 
  • Samuel Megerditchian - Gibbons PC
  • Gerard P Norton - Fox Rothschild
  • Robert J Paradiso - Lowenstein Sandler LLP
  • Robert Rudnick - Gibbons PC
  • Barry Schindler - Greenberg Traurig LLP
  • Michael Teschner - Lerner David Littenberg Krumholz & Mentlik LLP
  • Jeffrey M Weinick - Chiesa Shahinian & Giantomasi PC

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
  • Alan Leeds - Morgan Lewis & Bockius LLP
  • Beverly W Lubit - McCarter & English, LLP 
  • Robert Rudnick - Gibbons PC
  • Bruce H Sales - Lerner David Littenberg Krumholz & Mentlik LLP

Luminaries

  • George M Gould - Gibbons PC
  • George W Johnston - Gibbons PC