United States: Pennsylvania

Firms: litigation

  • Akin Gump Strauss Hauer & Feld LLP
  • Dechert LLP
  • BakerHostetler
  • Ballard Spahr LLP
  • Buchanan Ingersoll & Rooney PC
  • Caesar Rivise PC
  • K&L Gates LLP
  • Morgan, Lewis & Bockius LLP
  • The Webb Law Firm

Firms: prosecution

  • BakerHostetler
  • Ballard Spahr LLP
  • Buchanan Ingersoll & Rooney PC
  • Caesar Rivise PC
  • Duane Morris LLP
  • Fox Rothschild LLP 
  • K&L Gates LLP
  • Morgan, Lewis & Bockius LLP
  • The Webb Law Firm
  • Troutman Pepper

Firms: transactions

  • Highly recommended
  • Buchanan Ingersoll & Rooney PC
  • Recommended
  • K&L Gates LLP
  • Morgan, Lewis & Bockius LLP
  • Troutman Pepper

Akin Gump Strauss Hauer & Feld LLP

When patent infringement issues put them under pressure, industry leaders would be wise to bring Akin Gump on side. Handling complex, commercially consequential pharmaceutical and technology cases in exemplary fashion, its hard-hitting litigators astutely leverage all the firm has to offer in terms of appellate, international trade and policy expertise to support clients in the most meaningful way. For life sciences companies, there’s hardly a better line-up of lawyers in the country than Dianne Elderkin, Steven Maslowski, Matthew Pearson and Rubén Muñoz. Elderkin needs no introduction as an eloquent and elevated trial lawyer with leadership qualities in abundance and a striking record of success in many cases that have advanced the state of the law. As head of intellectual property and a seasoned trial team captain, Maslowski is another commanding leader; sources call him “sharp and insightful” – a description that suits him perfectly as a strategist, technical lawyer and advocate. Biochemistry PhD Pearson has earned a stellar reputation for the results he secures in biologics cases. Philadelphia office head Muñoz demonstrates a mastery of diverse technologies and benefits the group with his well-honed post-grant know-how. All four are currently defending Johnson & Johnson Consumer in a suit brought by Medical Light Technology relating to phototherapy product patents; Maslowski and Muñoz have also been busy for 3M and Merck & Co in district courts and the PTAB.

BakerHostetler

“BakerHostetler is great to work with on a variety of patent litigation matters. Its lawyers are creative, collaborative and approachable, and provide excellent representation while staying within budget.” First of mind for many is Philadelphia-based national patent litigation team co-leader Daniel Goettle, who is “always on the shortlist for matters that need to be handled in a cost-effective manner”. “Dan is excellent at managing all aspects of cases as well as advocating for clients; he fulfils his role in a thoughtful and caring way, which is really appreciated.” He recently went out to bat for Comcast in a patent infringement action in Florida brought by WhereverTV involving patents for over-the-top content delivery by streaming. Goettle focuses on computer sciences and electrical and mechanical engineering cases; while for life sciences entities, Joseph Lucci is the one to call. He litigates with aplomb but adds tremendous value courtesy of well-rounded expertise in prosecution, portfolio management and transactions; his range and strategic perspicacity make him a dream to work with for in-house counsel. Ambidexterity is likewise a hallmark of Steven Samuels, a high-technology prosecutor with keen contentious nous whom clients deem a “reliable and talented teammate” and “brilliant on matters that are difficult or unusual in nature”.

Ballard Spahr LLP

Ballard Spahr’s IAM Patent 1000 coverage has significantly increased for the 2021 edition: the firm has several new individuals listed across multiple offices and makes debut appearances in the Arizona, New York and Pennsylvania rankings, reflecting its strength in depth and comprehensive patent service. When it comes to road mapping patent procurement, monetisation and enforcement strategies, Ballard Spahr has a well-developed toolkit. This extended coverage is also a tribute to the stewardship of Philly-based IP chair Lynn Rzonca, an agile patent and brands sage with finely cultivated contentious and non-contentious skills. She serves as lead outside counsel to Exelon Corporation, for which she manages a great many IP activities. By her side on this brief is John Chionchio, a pure-play patent lawyer who helms the mechanical and medical technologies team. He provides a tip-top service to several prestigious companies, including Smith & Wesson, for which he has obtained myriad valuable patents. Robert Baron is the other local star and an anchor of the IP litigation practice. The dynamic trial lawyer “skilfully handles complex issues, communicates well with business leadership and provides smart, efficient counsel”.

Buchanan Ingersoll & Rooney PC

Deep specialisation in the IP vertical and an all-encompassing patent skillset distinguish Buchanan Ingersoll & Rooney from most of its general practice competitors. With a total command of all aspects of prosecution, litigation and patent commercialisation, the collaborative group lets nothing slip through the cracks and ensures that opportunities are never missed. The strength and quality of its patent prosecution skills give the practice extremely strong foundations, which further enhance the undoubted quality of its contentious offering. Individuals here aren’t siloed, creating the ideal conditions for companies to capitalise on their outstanding versatility. Chemical group co-chair Duane Stewart, for example, prosecutes, manages portfolios and litigates with poise, showing a deft touch on international matters. He supports a top university alongside Lynn Alstadt and Ralph Fischer, helping its licensing officers and inventors to obtain valuable patents at home and abroad. Alstadt draws on her encyclopaedic knowledge of patent law and contemporary understanding of technology to dispense essential strategic advice and advocate in numerous litigation forums. Steeped in all aspects of intellectual property, Fischer is also a dab hand in many technical domains. Cut from similar cloth, Michael Dever is another major draw for the group: recommended on each of the prosecution, litigation and transactions tables, he’s a true patent polymath. Though active across diverse theatres of innovation, Dever is a trained chemical engineer with a penchant for chemical matters; these are likewise a forte for Craig Cochenour, a past leader of the firm’s pharmaceutical industry group and a former in-house counsel who neatly tailors his service according to need. David Gurwin and Susan Hartman, meanwhile, are the ensemble’s sharpest IP transactions lawyers. Gurwin’s recent licensing activities have included representation of a professional sports team, a playwright, an autonomous vehicle technology company and an international pharmaceuticals manufacturer; this diversity exposes him to issues across the spectrum, further honing his exceptional problem-solving abilities. Hartman partners closely with client teams and is a repository of trust on the most commercially significant matters.

Caesar Rivise PC

Caesar Rivise has been a standard setter among Pennsylvanian boutiques for many years, especially in the area of pharmaceutical patent litigation. With Robert Silver in the fold, the firm affords global and US generic drug companies sterling representation in Hatch-Waxman Act and other cases. Silver chairs the litigation department and is a veteran trial lawyer with an astonishing hit rate. No one trick pony, Caesar Rivise is also a beacon for innovative companies of all kinds that want to protect and smartly manage their intellectual property. Scott Slomowitz prosecutes applications through to successful grant timeously and cost effectively, and implements optimal IP strategies for the benefit of clients.

Dechert LLP

When must-win cases loom, Dechert is the partner of choice for many A-list high-technology and pharmaceutical companies. The patent litigation team is muscular, well-resourced and superbly led by Martin Black. According to clients, Black is “one of the finest first-chair litigators in the country and a wonderful strategist”. “He understands intricate science and can restate it in a way that a layperson trier of fact can understand. He is sensitive to the atmosphere of whatever hearing he is in and is extremely quick on his feet, masterfully steering people away from sensitive areas and into his cases’ strengths.” He also “distinguishes himself in terms of responsiveness and diligence”. More generally, Dechert “is richly experienced in the life sciences area, with other excellent lawyers who take a pragmatic, business-focused approach to litigation”. One of those is Kevin Flannery, who is “outstanding in terms of both advocacy skill and customer care”: “Kevin is smart about the law and about client needs such as cost control, and provides a super-efficient and value-based service.” Black is currently acting for Hitachi and Mondis Technology in a major licensing and litigation campaign, in the course of which he secured a trial victory and a significant damages award against LG Electronics; he and Flannery, meanwhile, have linked up to represent GlaxoSmithKline. All three clients are longstanding relationships, which speaks to the firm’s enduring quality.

Duane Morris LLP

Duane Morris’s robust prosecution practice is a major factor in its patent litigation success: the firm gets patents at the most meaningful level, having gone through the process of obtaining, managing and commercialising them, and has abundant technical expertise across the full range of disciplines. The preparation and prosecution group takes its cue from Samuel Apicelli, a strategic counsellor par excellence and a vital support to many litigation teams as they get to grips with the subject matter of their cases. He has safeguarded the innovations and advanced the business objectives of patrons for many years; for Wright Medical, for example, he has worked magic for nearly two decades, securing it over 500 patents and advising extensively on the patentability of inventions and wider IP strategy.

Fox Rothschild LLP 

The well-specced patent practice at Fox Rothschild is staffed by 45-plus USPTO-registered attorneys alongside several patent agents, a technical specialist and an IP services director. The group – senior contact points for which can be found in Pennsylvania, New York, New Jersey, Colorado, Florida, DC, California and Minnesota – prosecutes in the United States and globally with rare efficiency, while maintaining a laser focus on quality. Providing strong leadership is Pittsburgh-based national IP department chair James Singer, who has a gift for realising clients’ business objectives through IP growth and development. He provides prosecution and strategic counselling services to high-profile innovators such as Xerox Corporation as well as many early-stage companies, which place a premium on his IP value creation know-how.

K&L Gates LLP

Impressive global IP capabilities and resources give K&L Gates a clear USP in the market: firmwide, it has more than 200 specialised IP practitioners on deck, giving it the transmission capacity to handle just about any patent instruction going. The Pittsburgh bureau can serve as a one-stop shop by itself, thanks to the combined talents of Roberto Capriotti, Patrick McElhinny and George Dickos, who complete the Pennsylvania line-up in the IAM Patent 1000. Renaissance man Capriotti acquits himself with distinction across the contentious/non-contentious divide, making him indispensable to companies such as Westinghouse Electric Company, for which he handles all global non-litigation patent matters. McElhinny is “fantastic in every respect” as a trial lawyer: “He engages with his clients at all levels of management to understand their processes, products and practices, in order to better tailor his service. He thinks like an in-house counsel and gets difficult jobs done with the least intrusion into company life, achieving optimal results in the process.” Dickos is the go-to for IP transactions and licensing; the breadth of his intangible asset commercialisation expertise gives him a hawkish eye for new opportunities and connections.

Morgan, Lewis & Bockius LLP

There are no gaps in Morgan Lewis’s patent offering: the firm’s sophisticated prosecution, litigation, post-grant and transactional groups collaborate seamlessly and all operate at the highest level. By calling on the firm’s Pennsylvania offices, patrons can cover all bases, whatever they hope to achieve; they also gain quick and easy access to the wider IP group, of which Philadelphia-based Louis Beardell is global captain. Beardell is hard to beat for those seeking to establish and implement advanced patent programmes and smart IP protocols. His intuitive understanding of the pharmaceutical industry resonates with life sciences clients, which can also count on staunch representation from Eric Kraeutler when enterprising-threatening infringement suits arise. Kraeutler is one of the state’s most dynamic and seasoned life sciences and high-technology trial lawyers and is fazed by nothing, be it subject-matter complexity, a difficult fact pattern or an unfriendly forum. Pittsburgh’s Peter Watt-Morse is the resident IP and technology transactions guru and a master at designing lucrative deal structures.

The Webb Law Firm

An eminent, storied Pennsylvania boutique full of well-trained, talented lawyers, The Webb Law Firm is a destination of choice for a thorough, high-quality patent service. The team understands the innovation mindset and aligns its approach to the individual needs of patrons, including both well-established and emerging players across virtually all areas of technology. All three of the firm’s IAM Patent 1000 2021 representatives – Richard Byrne, John McIlvaine and Kent Baldauf – have cultivated broad patent skills throughout their distinguished careers; rights holders can dial up any of them for any patent issue and come away knowing the best steps to take. Byrne – the most experienced among them – is a natural leader and mentor who instils immense confidence in those he represents; incredibly knowledgeable about patents and brands, he dispenses a fulsome service. Another generous educator, McIlvaine is in hot demand for clear-sighted counsel on international patent and IP matters. Baldauf garners plaudits for his command of the litigation process and balance and control in a courtroom setting.

Troutman Pepper

Born of deep technical expertise, Troutman Pepper’s advice on patent matters also comes infused with commercial insight. The lawyers here have a profound understanding of the health sciences industry and work hand in glove across practice area divides to support clients in the most relevant and purposeful ways. Raymond Miller and Nicole Stakleff form a dream team in Pittsburgh. Miller showcases his legal and business talents by helping pharmaceutical, biotechnology and other companies to take giant leaps forward in better managing and capitalising on their intangible assets; he has a natural instinct for IP value creation. Similarly, Stakleff champions the cause of business development as much as she does legal security, leveraging blended patent and regulatory know-how to great effect.

Other recommended experts

McNeill Baur founding partner Amelia Feulner Baur has made the life sciences her own. She fulfils multiple roles to perfection, from preparation and prosecution lawyer to worldwide patent strategist and due diligence counsel, and excels at individualising her advice cleverly and cost effectively for each client. Flying Dentons’ flag locally in Pittsburgh, Noland Cheung is a former in-house chief patent counsel and corporate lawyer who appreciates how best to put intellectual property to business use. Co-chair of DLA Piper’s patent prosecution practice, Daniel Christenbury draws judiciously on the firm’s global infrastructure to protect innovators to the hilt worldwide. He treats a diverse coterie of clients large and small to wise patent opinions and a refined portfolio development service. John Donch is a discerning choice for risk-smart strategic patent prosecution and licensing counsel. He puts in maximum effort for clients, but never neglects other important aspects of his leadership role both at Volpe and Koenig and in the wider community; he promotes diversity in the practice and invests time in educating companies and students on IP issues. Senior in-house counsel are only too happy to furnish recommendations for Ference & Associates, a boutique with “experienced, knowledgeable and personable attorneys”: “The firm never fails to impress with its responsiveness, timeliness, willingness to listen, adaptability and quality.” The architect of this stellar service is Stanley Ference, an IP all-rounder who is equally comfortable prosecuting and resolving litigation issues. Lisa Casey Spaniel is one of the best contacts in Pennsylvania for software-related matters and patent and technology licensing. The Blank Rome IP and technology group co-chair also brings well-developed cybersecurity and data privacy expertise to the table.

Individuals: litigation

  • Martin Black - Dechert LLP
  • Dianne B Elderkin - Akin Gump Strauss Hauer & Feld LLP
  • Eric Kraeutler - Morgan Lewis & Bockius LLP
  • Lynn J Alstadt - Buchanan Ingersoll & Rooney PC
  • Kent E Baldauf Jr - The Webb Law Firm
  • Robert Baron - Ballard Spahr LLP
  • Richard L Byrne - The Webb Law Firm
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • Kevin M Flannery - Dechert LLP
  • Daniel J Goettle - BakerHostetler
  • Joseph Lucci - BakerHostetler
  • Steven Maslowski - Akin Gump Strauss Hauer & Feld LLP
  • Patrick J McElhinny - K&L Gates LLP
  • John W McIlvaine III - The Webb Law Firm
  • Ruben Munoz - Akin Gump Strauss Hauer & Feld LLP
  • Matthew A Pearson - Akin Gump Strauss Hauer & Feld LLP
  • Lynn E Rzonca - Ballard Spahr LLP
  • Robert Silver - Caesar Rivise PC

Individuals: prosecution

  • Lynn J Alstadt - Buchanan Ingersoll & Rooney PC
  • Samuel Apicelli - Duane Morris LLP
  • Amelia Feulner Baur - McNeill Baur PLLC
  • Louis W Beardell Jr - Morgan Lewis & Bockius LLP
  • Richard L Byrne - The Webb Law Firm
  • Roberto Capriotti - K&L Gates LLP
  • Noland Cheung - Dentons Cohen & Grigsby
  • John Chionchio - Ballard Spahr LLP
  • T Daniel Christenbury - DLA Piper
  • Craig G Cochenour - Buchanan Ingersoll & Rooney PC
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • John Donch Jr - Volpe and Koenig PC
  • Stanley Ference - Ference & Associates 
  • Ralph G Fischer - Buchanan Ingersoll & Rooney PC
  • Joseph Lucci - BakerHostetler
  • John W McIlvaine III - The Webb Law Firm
  • Raymond A Miller - Troutman Pepper
  • Steven B Samuels - BakerHostetler
  • James M Singer - Fox Rothschild LLP
  • Scott M Slomowitz - Caesar Rivise PC
  • Nicole Stakleff - Troutman Pepper
  • Duane A Stewart III - Buchanan Ingersoll & Rooney PC

Individuals: transactions

  • Noland Cheung - Dentons Cohen & Grigsby
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • George Dickos - K&L Gates LLP
  • David A Gurwin - Buchanan Ingersoll & Rooney PC
  • Susan M Hartman - Buchanan Ingersoll & Rooney PC
  • Raymond A Miller - Troutman Pepper
  • James M Singer - Fox Rothschild LLP
  • Lisa Casey Spaniel - Blank Rome LLP 
  • Lisa Casey Spaniel - Blank Rome LLP 
  • Peter M Watt-Morse - Morgan Lewis & Bockius LLP