United States: Pennsylvania

Firms: litigation

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

Firms: prosecution

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

Firms: transactions

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

Akin Gump Strauss Hauer & Feld LLP

Staunch representation of market-leading biotechnology entities in high-exposure cases has given the Akin Gump patent litigation unit a refined understanding of the life sciences industry landscape; this feeds through into its litigation strategies, which are always on point. In terms of approach, the firm doesn’t lawyer up, but keeps things lean and focused so that every trial team member from top to bottom knows exactly what’s going on in a case and is highly engaged. Forming a tight-knit squad are Dianne Elderkin, Steven Maslowski and Matthew Pearson. The senior stateswoman not only of the group, but of the entire market, Elderkin is fabulous in the courtroom and an outstanding thought leader and mentor. Decisive and foresighted Maslowski has amassed superb lead counsel experience and is entering prime time right now; he is brilliant at cross-examination. Pearson is intellectually gifted from a legal and scientific perspective and can hold his own in discussions with Nobel Prize winners. Recently, the crew has been representing Bristol-Myers Squibb, ER Squibb & Sons, Ono Pharmaceutical and Professor Tasuku Honko in an action brought by the Dana-Farber Institute in connection with ground-breaking new immuno-oncology cancer treatment methods. Breaking into the IAM Patent 1000 for the first time this year is Ruben Munoz, who takes charge on the post-grant side. His combination of technical dexterity, procedural savvy and advocacy experience makes him formidable at the PTAB.

BakerHostetler

BakerHostetler maintains an expansive national – and international – IP practice powered by some 170 lawyers who collectively dispatch all kinds of patent briefs across myriad technical fields. Invaluable contributions on the non-contentious and contentious fronts come from Philadelphia lawyers Daniel Goettle, Joseph Lucci and Steven Samuels, who all garner enthusiastic praise. “Diligent and detail-oriented attorney” Goettle does “consistently great work” as an advocate and co-captain of the patent litigation team. He is currently representing Comcast in a Florida patent infringement suit brought by WhereverTV regarding video streaming technology. An experienced litigator with a great track record in pharmaceutical battles, the versatile Lucci also prosecutes and renders holistic counsel to the likes of long-term client Johnson & Johnson. Sources are quick to recommend him for his “thoughtful and strategic approach” and “excellent scientific, legal and business sense”. The “technically sophisticated” Samuels “gives clear and sound advice” and “really knows the prior art”. As co-leader of the electrical, mechanical and computer science prosecution division, “he efficiently manages a large number of attorneys while ensuring a high-quality end product”. He holds it down for industry heavy-hitters such as Comcast.

Buchanan Ingersoll & Rooney PC

Well-roundedness in IP and patent practice is the calling card of Buchanan Ingersoll & Rooney. Collectively, the well-integrated team can handle any technology going; steeped in prosecution, litigation and transactional insight, it can solve problems holistically too. This also holds true at the individual level: seasoned hands such as Lynn Alstadt and Michael Dever are percipient lawyers who can do whatever their clients need them to – whether that’s building a valuable portfolio, litigating a do-or-die infringement case or negotiating a deal. Another hallmark of the firm’s service is its commerciality. A trickledown effect is at play here, as firm figureheads such as Alexandria-based executive shareholder Patrick Keane are well known for their entrepreneurial spirit. Alongside Alstadt and Dever, some of the most business-minded practitioners in Pennsylvania include David Gurwin and Susan Hartman, both of whom focus on transactional IP matters – Gurwin in the internet, computer and life sciences domains; and Hartman in the industrial manufacturing, aerospace, healthcare and financial services areas. Carrying this through in prosecution, meanwhile, are Craig Cochenour and Duane Stewart III, both of whom are adept at aligning portfolio and overall IP strategy with commercial objectives. In this regard, Cochenour benefits from previous in-house chief patent counsel experience, while Stewart leverages his international expertise to great effect.

Caesar Rivise PC

Storied Pennsylvania boutique Caesar Rivise is celebrated for its extremely high standards of customer service and the quality of its legal work. As testament to both, it enjoys longstanding relationships with top-flight pharmaceutical companies, on behalf of which it has secured many victories in abbreviated new drug application litigation. The ensemble’s Hatch-Waxman authority is Robert Silver, who serves as litigation department chair. The firm also acquits itself with distinction in prosecution, which is the metier of Scott Slomowitz. An inventor himself, Slomowitz engages well with clients at a deeply technical level, though international commentators note that he is “excellent from a patent strategy standpoint” too. The former Boeing flight controls engineer is a discerning choice for complex electronics, computer and mechanical matters.

Dechert LLP

Having started out 2019 with three jury trials in four months, in Texas, Delaware and New Jersey, Dechert enjoyed a red-letter year for patent litigation. It isn’t painting by numbers on low-value cases either: it is entrusted with mission-critical suits requiring finely honed trial skills, technical chops and sound business instincts. The feedback for Philadelphia duo Martin Black and Kevin Flannery is fantastic: “The breadth of their thinking and their ability to formulate and present resonant arguments are second to none. In navigating complex legal minefields, they are simply superior.” Gold-tier trial lawyer Black is a “master strategist with abundant industry and commercial expertise”. “He has a never-say-die spirit and, extremely able in the courtroom, is uniquely effective at making difficult issues understandable and at cross-examining witnesses.” Moreover, he “manages major trial efforts in the most well-organised and efficient manner”. Their recent highlights include winning a combined $43 million jury trial verdict in the Eastern District of Texas for Intellectual Ventures against Ericsson and T-Mobile, while continuing their sparkling run of form for Endo Pharmaceuticals in cases against generic manufacturers relating to its OPANA ER tablets. Notably, Dechert presides over an increasingly potent life sciences litigation practice, with major input coming from Black and Flannery.

Duane Morris LLP

Duane Morris may not be a national household name like some coastal players, but don’t be fooled: as the stats bear out, it’s an IP heavyweight with a muscular defence-side patent and trademark litigation practice and a high-flying post-grant practice. Unlike many of its general commercial brethren, the Philadelphia-headquartered international outfit has also stayed true in prosecution, fielding outstanding specialists such as Samuel Apicelli. Executive managers as well as inventors love to work with Apicelli as a hands-on legal and business partner who understands how to get clients from A to B in the most cost-effective and strategic manner. Thanks to his involvement in litigation as a technically focused second chair, he demonstrates long-range thinking as a prosecutor; the rights he procures are not easy to attack in court.

Fox Rothschild LLP

Nothing is off limits in patent practice for Pennsylvania-based full-service outfit Fox Rothschild. The prosecution division is especially impressive: its attorneys prepare clear, well-written patent applications that make life simple for examiners, and understand how to smooth the process to get the necessary protection without breaking the bank or losing time. Clients appreciate Fox Rothschild more as a partner than just a vendor – a response that leaders in the group such as nationwide IP chair James Singer have worked hard to cultivate. Singer – who counsels and prosecutes for Xerox Corporation and Eaton Corporation, among other blue-chips – “provides practical advice that enables important business decisions to be made with confidence”. “He is highly thoughtful about efficiency and is very cost effective.”

K&L Gates

K&L Gates has IP experts stationed on four continents and does everything in patent practice, making it a true global one-stop shop for technology and life sciences innovators. Though prolific in US filings, the firm is anything but a patent mill; alongside prosecution, it gives mature strategic direction on portfolio development and enhancement that is always impactful in commercial terms. Someone adding tremendous value in this way is Roberto Capriotti, who partners closely with digital medicine pioneer Proteus Digital Health on patent harvesting, international prosecution, licensing and more. Capriotti is also an experienced litigator; though he doesn’t quite match Patrick McElhinny for courtroom gravitas. As a trial lawyer, McElhinny has done great things for clients including CMU, whose data detection accuracy method patents he is enforcing: in one case against Marvell Technology Group several years ago, he obtained a $1.7 billion verdict; and he is now litigating against LSI Corp and Avago Technologies. If there are deals to be done, the person to contact is technology licensing maven George Dickos.

Morgan Lewis & Bockius LLP

In-house counsel take comfort from having Morgan Lewis in their corner when tough patent battles loom; it has a deep trial bench and a superb track record of achieving rewarding outcomes when they matter most. Assisted by the harmonious integration of different patent practice groups, this success has helped to drive the most strategic prosecution and transactional work towards the firm, which has come to distinguish itself as one of the top all-round patent players in the United States. With a representative on each practice-specific individual table in the IAM Patent 1000, the Pennsylvania line-up reflects the wider group’s full-service ethos. American College of Trial Lawyers fellow Eric Kraeutler is the local litigator in chief; fintech and life sciences guru Louis Beardell proves his immense worth as a prosecutor and counsellor; and Peter Watt-Morse gets signatures on the bottom line of transformational high-technology and life sciences deals.

The Webb Law Firm

With its sizeable team of patent experts whose backgrounds encompass all branches of science and engineering, The Webb Law Firm is distinguished by its technical depth. A “consistently strong IP outfit and leader in Pittsburgh”, it is also tipped for its “quick responsiveness, commercially guided approach and cost efficiency”. One of the most venerable patent and IP experts not just in the state, but in the country, Richard Byrne is master of ceremonies. A skilled practitioner across all phases of the patent lifecycle, he is great to bring on board for strategic oversight. Similarly versatile is the internationally minded John McIlvaine III, who “steers you through difficult problems with clear guidance”. Generous with his time and knowledge, he frequently writes and teaches, among other extracurricular community activities. The person to call when storm clouds gather, seasoned trial lawyer Kent Baldauf paces the field in litigation.

Troutman Pepper 

Troutman Pepper is recommended in the IAM Patent 1000 Pennsylvania rankings thanks to its compelling life and health sciences capabilities. A dedicated industry group brings together corporate lawyers, IP specialists and litigators and, as such, is ideally situated to provide 360-degree counsel and holistic problem-solving services; the firm doesn’t just stop at the patents, but also excels when it comes to regulatory exclusivity, marketing and many other issues. Providing solid leadership is Raymond A Miller who knows not just how to protect innovations, but also how to make them shine on commercial markets. Long-time colleague and collaborator N Nicole Stakleff is another “commercially focused and hugely experienced” operator to keep on the radar. Following the addition of a 24-person team of technology and IP attorneys, patent agents, technical specialists and paralegals in Rochester, New York, Miller and Stakleff have even more resources to deploy for clients. As a result of this recruitment drive, expect Troutman Pepper to move up the pharmaceutical patent litigation food chain.

Other recommended experts

Taking the reins of Ballard Spahr’s IP litigation group is Robert Baron. The accomplished trial lawyer is fluent in all forms of intellectual property and has litigated successfully across the country. Amelia Feulner Baur provides a first-class counselling service which – benefiting from her environment in a firm without a bricks and mortar presence, McNeill Baur – is consistently cost effective. Her recent practice has incorporated an increasing amount of diligence and deal work, giving her a pin-sharp understanding of patent quality and validity. Former Bayer MaterialScience vice president and chief patent counsel Noland Cheung knows all about the business of intellectual property. His role at Dentons Cohen & Grigsby is focused on IP procurement and commercialisation. Daniel Christenbury is schooled in the mechanical, chemical and electrical engineering arts. The DLA Piper patent prosecution co-chair is a thoughtful choice of representative for international prosecution. IP value creation is the forte of Volpe and Koenig lawyer John Donch, who provides a full slate of prosecution, portfolio, licensing and opinion services to wireless communications and medical device companies. Lisa Casey Spaniel is a savvy software and technology licensing expert with a granular knowledge of data and privacy law, among other topics. She flies the flag at Blank Rome.

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
  • 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
  • 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
  • Noland Cheung - Dentons Cohen & Grigsby
  • T Daniel Christenbury - DLA Piper LLP (US)
  • Craig G Cochenour - Buchanan Ingersoll & Rooney PC
  • Michael L Dever - Buchanan Ingersoll & Rooney PC
  • John Donch Jr - Volpe and Koenig 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
  • N 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
  • 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
  • Peter M Watt-Morse - Morgan Lewis & Bockius LLP